Yazaki North America, Inc. v. raul tamez / koch-yazaki
Claim Number: FA1711001757699
Complainant is Yazaki North America, Inc. (“Complainant”), represented by Tricia L. Schulz of Foley & Lardner LLP, Wisconsin, USA. Respondent is raul tamez / koch-yazaki (“Respondent”), Mexico.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <koch-yazaki.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on November 8, 2017; the Forum received payment on November 8, 2017.
On November 8, 2017, Tucows Domains Inc. confirmed by e-mail to the Forum that the <koch-yazaki.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On November 14, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 4, 2017 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@koch-yazaki.com. Also on November 14, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, and to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On December 7, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant registered the YAZAKI mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,678,441) on January 21, 2003. Respondent’s <koch-yazaki.com> domain name (the “Domain Name”) is confusingly similar to Complainant’s. It combines Complainant’s YAZAKI mark with the “KOCH” third-party name before adding a hyphen and the “.com” generic top-level-domain (“gTLD”). These changes are insufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i).
Respondent has no rights or legitimate interests in the Domain Name. He is not commonly known by the Domain Name. The WHOIS record lists “raul temez” as registrant and “koch-yazaki as registrant organization. Complainant’s research indicates that no such organization as koch-yazaki exists. Complainant has not authorized Respondent to use its mark or any simulation or derivation thereof in the Domain Name or for any other purpose. Further, Respondent is using the Domain Name and the web site resolving from it to impersonate Complainant in a fraudulent scam to solicit “training session” payments from potential suppliers of Complainant. This is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Respondent registered and used the <koch-yazaki.com> domain name in bad faith. The web site resolving from the Domain Name is virtually identical to Complainant’s web site. Respondent is using it to impersonate Complainant in a fraudulent scam to solicit “training session” payments from potential suppliers of Complainant. Further, Respondent Raul Tamez is a former employee of Complainant who was terminated for cause. As such, he had actual knowledge of Complainant and its rights when he registered the Domain Name on March 3, 2013.
B. Respondent
Respondent did not submit a Response in this proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a Response, the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See, Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also, Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Identical or Confusingly Similar:
Complainant has rights in the YAZAKI mark based upon its registration of that mark with the USPTO (Reg. No. 2,678,441, registered January 21, 2003). See, Compl. Annex B, Exhibit 3. Registration of a mark with the USPTO is sufficient to confer rights in that mark upon the Complainant for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the YAZAKI mark.
Respondent’s Domain Name is confusingly similar to Complainant’s mark as it incorporates the mark verbatim. Its addition of the name “Koch,” a hyphen, and the top level domain, “.com,” does not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶4(a)(i). Gillette Co. v. RFK Assocs., FA 492867 (Forum July 28, 2005) (finding that the addition of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark).
For the reasons discussed above, the Panel finds that the Domain Name is identical or confusingly similar to the YAZAKI mark, in which Complainant has rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interest. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0 at ¶ 2.1.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) neither is commonly known by the Domain Name, (ii) neither is authorized by Complainant to use Complainant’s marks in the Domain Name, and (iii) they are not using the Domain Name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to impersonate a complainant cannot constitute a bona fide offering of goods and services. All three of these allegations appear to be accurate. The WHOIS identifies “raul tamez / koch-yazaki” as the registrant (Compl. Amended Exhibit 1), and, as Complainant asserts, no evidence exists to show that Respondent is otherwise known by the YAZAKI mark of the Domain Name. Secondly, Complainant states that it has never authorized Respondent to use its YAZAKI mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel.
Further, Complainant’s Exhibits 2 and 5 attached to the Olesky Declaration attached to the Complaint demonstrate that Respondent is using the Domain Name in connection with a passing off scheme. Respondent’s web site resolving from the Domain Name and affirmatively represents itself as being sponsored by Complainant, and solicits contact and personal information from persons visiting the site. Passing off in furtherance of a fraudulent phishing scheme is not evidence of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); Google Inc. v. Pritam Singh / Pandaje Technical Services Pvt Ltd., FA 1660771 (Forum March 17, 2016) (agreeing that respondent has not shown any bona fide offering of goods or services or any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) as the respondent used the complainant’s mark and logo on a resolving web site containing offers for technical support and password recovery services, and soliciting Internet users’ personal information). On the evidence presented, the Panel finds that Respondent is using the Domain Name in an attempt to pass himself off as Complainant, and to phish for information. This is not a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii).
For the reasons set forth above, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
Respondent’s passing-off behavior described above is also evidence of bad faith registration and use of the Domain Name. Target Brands, Inc. v. JK Internet Servs., FA 349108 (Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).
Further, because of Respondent Raul Tamez’s status as an employee or former employee, it is certain that he had actual knowledge of Complainant’s YAZAKI mark when he registered the Domain Name on August 14, 2017. This has consistently been held to evidence bad faith registration. Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name), Chevron Intellectual Property LLC v. Richard Bailey/Jacobs, FA 1588430 (Forum Dec. 9, 2014) (finding that respondent’s behavior of sending emails impersonating complainant demonstrated that the domain name was registered with complainant in mind), and Michelin North America, Inc. v. Innis, FA 1511296 (Forum Dec. 27, 2013) (holding that respondent’s registration of domain names that were confusingly similar to complainant’s famous marks evidenced that respondent had actual knowledge of complainant’s marks and rights and registered the domain names in bad faith under Policy ¶ 4(a)(iii)).
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Name in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <koch-yazaki.com> domain name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: December 11, 2017
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