Yohji Yamamoto USA, Inc. v. New York Link, Inc.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Yohji Yamamoto Usa, Inc. v. New York Link, Inc.

Case No. D2002-0326

1. The Parties

The Complainant is Yohji Yamamoto U.S.A., Inc. ("Complainant").

Complainant is incorporated in the State of Delaware, United States of America

and has its principal place of business at 103 Grand Street, New York,

New York 10013, United States of America.

The Respondent is New York Link, Inc. ("Respondent"), with

an address 101 West 23rd Street, New York,

New York 10011, United States of America.

2. The Domain Names and Registrar

The domain name at issue is <yohjiyamamoto.com< (the "Domain

Name"), which is registered with Abacus America, Inc. d/b/a Names4ever

of San Diego, California, United States of America (the "Registrar").

3. Procedural History

This is an administrative proceeding pursuant to the Uniform Domain Name

Dispute Resolution Policy ("the Policy") adopted by the Internet

Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999,

in accordance with the Rules for the Policy, approved by ICAAN on October 24, 1999,

("the Rules") and the Supplemental Rules for the Policy (the "Supplemental

Rules") of the WIPO Arbitration and Mediation Center ("the Center").

A complaint was submitted electronically to the Center on April 5, 2002.

A hardcopy of the Complaint along with referenced exhibits was received

on April 9, 2002. The Center acknowledged receipt of the complaint

on April 11, 2002. Registration details were sought from the Registrar

on April 12, 2002, via e-mail. On April 15, 2002, by

return e-mail, the Registrar verified that the domain name was registered

to the Respondent, that the domain name is subject to the Policy, and that

the domain name is currently active. On April 16, 2002, the Center

conducted its review and verified that the complaint satisfies the formal

requirements set out in the Policy, the Rules and Supplemental Rules. On

this same date, the Center informed Respondent that an administrative proceeding

had been commenced against it and set the date for reply as May 6, 2002.

The Respondent did not submit a response. On May 7, 2002, a Notification

of Default was sent to the Respondent by facsimile and by e-mail to the

addresses provided by the Registrar. On May 14, 2002, having received

Mr. Arif Hyder Ali’s Declaration of Impartiality and Independence

and his Statement of Acceptance, the WIPO Center transmitted a copy of the

complaint to Mr. Ali. The date of decision was set for May 28, 2002.

4. Factual Background

Complainant is the American corporation for Mr. Yohji Yamamoto. Mr. Yamamoto

is a fashioner designer with stores in the United States and abroad. Through

his company, Mr. Yamamoto sells his line of clothing, as well as accessories,

toiletries and related goods.

Complainant owns several trademarks (the "Marks") that are registered

with the U.S. Patent and Trademark Office ("USPTO). The Complainant

submitted copies of the following U.S. trademark registrations:

YOHJI YAMAMOTO & J (stylized form), U.S. Registration No. 2,112,531

for various toiletries (registration date – November 11, 1997);

YOHJI YAMAMOTO (stylized form), U.S. Registration No. 2,122,762 for various

toiletries and accessories (registration date -- December 23, 1997);

YOHJI YAMAMOTO (stylized form), U.S. Registration No. 1,250,431 for clothing

and accessories (registration date – June 14, 1983);

YOHJI YAMAMOTO & Y (stylized form), U.S. Registration No. 2,080,686

for eyeglasses and sunglasses (registration date – July 29, 1997);

and

YOHJI YAMAMOTO (stylized form), U.S. Registration No. 1,260,987 for clothing

and accessories (registration date – December 13, 1983).

Additionally, Complainant owns the following domain names: <yohjiyamamoto-usa.com>,

<yohjiyamamoto.net>, <yohjimayamoto.org> and <yohjiyamamoto.co.jp>.

The Whois database shows that Respondent registered the Domain Name on

January 6, 2001. Complainant learned of Respondent’s registration

in early 2002. On February 14, 2002, Complainant sent a letter

by certified mail, return receipt requested to Respondent requesting that

Respondent discontinue using the Domain Name. Respondent received and signed

for the letter, but neither replied to the letter nor complied with the

request. On March 6, 2002, Complainant sent a second letter to

Respondent asking for a response to its request. This letter was also sent

by certified mail, return receipt requested. The return receipt confirms

that Respondent received the letter. Once again, Respondent did nothing

in response to the request.

Whois database records reveal that Respondent is the owner of several other

domain names that reflect the names of fashion designers: <emmanuelungaro.com>,

<gianni-versace.com> and <marcus-schenkenberg.com>. Respondent

was recently involved in another administrative proceeding instituted under

the Policy for its domain name <thierry-mugler.com>. That proceeding

resulted in a transfer of the domain name in question to the Complainant.

The Domain Name does not resolve to any active web site.

5. Parties’ Contentions

A. The Complainant

Complainant contends that the Domain Name infringes on Complainant’s rights

because it is confusingly similar to Complainant’s Marks, the Respondent

has no rights or legitimate interest in the Domain Name, and because Respondent

registered the Domain Name in bad faith. Consequently, Complainant requests

that the Domain Name be transferred to the Complainant.

Complainant submits that Mr. Yamamoto is an internationally, well-known

fashion designer, selling clothes through high-end retail stores and over

twenty eponymous stores. Complainant contends that the public and the industry

recognize the term "Yohji Yamamoto" to be a sign of origin

for the goods and associate the Marks with Mr. Yamamoto. Complainant

asserts that it has earned a valuable reputation and goodwill as a result

of its efforts, skills and experience. Further Complainant states that it

maintains that goodwill by producing high quality goods, and that it continues

to expend money and time to promote its goods and services.

