Yamaha Guitar Group, Inc. v. Larry Cook
Claim Number: FA2004001891548
Complainant is Yamaha Guitar Group, Inc. (“Complainant”), represented by Christopher J. Palermo of Hickman Palermo Becker Bingham LLP, California, USA. Respondent is Larry Cook (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yamahaguitargroups.com>, registered with Wild West Domains, LLC.
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.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 9, 2020; the Forum received payment on April 9, 2020.
On April 10, 2020, Wild West Domains, LLC confirmed by e-mail to the Forum that the <yamahaguitargroups.com> domain name is registered with Wild West Domains, LLC and that Respondent is the current registrant of the name. Wild West Domains, LLC has verified that Respondent is bound by the Wild West Domains, LLC 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 April 10, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 2020 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@yamahaguitargroups.com. Also on April 10, 2020, 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, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On April 24, 2020, Respondent’s timely response was received and filed.
On April 24, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 offers a line of guitars. Complainant has rights in the YAMAHA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 893,186, registered June. 23, 1970). Respondent’s <yamahaguitargroups.com> domain name is confusingly similar to Complainant’s mark as Respondent incorporates Complainant’s mark and merely adds a liter “s” to Complainant’s legitimate website.
Respondents has no rights or legitimate interests in the <yamahaguitargroups.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed, authorized, or otherwise permitted by Complainant to use Complainant’s mark. Furthermore, Respondent’s use is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use, as Respondent is merely using email to phish for Internet users personal or financial information.
Respondent registered and used the <yamahaguitargroups.com> domain name in bad faith. Specifically, Respondent is using the disputed domain name to pass off as Complainant and send fraudulent emails seeking personal of financial information.
B. Respondent
Respondent is the administrator of the Houston Racquet Club and the email account associated with Respondent was compromised. An unknown third party created the disputed domain name on April 6, 2020. Respondent attempted to delete the disputed domain name but was blocked for 5 days. Respondent asserts that actions have been taken to avoid this circumstance in the future.
For the reasons set forth below, based upon Complainant’s uncontested allegations and evidence, the Panel finds that Complainant is entitled to the requested relief of transfer of the <yamahaguitargroups.com> domain name.
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.
PRELIMINARY ISSUE: Identity of Respondent
Respondent states that it did not register the disputed domain name and Complainant has not challenged that statement. In this proceeding discussion of actions by “Respondent” refers to the actual registrant of the domain name.
Complainant claims rights in the YAMAHA mark through its registration of the mark with the USPTO (e.g., Reg. No. 893,186, registered June. 23, 1970). Registration with the USPTO is sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel finds that the Complainant has rights in the YAMAHA mark under Policy ¶ 4(a)(i).
Complainant argues Respondent’s <yamahaguitargroups.com> domain name is confusingly similar to Complainant’s mark as Respondent incorporates Complainant’s mark and merely adds a letter “s” to Complainant’s legitimate website. Adding a letter “s” to a complainant’s mark does not distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See LodgeWorks Partners, L.P. v. Isaac Goldstein / POSTE RESTANTE, FA 1717300 (Forum Apr. 5, 2017) (“The Panel agrees; Respondent’s <archerhotels.com> is confusingly similar to complainant’s ARCHER HOTEL mark.”). The confusingly similar analysis is done by comparing the disputed domain name with the complainant’s mark and not a complainant’s website under Policy ¶ 4(a)(i). See Porto Chico Stores, Inc. v. Zambon, D2000-1270 (WIPO Nov. 15, 2000) (stating that the panel should resolve whether a mark is identical or confusingly similar “by comparing the trademark and the disputed domain name, without regard to the circumstances under which either may be used”). The Respondent also adds the terms “guitar group” to Complainant’s YAMAHA mark. Adding terms into a disputed domain name may not sufficiently distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) (“Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element.”). The Panel finds that Respondent’s <yamahaguitargroups.com> domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel finds Respondent has made a prima facie case.
Complainant argues that Respondent has no rights or legitimate interests in the <yamahaguitargroups.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been licensed or authorized by the Complainant to use Complainant’s mark. Relevant WHOIS information can be used as evidence to show a respondent is or is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent lacks rights or legitimate interest in a disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS of record identifies the Respondent as “Larry Cook t” and no information in the record indicates that Respondent was authorized to use Complainant’s mark or was commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent fails to use the <yamahaguitargroups.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is merely using email to phish for Internet users personal or financial information. Using a disputed domain name to deceive email recipients is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). Complainant provides copies of the emails sent by the Respondent, attempting to have payments wired to an account associated with the Respondent. The Panel finds that Respondent fails to use the <yamahaguitargroups.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii) and Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant has proved this element.
Complainant argues Respondent registered and uses the <yamahaguitargroups.com> domain name in bad faith. Specifically, Respondent is using the disputed domain name to pass off as Complainant and send fraudulent emails seeking personal of financial information. Registering and using a disputed domain name to deceive email recipients into divulging personal or financial information may be evidence of bad faith under Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). Complainant provides copies of the emails sent by the Respondent, attempting to have payments wired to an account associated with the Respondent. The Panel finds that Respondent registered and uses the <yamahaguitargroups.com> domain name in bad faith under Policy ¶ 4(b)(iii), and Policy ¶ 4(b)(iv).
Complainant has proved this element.
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 <yamahaguitargroups.com> domain name be TRANSFERRED from Respondent to Complainant.
______________________________________________________________
Hon. Karl V. Fink (Ret.) Panelist
April 30, 2020
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