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Case No. D2003-0522 - World Intellectual Property Organization

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Case No. D2003-0522 - World Intellectual Property Organization Powered By Docstoc
					                 WIPO Arbitration and Mediation Center

                        ADMINISTRATIVE PANEL DECISION

                                 Yamaha Corporation v. Privat

                                   Case No. D2003-0522




1.   The Parties

     The Complainant is Yamaha Corporation, JP - Shizuoka, of Japan, represented by
     Gevers & Partners S.A. of Belgium.

     The Respondent is Privat, C/O Desmedt Jean Marie, Brussels, of Belgium.


2.   The Domain Name and Registrar

     The disputed domain name <yamahaeurope.com> is registered with Dotster, Inc.,
     P. O. Box 821066, Vancouver, Canada.


3.   Procedural History

     The Complaint was filed with the WIPO Arbitration and Mediation Center (the
     “Center”) on July 1, 2003. On July 1, 2003, the Center transmitted by email to
     Dotster Inc. a request for registrar verification in connection with the domain name at
     issue. On July 2, 2003, Dotster, Inc. transmitted by email to the Center its verification
     response confirming that the Respondent is listed as the registrant and providing the
     contact details for the administrative, billing, and technical contact. The Center verified
     that the Complaint satisfied the formal requirements of the Uniform Domain Name
     Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute
     Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform
     Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

     In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the
     Respondent of the Complaint, and the proceedings commenced on July 4, 2003. In
     accordance with the Rules, paragraph 5(a), the due date for Response was
     July 24, 2003. The Response was filed with the Center on July 21, 2003.




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     The Center appointed Gunnar Karnell as the sole panelist in this matter on
     July 30, 2003. The Panel finds that it was properly constituted. The Panel has
     submitted the Statement of Acceptance and Declaration of Impartiality and
     Independence, as required by the Center to ensure compliance with the Rules,
     paragraph 7.

     The language of the administrative proceeding is English. However, the Respondent, in
     its Response as filed in English language, has indicated that its English text “is only a
     copy and a free translation. We consider only the original Dutch text as a base”. The
     Administrative Panel will disregard this contention, commenting that the occasional
     language deficiencies in the English text of the Response do not offer any possibilities
     for misunderstanding.


4.   Factual Background

     The Complainant and its subsidiary Yamaha Motor Europe are the proprietors of a
     great number of registered trademarks (International, Community and Benelux) that
     consist of or feature the word Yamaha, among those the Benelux registered
     YAMAHA word marks No. 0045924 (July 28, 1971, renewed) and No. 0047919
     (August 6, 1971; renewed).

     The Respondent’s domain name <yamahaeurope.com> was registered
     October 30, 2002.


5.   Parties’ Contentions

     A.   Complainant (summary)

     Founded in 1897, the Complainant is today a leader internationally in businesses
     ranging from musical instruments and audio & video products to information
     technology products, news media services, home furnishings, auto components,
     speciality metals, music education and resort facilities.

     a)   The domain name <yamahaeurope.com> is confusingly similar to the
          YAMAHA trademark (and other trademarks owned by the Complainant featuring
          the word YAMAHA), differing only by the suffix “europe” and the top level
          domain “com”.

          Geographical additions do not alter the underlying meaning of a domain name so
          as to avoid confusing similarity. The geographical indication and the generic and
          functional top level domain ”com” do not change the essential meaning and
          expression of the term Yamaha and its identifying function. The additions do not
          clearly distinguish between the respective designations in meaning, appearance,
          sound or general impression. They aggravate confusion by furthering the
          suggestion of a variation for an extension of the Complainant’s existing
          companies, divisions, brands or products as well as the erroneous assumption that
          there is a common endorser, source or affiliation between the respective services
          or products. <yamahaeurope.com> would easily be taken to indicate a sister
          website to the Complainant’s “www.yamaha.com” or “www.yamaha-
          europe.com”, official website of the European headquarters of the Complainant.


                                           page 2
b)   The Respondent has no rights or legitimate interests in respect of the domain
     name, having no trademark or other intellectual property rights to it or any
     substantially similar designation anywhere; nor does it operate any business under
     any mark incorporating the term YAMAHA or YAMAHAEUROPE or the like.
     The Respondent is not known under any such token and it has made no lawful use
     of its domain name. Its sole interest in the latter term is in the registration and
     offer for sale to the Complainant of the domain name. No lawful use has been
     made of the domain name. It has been used, first only on a
     “www.yamahaeurope.com” home page presenting a message “this domain is for
     sale” and a popup window automatically opening to show the start page of
     Korg Corporation. Later were added photographs of the Presidents of
     Yamaha Music Central Europe and Yamaha Music Holdings Corporation,
     Mr. Kato and Mr. Takahashi, inviting, when clicked on, to hyperlinks directly to
     Korg Corporation and Roland Corporation, the Complainant’s main competitors.
     Furthermore, there is a banner on the home page “YAMAHA EUROPE = 4 sale”,
     possibly making people wrongly believe that the Complainant encounters
     financial difficulties.

