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WIPO Arbitration and
Yanmar Co., Ltd. v. Yanmar Marine Devakumar Ramasamy
Case No. D2004-0365
1. The Parties
The Complainant is Yanmar Co., Ltd., Osaka, Japan, represented by Cynthia A. Boeh, United States of America.
The Respondent is Yanmar Marine Devakumar Ramasamy, Dubai, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <yanmar-engines.com> is registered with Register.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 18, 2004. On May 19, 2004, the Center transmitted by email to Register.com a request for registrar verification in connection with the domain name at issue. On May 19, 2004, Register.com 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 May 26, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was June 15, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2004.
The Center appointed Frank R. Schoneveld as the sole panelist in this matter on June 21, 2004. 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 Registration Agreement is in English and there being no specification otherwise
in the Registration Agreement or any other contrary agreement between the Complainant
and Respondent (the “Parties”), in accordance with Paragraph 11
of the Rules, the language of this proceeding is in English.
4. Factual Background
The Respondent has failed to provide any response to the Complaint or to make any communication with the Center. In that circumstance, in accordance with Paragraphs 5(e), 14 and 15 of the Rules, the Panel proceeds to make its decision based upon the statements and documents submitted in the Complaint.
Complainant provides a copy of registration in the United Arab Emirates (since 1993), the USA (Class 7) and Switzerland (Class 7) of its trademark with the prominent word “Yanmar” on a background of a round target. The word “Yanmar” is also registered under the Madrid Agreement and Protocol under NCL(8) 35 & 36 – ‘providing information on commercial sales of machinery including motors and engines of all kinds…’ etc. and ‘repair and maintenance of machinery including motors and engines of all kinds…’ etc. It is noted that Class 7 of the Nice Classification System is “Machines and machine tools; motors and engines…etc..”
The Complainant’s trademarks, which include the prominent word “Yanmar”, are stated to be registered in over 90 countries around the world. These trademarks were first registered in Japan in 1935, and notably in the UAE in 1993, and in most of the other countries before 1990.
The Complainant is the holder of 12 domain names that include the word “Yanmar” in country level domains for Japan, China, Brazil and the Netherlands as well as under the top level domain designations “.com” and “.info”. The “.com” registrations which include the word “Yanmar” were first made in 1993 and 1996, respectively.
The Complainant has won a number of international awards in 1955, and 1968, for its diesel engines; has offices, agents and distributors, and advertises extensively around the world in the marine engines market.
The above factors all indicate, and the Panel finds, that the word “Yanmar” is a well-known mark of the Complainant in the marine engine market worldwide.
The Complainant changed its name in 2002, from Yanmar Diesel Engine Co, the name in which the copies of trademark registration certificates were provided, to its present name of Yanmar Co.
The Complainant provides copies of its corporate and product brochures and print-outs of pages of the website of the disputed domain name. These demonstrate that the Respondent has copied on its website the abovementioned registered trademarks of the Complainant and extracts and pictures from brochures of the Complainant. The Complainant emphasizes, and the Panel finds, that the Respondent has done so without the consent of the Complainant.
The Complainant provides copies of extracts from the website at the disputed domain name, and invoices and photographs. These indicate, and the Panel finds, that the Respondent sells original and counterfeit Yanmar marine engine spare parts and refurbished engines as well as non-Yanmar OEM (Original Equipment Manufacture) spare parts. The Complainant emphasizes and the Panel accepts, that it has no business relationship with the Respondent. The Complainant does not set out (if it knows) where the Complainant obtains original Yanmar spare parts or refurbished engines. The Complainant points out, and the Panel accepts, that OEM products are considered “compatible” with the Complainant’s Yanmar products and may be used in, with or in place of original Yanmar products without the Complainant’s consent, authorization or support.
Copies of documents with a seal of the Dubai Chamber of Commerce & Industry and dated July 21, 2002, indicate that Yanmar Marine (L.L.C.) is registered as a limited liability company in the United Arab Emirates (“UAE”) with four partners none of whom is the person named in the second part of the Respondent, a certain Devakumar Ramasamy. These copies of documents sealed by the Dubai Chamber of Commerce & Industry state that Devakumar Ramasamy is a partner in the UAE registered company Precision Diesel Technology (L.L.C.) together with two other individuals who are also majority owning partners in Yanmar Marine (L.L.C.) of the UAE.
