Yumiko, LLC v. Domain Hostmaster, Customer ID: 44519875664713, Whois Privacy Services Pty Ltd / Stanley Pace
Case No. D2015-1669
1. The Parties The Complainant is Yumiko, LLC of New York, New York, United States of America (“U.S.”), represented by Aseslema Patentes Y Marcas, Spain.
The Respondent is Domain Hostmaster, Customer ID: 44519875664713, Whois Privacy Services Pty Ltd of Fortitude Valley, Queensland, Australia / Stanley Pace of Flower Mound, Texas, U.S., represented by Law Office of Howard M. Neu, PA, U.S..
2. The Domain Name and Registrar The Disputed Domain Name is registered with Fabulous.com (the “Registrar”).
3. Procedural History The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 21, 2015. On September 21, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On September 22, 2015, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Disputed Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on September 25, 2015 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed the first amendment to the Complaint on October 1, 2015. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed the second amendment to the Complaint on October 1, 2015.
The Center verified that the Complaint together with the amendments to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceeding commenced on October 6, 2015. In accordance with the Rules, paragraph 5, the due date for Response was October 26, 2015. The Response was filed with the Center on October 26, 2015.
The Center appointed Maxim H. Waldbaum, Gabriela Kennedy and Richard G. Lyon as panelists in this matter on November 13, 2015. The Panel finds that it was properly constituted. Each member of 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.
On December 8, 2015, the Panel issued a procedural order requesting the Respondent to confirm the date he acquired the Disputed Domain Name.
4. Factual Background The Complainant has been in the business of designing and selling dance and fitness wear. It owns trademark registrations in the U.S., Japan and Europe. The design and word trademark for YUMIKO (Registration No. 3,673,943) was initially filed in 2008 and registered in 2009 by an entity called “YUMIKO EUROPA. S.A.” with the United States Patent and Trademark Office (“USPTO”) in connection with goods and services of clothing for dance and sports. Subsequently in 2015, the trademark was assigned to the Complainant. Both entities belong to the same corporate group (Yumiko).
Despite the fact that the Disputed Domain Name was originally registered in 1997, the Respondent did not acquire it until on or about February 13, 2010. Since then, the Disputed Domain Name has been used by the Respondent as a parking page with several pay-per-click links including links that resolves to the Complainant’s competitors.
5. Parties’ Contentions A. Complainant The Complainant alleges that:
(a) The Disputed Domain Name is identical or confusingly similar to the Complainant’s mark because it is completely the same as the Complainant’s mark without any alteration; the Complainant’s high quality designed dance and fitness wear have been highly praised by numerous choreographers and dancers. It has also been promoted through main-stream magazines, such as Vogue and Elle.
(b) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name because:
1) The Respondent does not have any registered trademark or other rights in the mark YUMIKO;
2) The Respondent has never been commonly known by the Disputed Domain Name;
3) The Respondent has never been authorized by the Complainant for any use of the mark; and
4) Due to the fact that the Disputed Domain Name is a parking page without commercial presence and it lists the Complainant’s competitors, the Respondent is not currently using and has never used the Disputed Domain Name in any bona fide commercial or noncommercial manner. And the Respondent can not claim any legitimate noncommercial or fair use.
(c) The Disputed Domain Name was registered and is being used in bad faith.
The Complainant contends that bad faith is demonstrated as follows:
1) It is sufficient for the Complainant to prove either one of the following two cases, namely, the registration or the use of Disputed Domain Name is in bad faith;
2) The Respondent’s use is in bad faith because the Disputed Domain Name is not actively used and contains various links relating to the Complainant’s competitors and products;
3) The Disputed Domain Name, as stated above, is used intentionally to attract, for commercial gain, Internet users to the Respondent’s website or other on-line location, creating the possibility of confusion with the mark of the Complainant as to the source or commercial origin of those products;
4) The Respondent has engaged in numerous disputes over domain names, which constitutes a pattern of conduct demonstrating bad faith.
B. Respondent The Respondent alleges that he has continuously parked the Disputed Domain Name with a “reputable aggregator”. He argues that the majority of the UDRP cases have ruled that “parking” domains with legitimate monetization companies is considered as a legitimate business use.
The Respondent further avers that he is in the business of acquiring and using, for business purposes, various surname domain names when they become available. He contends that he has purchased the Disputed Domain Name for its surname and he had no knowledge of the Complainant or its mark at the time it acquired . The Respondent also asserts that the Complainant’s mark is a very common Japanese given name. He also states that it does not have any intention to sell the Disputed Domain Name, and as a matter of fact, he has ignored an offer from the Complainant.