c)   The domain name was registered and is being used in bad faith. Complainant’s
     trademark YAMAHA is known world wide, inter alia by numerous websites,
     including “www.yamaha.com” and “www.yamaha-europe.com”. The company
     name and the trademark YAMAHA are well known in the Benelux territory
     where the Respondent is located. The personal representative as administrative
     and technical contact for Softly Notes vzw, the association replying to
     communications in this case, Mr. Jean-Marie Desmedt, is a musician, and as such
     perfectly aware of YAMAHA products, trademarks and company name when
     registering the domain name. In a letter, presented as evidence in this case,
     Mr. Desmedt stated that he was prepared to sell the disputed domain name for
     valuable consideration.

     The use of the domain name mentioned here above under b) tarnishes the repute
     of the YAMAHA Presidents and of the YAMAHA Corporation. The fact that the
     official website of Yamaha Corporation is “www.yamaha-europe.com” reinforces
     the prejudice created by the domain name in issue. The Respondent has tried to
     disrupt the Complainant’s business. The domain name has never been developed
     by the Respondent since its registration. It just leads to a home page with banners
     “YamahaEurope This domain is for sale” or “YAMAHAEUROPE = 4 sale”.
     This holding of the domain name constitutes together with what has here earlier
     been presented evidence of use in bad faith.

B.   Respondent (summary)

The Respondent maintains that “everybody is free to buy a domain name. Even if this
is a brand name.” Its business activities exclusively concern web design and sale of
domain names. There is never any competition with Yamaha Corporation. There have
been and are no bad intentions behind the site which is “clean and without links”. From
the beginning the domain name was offered for sale and Yamaha Corporation may still
buy it. The Respondent finds “no prove [i. e. proof] that Yamahaeurope a registered
brand name is”.

Furthermore, the Respondent, in its Response, poses a number of rhetoric questions to
which the Panel finds no reason to give any heed.


                                     page 3
6.   Discussion and Findings

     A.    Identical or Confusingly Similar

     In respect of the similarity issue, the Panel will disregard the Complainant’s references
     to its websites “www.yamaha.com” and “www.yamaha-europe.com” as inferred in
     support of its arguments. We are here only dealing with conflicts regarding similarities
     between on the one side a domain name and on the other “a trademark or service mark
     in which the Complainant has rights” (the Policy 4. (a)(i)). This, however, does not
     mean that the similarity issue shall be regarded as simply a matter of comparative
     linguistics. Similarity refers also to how in a case at hand the public may recognise
     what connects trade and service mark characteristics on the one hand and domain name
     characteristics on the other as connecting elements between Complainant and
     Respondent. This taken into account, the Panel finds that the domain name in issue is
     confusingly similar to the Complainant’s trademark YAMAHA.

     B.    Rights or Legitimate Interests

     The Respondent, having used the opportunity to reply to the Complainant’s allegations,
     has not given any indication of rights or legitimate interests in respect of the domain
     name worthy of being taken into account in defence of its conduct, neither when
     registering the domain name nor thereafter. The Panel finds that the Complainant,
     supported by what has been replied by the Respondent, has convincingly shown that the
     Respondent has no rights nor any legitimate interests in the domain name.

     C.    Registered and Used in Bad Faith

     The Respondent’s business is, as it states it itself, to “do business with web design and
     buy or sell domain names”. Already the offers for sale after registration of the domain
     name is evidence of its continued use as part of Respondent’s engagement in such
     business. There can be no doubt about the Respondent’s knowledge of the well known
     YAMAHA mark. Being part of Respondent’s business, it is evident that any sale of the
     domain name to the Complainant or any other party would be for valuable
     consideration in excess of any documented out-of-pocket costs directly related to the
     domain name (cf. the Policy 4(b)(i)). Obviously, the registration was made in order to
     prevent the Complainant from reflecting its mark YAMAHA in the corresponding
     domain name, without preceding purchase of the domain name from the Respondent;
     the name being “corresponding” in the meaning of the Policy 4(b)(ii) for reasons given
     here above under 6 (a). The use of the domain name in directing visitors to the
     Respondent’s site by means of links as described by the Complainant to its competitors
     tarnishes the mark, as well as does the manner in which the open offer for sale of the
     domain name appears on the Respondent’s site. The Panel finds that the domain name
     in issue has been registered and is used in bad faith.




                                            page 4
7.   Decision

     For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and
     15 of the Rules, the Panel orders that the domain name <yamaha-europe.com> be
     transferred to the Complainant .




                          _______________________________
                                   Gunnar Karnell
                                    Sole Panelist

                                   Date: August 4, 2003




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