The copies of the registration of the business name “Yanmar Marine” in Singapore indicates that Devakumar Ramasamy is the owner and manager of “Yanmar Marine” in Singapore. There is no evidence that Devakumar Ramasamy or his business “Yanmar Marine” in Singapore has any legal relationship with Yanmar Marine LLC registered in the UAE. In that circumstance the Panel treats the Respondent as two separate distinct persons, the first being Yanmar Marine LLC of the UAE and the second being Devakumar Ramasamy the owner and manager of the business registered in Singapore as Yanmar Marine. Given that they have registered the disputed domain name jointly, the Panel finds that these two persons are acting in concert.
The Complainant is the parent company of a different Dutch company of the same name as the company registered in the UAE and the business registered in Singapore, namely Yanmar Marine N.V. registered in the Netherlands
The Complainant has commenced legal proceedings in Singapore, requesting the
Singapore Registrar of Businesses to direct the Respondent Devakumar Ramasamy
to change the Singapore registered business name “Yanmar Marine”
to another name which does not incorporate the word “Yanmar” or
any other confusing word.
5. Parties’ Contentions
Complainant contends that despite having never had any business relationship with the Respondent and never having given any consent, license or authorization to the Respondent for the use or registration of the domain name or the web site established under the domain name, the Respondent uses many of the Complainant’s registered trademarks. Complainant also says that on the Respondent’s website at the disputed domain name, it is stated:
“These engines come directly from Japan with full service history and are refurbished, using genuine spare parts so that the engines are as good as new with warranty, standardization and certification authorized by Yanmar, Japan.”
The Complainant emphasizes that Yanmar, Japan (i.e. the Complainant) has provided no warranty, standardization or certification or other authorization of the use of its trademarked name.
It is further contended by Complainant that as a result of the Respondent’s unauthorized copying of pictures or images of Yanmar products from official Yanmar corporate brochures, the overall impression is that the website at the disputed domain name is operated by a company that is part of the Yanmar group of companies and entities, where in fact this is not the case. Complainant provides that this impression amounts to a grave misrepresentation.
The Complainant alleges the Respondent creates confusion among the public, especially the users of Yanmar marine engines, and harms the Complainant by wrongful and misleading use of the domain name and Yanmar’s registered trademarks and information on its website.
Complainant points out that the Domain Name <yanmar-engines.com> consists of “yanmar” as a main part, “engines” as a generic word, and “.com” as a suffix. It is stated that it is clear that the well-known and distinctive trademark “YANMAR” is the most prominent element in these combinations, and this is identical to the Complainant’s trademark and will create confusion among the public.
Complainant alleges that before any notice of the dispute, the Respondent used the domain name but did not use it in connection with a bona fide offering of goods and services.
It is asserted by Complainant that at the time of registration of the domain name, no current (non-expired) trademark or service mark registration, identical or similar to the textual or word elements of the domain name was issued in the name of the Registrant.
Complainant says that although the Respondent has used the domain name, the Respondent has not been and is not commonly known by it. Moreover, the domain name is not the same as the Respondent’s trade name. Complainant concludes from this that it is clear that the Respondent’s use of the Complainant’s well-known trademark is meant to mislead the public and to profit from such misleading behavior.
Complainant alleges the Respondent uses the domain name with intent for commercial gain by misleadingly diverting consumers to its site and/or tarnishing the Complainant’s trademark “YANMAR”. It is said that the Respondent’s misuse of the Complainant’s well-known trademarks and device marks involve the same type of products that are associated with Yanmar’s trademarks and device marks. It is contended that this is not a situation where a company is using a trademark for a completely different product where confusion could be minimal. In this case, the confusion is readily apparent because of the incredible similarity in the products offered by the Respondent and the Complainant.
Complainant alleges the domain name was registered by Respondent primarily for the purpose of disrupting the business of a competitor (the Complainant), and that the Respondent uses the domain name with the intent to mislead customers into thinking that they are dealing with the well-known Complainant.
It is also stated that the Respondent must have been aware that “YANMAR” has been for years, and is currently being used by the Complainant and its group companies as the trademarks, trade names and part of their domain names all over the world.
The Complainant refers to the Young Genius Software AB v. MWD, James Vargas,
WIPO Case No. D2000-0591, where the Panel
“At the date when the domain name was registered by the Respondent a trademark search would have revealed the Complainant’s YOUNG GENIUS registration in Sweden. (…) The Respondent cannot, in the circumstances, claim to fall within the bona fide requirement of para. 4c(i) of the Policy. The exercise of normal prudence before adopting the domain name at issue would have put the Respondent on notice of the Complainant’s trademark.”