The Respondent admits the fact that there have been a number of UDRP complaints filed against him. However, he also points out the existence of decisions in his favor that some complaints have been denied and suggests that instant case deserves a favorable result as well.
As the final point brought up by the Respondent, it avows that to the contrary of what is stated by the Complainant, in order to succeed in developing the third element of the Policy, the Complainant is required to prove both the registration and the use of the Disputed Domain Name are in bad faith. The Respondent states under oath that the aggregator with which he placed the Disputed Domain Name told him that it “would not have trademark infringing hyperlinks” and that he gave no “written or oral consent” for such links.
6. Discussion and Findings According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Disputed Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and
(iii) The Disputed Domain Name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
It is clear to this Panel that the Disputed Domain Name is identical to a trademark or service mark in which the Complainant has rights. The Disputed Domain Name incorporates the Complainant’s mark without any alteration.
Therefore, the Panel finds that the Complainant has established the first element of paragraph 4(a) of the Policy.
B. Rights or Legitimate Interests
The Panel concludes that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.
Although a complainant bears the ultimate burden of proof, UDRP panels recognize that strict compliance often requires the impossible task of proving a negative because such information is frequently within the sole possession of a respondent. See Altria Group, Inc. v. Steven Company, WIPO Case No. D2010-1762.
Accordingly, the Complainant needs first to make out a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. “Upon such a showing, the burden [of production] shifts to Respondent to demonstrate its rights or legitimate interests in the Disputed Domain Names.” See Valero Energy Corporation and Valero Marketing and Supply Company v. Kim A Waugh, Kim Consult, WIPO Case No. D2014-1819.
In this case, the Panel finds that the Complainant has made a prima facie showing that the Respondent does not have rights or legitimate interests in the Disputed Domain Name within the meaning of paragraph 4(a)(iii) of the Policy.
This finding is inter alia based on the following, non-disputed, circumstances:
(1) The Respondent has never registered any trademark in any form of “Yumiko” and is not commonly known by the Disputed Domain Name;
(2) The Complainant has asserted that the Respondent has no relationship or affiliation with the Complainant and has never authorized or licensed the Respondent to use its trademark;
(3) The Respondent’s use of the Disputed Domain Name is not in a bona fide offering of goods or services, and does not constitute any legitimate noncommercial or fair use.
The only use that the Respondent has made of has been to direct traffic to a parked webpage that contains various pay-per-click links including to the Complainant’s products and competitors. The Respondent contends that with regarding to the issue of parking pages or pay-per-click links, the majority of the UDRP rulings have determined such use is legitimate. The Respondent also avers that he is using the Disputed Domain Name in connection with a bona fide offering of goods or services, namely providing lease and email services for a common Japanese surname “Yumiko”, which is also considered as a legitimate use.
This Panel does not accept the Respondent’s contentions because the Respondent failed to offer any evidence to prove that he uses or plans to use the Disputed Domain Name for a surname domain name business or any other legitimate purpose. The Respondent has used the Disputed Domain Name for about five years, yet nothing has been submitted to this Panel to prove that he has become commonly known by the Disputed Domain Name. A review of the data on the website at the Disputed Domain Name since 2010 shows only that from the start and continuously the Disputed Domain Name has contained links relating to the Complainant’s products and competitors. Such use has never been determined as a demonstrative of a bona fide offering of goods or services or otherwise a legitimate use of any kind.
As the Respondent failed to provide sufficient evidence to support its contention, the Panel finds that the second element of paragraph 4(a) of the Policy has been established.
C. Registered and Used in Bad Faith
The Panel concludes that the requirements of paragraph 4(a)(iii) of the Policy have been sufficiently made out by the Complainant and that the Respondent’s bad faith registration and use of the Disputed Domain Name have been proven.
Paragraph 4(b) of the Policy provides the following four (nonexclusive) circumstances which are deemed to provide evidence of bad faith in registering and using a domain name:
(i) Circumstances indicating that you [respondent] have registered or you [respondent] have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark, or to a competitors of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) You [respondent] have registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) You [respondent] have registered the domain name primarily for the purpose of disrupting the business of a competitors; or
(iv) By using the domain name, you [respondent] have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your website or your location.
In addition to the grounds illustrated in the former part of this decision, this Panel finds both the Respondent’s registration and use of Disputed Domain Name are in bad faith for the following reasons.
It is clear to this Panel that the Respondent’s behavior constitutes a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name, which supports a finding of the Respondent’s bad faith. Such pattern of conduct is evidenced by the fact that as at the date of this decision, nineteen complaints, including the present Complaint, have been filed against the Respondent. Of these, thirteen decisions have found against the Respondent.