It is contended by Complainant that it registered the “YANMAR” trademark prior to the Respondent’s registration of the Domain Name and that if the Respondent had conducted an initial trademark search, it would have discovered the “YANMAR” trademark. Moreover, it is contended that the trademark “YANMAR” is well-known all over the world.
The Complainant considers that the above contentions easily prove that the Respondent has registered and continues to use the domain name in bad faith and in defiance of trademark registration, all to the detriment of the Complainant.
Finally the Complainant requests the Administrative Panel to issue a decision that <yanmar-engines.com> be cancelled.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant’s registered trademarks, including in the United Arab Emirates where the Respondent has his address, is made up only of the word “Yanmar” or the word “Yanmar” with a circular target design in the background. This word is a made-up word. The disputed domain name has this made-up word “Yanmar” with the addition of a dash and the generic word “engines”. It is clear that the Complainant’s trademark is not identical to the disputed domain name given that the domain name includes the word “engines”. The trademarks to which the Complainant has rights are registered under the Nice Classification system in Class 7 (USA & Switzerland) and with WIPO under the Madrid Agreement and Protocol under NCL(8) 35 & 37, all of which refer to engines and machinery.
The addition of the generic word “engines” to the made-up word of Yanmar tends to focus the readers attention on the unusual part of the domain name, the word Yanmar. For this reason the generic word “engines” does not distinguish the disputed domain name from that of the Complainant’s trademarks but rather emphasizes the distinguishing aspect of the domain name which is the made-up word Yanmar, the word which is exactly the same as the trademark of the Complainant.
In view of the above, the Panel finds that the domain name is confusingly similar to the trademarks of the Complainant.
B. Rights or Legitimate Interests
Paragraph 4(a) of the Policy requires the Complainant to prove that the Respondent has “no rights or legitimate interests in respect of the domain name”.
There is no evidence that the Respondent Yanmar Marine of Dubai has any legal relationship to Devakumar Ramasamy or Yanmar Marine in Singapore. The only evidence available indicates that the second part of the Respondent’s name in which the domain name is registered, Devakumar Ramasamy, is (a) the owner and manager of the Singapore registered business Yanmar Marine in Singapore and (b) a partner in another (apparently unrelated) company in the UAE - Precision Diesel Technology - the other partners in Precision Diesel Technology, but not Devakumar Ramasamy, are registered as the owners of Yanmar Marine in the UAE. While there is no clear evidence of a legal relationship between Devakumar Ramasamy and Yanmar Marine in Dubai, they have jointly registered the disputed domain name and the Panel finds, as indicated above, that this indicates they are acting in concert. The Panel proceeds to deal separately with each of the entities in which the disputed domain name is registered and attributes the conduct of either one of them to be the conduct of both of them.
The Repondents (both the UAE company Yanmar Marine LLC and Devakumar Ramasamy through his Singapore registered business) sell OEM spare parts for Yanmar engines, and the Complainant accepts that the Respondents may do so without the consent of the Complainant. However, there is evidence the Respondents are also selling counterfeit unauthorized spare parts in Singapore which are marked with the Complainant’s “YANMAR” trademark.
The Respondents were able to register in 2001, the company and business name “Yanmar Marine” in both the UAE (Yanmar Marine LLC) and Singapore (Yanmar Marine) respectively. The Complainant’s trademark and device mark “YANMAR” were first registered in Singapore in 1968, and in the UAE in 1993. Hence the registration of the Respondents’ company and business name “Yanmar Marine” occurred more than seven years after the Complainant first registered its trademarks with the word “Yanmar” in those two jurisdictions. Before registration of the domain name or the name of the UAE company or Singapore business name, the Respondents could relatively easily have been aware of the Complainant’s trademark rights in those two jurisdictions.
It is noted that the registration by the Respondents of the disputed domain name also occurred in 2001. It is unclear when the Respondents started using a website at the domain name in the manner alleged by the Complainant. In both the company registration in the UAE and in the Singapore business registration of the name “Yanmar Marine”, the Respondents state that they are involved in engines. In the UAE registration one of the Respondent company’s activities is described as, amongst others, “engines” and in Singapore the business registration describes the Respondent’s business’ main activity as “Diesel Engine & Spare Parts Trading”. The Complainant’s trademarks registered in the UAE and Singapore and in many other countries, also are registered in classes covering machinery and engines.
The question arises whether the registration in 2001, of the company in the UAE, and the business in Singapore by one of the Respondents, under the name “Yanmar Marine” is sufficient to establish a right or legitimate interest in respect of the domain name. Whether such rights arise could depend on whether the law in those two jurisdictions grants rights in a name corresponding to the domain name.
The Complainant has made an application challenging the Respondent’s registration of a business name and use of a name in Singapore which includes “Yanmar”. The rights arising in the UAE or Singapore from registration of a company name or business name are not explicitly set out in the Complaint, however the Complainant states that the Respondents have no right or legitimate interest to use the domain name corresponding to the trademarks of the Complainant (i.e. “YANMAR”).
The submission of the Complainant includes a copy of its’ lawyers submission to the Singapore Registrar of Businesses requesting that the Registrar “exercise your discretion pursuant to section 11 of the Business Registration Act (as amended) …to direct YM (i.e. The registered business ‘Yanmar Marine’) to change its business name to another name which does not incorporate the word ‘Yanmar’ or any other confusingly similar word”.
Paragraph 18 (a) of the Rules provides that if there is “any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.” In this context, the first issue is whether an application to a statutory body which appears not to be a court but where the statutory body has the power to require a Respondent to use a different name in Singapore, is a “legal proceeding” within the meaning of Paragraph 18 of the Rules. While the heading to Paragraph 18 states “Effect of Court Proceedings”, the Rule itself refers to “legal proceedings”. Given the multitude of different legal systems around the world and the many ways in which legal proceedings might be pursued, it is conceivable that an application to a statutory authority to have a person directed to use a different name may be considered a “legal proceeding” even if it may not be “court proceedings”. The expression “legal proceedings” appears to include proceedings that may have an outcome affecting a legal right or duty of the Respondent or Complainant (a) without any recourse to a court or (b) without the outcome of the proceedings necessarily having any effect on the legal relationship between the Complainant and the Respondent. For example, it might only have an impact on the legal duty to register under a different business name.
In the heading of Paragraph 18 of the Rules there is used the expression “Court Proceedings” and this expression appears to encompass a narrower class of proceedings than the expression “legal proceedings”. The first expression – Court Proceedings -envisages that there is a dispute or lis between the parties before a court which has the power to determine the legal rights between the parties in dispute. It is noted that the April 30, 1999 Report of the WIPO Internet Domain Name Process - The Management of Internet Names and Addresses: Intellectual Property Issues, the Report upon which the Policy and Rules were based, only refers to “court litigation” (see paragraphs 194-196 & 137-147) yet the Rules use the terminology “legal proceedings”. This suggests that the drafters of the Rules took a wider view of the type of proceedings that might be taken into account by a Panel and not strictly court litigation only.
Since, in this matter, the Panel has no information on the proper characterization of the Complainant’s application to the Singapore Registrar of Businesses (i.e. whether it is a ‘court’ or ‘legal’ proceeding or both), the Panel also relies on the assertions in the Complaint. The Complainant refers in the Complaint to its application to the Registrar of Businesses in Singapore under the heading “Other Legal Proceedings”. The Panel can see no compelling reason to reject this characterization by the Complainant of the Singapore application as “Legal Proceedings”.
The second issue is whether the Singapore legal proceedings are “…in respect of a domain-name dispute that is the subject of the complaint…”. Before this Panel may exercise its discretion to decide whether to suspend or terminate this administrative proceeding or to proceed to a decision, the Rules at Paragraph 18(a) require that the legal proceedings be “…in respect of a domain-name dispute that is the subject of the complaint…”. The Singapore application to the Registrar of Businesses refers to the website at the disputed domain name and alleges substantially the same as that set out in the Complaint in this administrative proceeding. Both the Collins Paperback English Dictionary and the Oxford Paperback Dictionary define the expression “in respect of” as meaning “reference or relation”. It is clear that the Singapore legal proceedings make reference to the domain name dispute between the Complainant and Respondent and substantially the same complaints are made, and the application before the Singapore Registrar of Businesses is based on substantially the same assertions, as those set out in the Complaint in this administrative proceeding.
For all the above reasons, the Panel finds there was a legal proceeding initiated in Singapore prior to this administrative proceeding and that it is in respect of the domain name dispute that is the subject of the Complaint in this administrative proceeding.