Particularly, eight cases concern disputes relating to pay-per-click or parking pages and six of them have found against the Respondent for similar instances of unjustified domain name registration. (SeeApple, Inc. v. WhoIs Privacy Services Pty Ltd. / Stanley Pace / Shahamat / Kent Mansley / Phoebe Aoe / Tammy Caffey / Staci Michele / Layne Fletcher / Hiroko Tadano / Keith Besterson / Andrew Devon, WIPO Case No. D2013 1312; Shandong Lingong Construction Machinery Co., Ltd. v. Stanley Pace and Whois Privacy Service Pty Ltd., WIPO Case No. D2012 1626; Mahindra & Mahindra Limited v. Stanley Pace, WIPO Case No. D2011-2189; Tenaris Connections BV v. Stanley Pace, WIPO Case No. D2011-1448; Starkey Laboratories, Inc. v. Stanley Pace, WIPO Case No. D2010-0774; and Viacom International Inc. v. Stanley Pace / M Smurth Waite, WIPO Case No. D2010-1149.) This is even the case in the remaining two decisions cited by the Respondent in the Response to demonstrate instances of favorable rulings for himself, namely Ramsey Mankarious v. Stanley Pace, WIPO Case No. D2015-1100 (“Mankarious”) and Bounz B.V. v. Whois Privacy Services Pty Ltd. / Stanley Pace, WIPO Case No. D2015-1230 (“Bounz”). Nonetheless, those two cases are different from the instant case for the following reasons: 1) The current case is distinguished from Mankarious decision upon which the complainant merely had a famous name and was not using his name in trade or commerce as an identifier of goods or services to establish unregistered trademark rights for the purpose of the UDRP.
2) The current case is also distinguished from Bounz decision as well. The panel there ruled for the Respondent (same individual as in our case) due to some different and dispositive facts. First of all, the Respondent’s registration predated the complainant’s first use and trademark registrations. Also the Respondent provided an affidavit stating that he had conducted searches on Google and USPTO website before acquiring the domain name, and he found no evidence of potentially conflicting trademarks. The panel admitted his effort and held that it is only if the Respondent had searched the business name register in the Netherlands that he might have even been alerted to the existence of the complainant. In those circumstances the panel determined that there was no evidence of bad faith that could be found against the Respondent.
This is not the case here. Contrary to Bounz , the Respondent’s acquisition of the Disputed Domain Name occurred after the Complainant’s registration of the YUMIKO mark, which points the Panel to impute to the Respondent’s prior knowledge of the Complainant’s mark. Such finding is further supported by the Respondent’s pay-per-click links to the Complainant’s and its competitors’ products at the Disputed Domain Name, unlike in Bounz in which the panel found the pay-per-click links did not target the complainant but related to, inter alia, the English word “bounce”. It is reasonable to require the Respondent, an acknowledged domainer who has sworn in at least one case that he routinely does so, to conduct a trademark search.1 Both Parties are located in the U.S. and the Complainant owned a USPTO-registered trademark at the date the Respondent acquired the Disputed Domain Name. Any basic research – and definitely one comparable to the one described by this Respondent in Bounz –would easily lead to results in relation to the Complainant and it will be contradicting and self-serving if the Respondent, who had conducted trademark researches before, but did not comport itself to do the same in this case.
Moreover, the Panel finds the Respondent responsible for the content of the website at the Disputed Domain Name even if he gave contrary instructions to his content aggregator, as he avers that he did. The general rule is that a registrant is responsible for content generated by a third party that the registrant engaged. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 3.8. Given that, the Respondent is a veteran of the UDRP system who has demonstrated considerable familiarity with third party generated content, and expressly selected the particular aggregator involved with the Disputed Domain Name, there is no reason not to follow the general rule. Taking all the above into account, the Panel finds that the Respondent has registered and is using the Disputed Domain Name in bad faith and that the Complainant has therefore established the requirement in paragraph 4(a)(iii) of the Policy.
7. Decision In light of the foregoing, the Panel finds that the Disputed Domain Name is identical to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and that the Respondent registered and is using the Disputed Domain Name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel orders that the Disputed Domain Name be transferred to the Complainant.
1 Many panels have placed such a duty of reasonable investigation upon a domainer. See for example, Mobile Communication Service Inc. v. WebReg, RN, WIPO Case No. D2005-1304, Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2206-0984. See also WIPO Overview 2.0, paragraph 3.4 (“[A] respondent's registration of large numbers of domain names through automated processes, with no appropriate mechanism for ascertaining whether these may be identical or confusingly similar to such trademarks, may support a finding of bad faith.”)