Should the Panel exercise its discretion to decide
whether to suspend or terminate this administrative proceeding or should it
proceed to a decision? Previous Panels have taken the practical view that unless
the outcome of the legal proceedings are likely to affect the findings of the
Panel or the outcome of the administrative proceedings, the Panel should proceed
to decision. (e.g. Cognigen Networks, Inc. v. Pharmaceutical Outcomes
Research a/k/a Cognigen Corporation, WIPO
Case No. D2001-1094 and Sociйtй des Bains de Mer et du Cercle des Etrangers
а Monaco v. Internet Billions Domains Inc. WIPO
Case No. D2003-0985). The Panel would respectfully agree with this approach
as it avoids uncertainty and delays, in keeping with the Panel’s obligation
under Paragraph 10(c) of the Rules to “…ensure that the administrative
proceeding takes place with due expedition…”. For the reasons set
out in the following paragraphs, the Panel is of the view that the outcome of
the legal proceedings in Singapore are unlikely to have any impact on the findings
or decision of the Panel. In any event, it is emphasised that this Panel makes
no finding or comes to any conclusion or decision concerning whether the Respondent
might use a particular name in Singapore. That is a question for Singapore law
and the Singapore authorities.
Returning to the issue of whether the Respondent has any right or legitimate interest in the disputed domain name, it is noted that section 10(3) of the Singapore Business Names Act states:
“The registration of a name under which a person carries on business shall not be construed as authorising the use of that name if, apart from such registration, the use thereof could be prohibited.”
This provision is similar to the legal result of registering a company or business name in many countries. Registration of a company or business name in a register is a means of providing a central depository of information which any interested person may conveniently consult in order to find out about a company or business. Registration in such a register can be a legal duty and does not necessarily provide any legal right to use the name in which the company is registered. Given that the Singapore legislation gives no authorisation of the name “Yanmar Marine”, it seems that even if the Registrar of Businesses were to reject the Complainant’s application, the Respondent would have no legal right to use the name if its use could otherwise be prohibited. In other words the outcome of the application in Singapore, the legal proceedings, does not necessarily have any legal effect on whether the use of the name “Yanmar Marine” or of the word “Yanmar” could be prohibited. For this reason the Panel decides to proceed to a decision.
As can be seen from many other decisions in domain name disputes under the Policy and Rules, and in accordance with Paragraph 4(c) of the Policy, if prior to having notice of the domain name dispute the Respondent used a name corresponding to the domain name in connection with a bona fide offering of goods or services, then this is sufficient to demonstrate the Respondent’s rights or legitimate interests to the domain name. The Complainant provides abundant evidence of use by the Respondents of a name corresponding to the domain name (i.e. ‘Yanmar Marine’) but that this was not a bona fide offering of goods or services. The Complainant provides evidence that the Respondent offered counterfeit “Yanmar” spare parts, falsely represented that it was associated with the Complainant and its goods and services, and breached the Complainant’s copyright by copying large parts of its brochures and corporate advertising without the consent of the copyright holder, the Complainant. This evidence shows that the Respondent was not proving a bide fide offering of goods or services. There is also no evidence to indicate that the Respondent was commonly known by the domain name even if it was registered in the UAE and Singapore some three years ago. On the contrary, it appears more likely that the Complainant was commonly known by a name corresponding to the domain name.
In view of the above conclusions, and in the absence of the benefit of any comment or evidence provided by the Respondent, the Panel finds that the Complainant has demonstrated that the Respondent has no rights or legitimate interests in respect of the domain name.
C. Registered and Used in Bad Faith
The Policy Paragraph 4(a)(iii) requires the Complainant to prove that the domain name has been registered and is being used in bad faith. The Policy Paragraph 4(b)(iv) states that this bad faith is proven if it is found that in using the domain name the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondents’ website by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
The Complainant provides compelling evidence that the Respondents (a) have used the domain name to attract potential customers (i.e. for commercial gain) to the website at the domain name, (b) have without the Complainant’s consent copied and used the Complainant’s trade marks, (c) without the Complainant’s authorization have copied and used copyright protected advertising and corporate information material, and (d) have falsely asserted that the Complainant has approved, certified and/or warranties goods and services the Respondent is offering on the website at the disputed domain name. These factors and conduct clearly create a likelihood of confusion with the Complainant’s mark that the products and services at the Respondent’s website are sourced from or endorsed by the Complainant when they are not. The factors and conduct listed above also create a likelihood of confusion with the Complainant’s mark as to the sponsorship, affiliation or endorsement of the Respondent’s website by the Complainant when the Complainant in no way sponsors, affiliates itself with, or endorses the Respondent’s website.
For the reasons set out above, the Panel finds that the disputed domain name
has been registered and is being used in bad faith.
The Complainant seeks cancellation of the domain name. It appears the Complainant has considered the remedies available under Paragraph 4(i) of the Policy and, pursuant to the Rules Paragraph 3(b)(x), has only requested that the domain name be cancelled.
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, <yanmar-engines.com>
Frank R. Schoneveld
Dated: July 5, 2004