The Complainant asserts that the Domain Name is confusingly similar to

Complainant’s Marks and Complainant’s other domain names. Complainant states

that the Marks are in fact identical when one ignores the Domain Name suffix.

Complainant states that Respondent has no rights or legitimate interests

in the Domain Name. Complainant states that it has not licensed or otherwise

permitted Respondent to use either the Domain Name or the trademark YOHJI

YAMAMOTO. Complainant further states that the Domain Name does not reflect

the name of Respondent’s corporate identity and that Respondent is not commonly

known by such name. In addition, Complainant contends that Respondent has

no trademark rights in the name YOHJI YAMAMOTO. Finally, Complainant

states that Respondent is not making a legitimate use – either commercial

or otherwise – of the Domain Name.

Complainant then offers evidence to show Respondent’s bad faith registration

of the Marks. Complainant urges that it is clear that the registration is

in bad faith because, inter alia, Complainant’s Marks are famous,

Respondent has engaged in a pattern of registering the names of famous fashion

designers and the Domain Name does not resolve to any active web site.

B. Respondent

Respondent did not submit a Response.

6. Discussions and Findings

As a preliminary matter, the Panel finds that the Center’s formalities

compliance review was performed correctly and that the Complaint and Notification

of Respondent default were properly notified to Respondent. The Panel finds

that Respondent had proper notice of this Administrative Proceeding.

Paragraph 15(a) of the Rules provides the following instructions: "A

Panel shall decide a complaint based 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." As the Respondent

did not submit a response, the Panel will render its decision based on prior

WIPO decisions and the Complaint.

The Panel further notes the guidance provided in Paragraph 14(b) of the

Rules: "If a Party, in the absence of exceptional circumstances, does

not comply with any provision of, or requirement under, these Rules or any

request from the Panel, the Panel shall draw such inferences therefrom as

it considers appropriate."

Paragraph 4(a) of the Policy "directs" that the burden is on

the Complainant to establish each of the following elements:

(i) that the Respondent’s domain name is identical or confusingly

similar to a trademark or service mark in which Complainant has rights;

(ii) that Respondent has no rights or legitimate interests in respect

to the domain name; and

(iii) that Respondent’s domain name has been registered and used in

bad faith.

Each of these elements is discussed below.

A. Similarity of Complainant’s Trademarks and Respondent’s Domain Name

Complainant asserts rights in the mark YOHJI YAMAMOTO. The Panel finds that

the Complainant has rights in this trademark for clothing as well as various

accessories and toiletries. Respondent’s domain name is <yohjiyamamoto.com>.

It is well established that the suffix is to be ignored in comparing the trademark

and the domain name that is the subject of the dispute. Guinness United Distillers

& Vintners Amsterdam B.V. v. N/A & This Domain Name Is For Sale/ Email

Your Offers, WIPO Case No. D2002-0178 (April 16, 2002);

Experience Hendrix, LLC v. Denny Hammerton, et. al., WIPO

Case No. D2000-0364. In light of this rule it is clear that the Domain Name

is not just confusingly similar but identical to the marks in which Complainant

has rights.

The Panel finds for Complainant on element (i).

B. Respondent’s Rights or Legitimate Interests in the Domain Name

The Panel next examines whether the Respondent has any rights or a legitimate

interest in the Domain Name, with reference to the guiding criteria set

forth in Paragraph 4(c) of the Policy. Those guidelines consider whether:

(i) before any notice to the Respondent, the Respondent was using,

or was making demonstrable preparations to use, the Domain Name or a name

corresponding to the Domain Name in connection with a bona fide offering

of goods or services; or

(ii) the Respondent has been commonly known by the Domain Name, even

if the holder has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate or non-commercial fair

use of the Domain Name, without intent for commercial gain to misleadingly

divert consumers or to tarnish the trademark or service mark at issue.

As the Policy points out, these factors are not exhaustive of all the circumstances

that may establish rights or a legitimate interest.

The Domain Name is <yohjiyamamoto.com>. The Respondent’s name

is New York Link, Inc. The Domain Name does not reflect the

name of Respondent’s corporate identity. Moreover, Respondent does not appear

to have any rights to any trade names or trademarks consisting in whole

or in part of the mark "YOHJI YAMAMOTO." There is nothing

to show that Respondent is commonly known by the Domain Name.

The Panel accepts Complainant’s contention that the Respondent has neither

been permitted to use the Marks nor has been licensed by the Complainant.

The Panel has visited the <yohjiyamamto.com> web site and has found

that it does not resolve to a web site. Consequently, Respondent does not

appear to be making a bona fide offering of goods or services or a legitimate

noncommercial fair use of the name. In addition, there is no evidence to

show that Respondent has made any preparations to use the Domain Name.

The Respondent has foregone the opportunity to provide any evidence to

support a finding of legitimate use, and the Panel is unable to identify

any reason which would allow the Respondent to claim any right or legitimate

interest in respect of the Domain Name.

The Panel, therefore, finds in favor of the Complainant on element (ii).

C. Bad Faith Registration

In deciding whether the Respondent registered the Domain Name in bad faith,

paragraph 4(b) of the Policy sets out certain non-exclusive factors that

should be considered. These include evidence of whether:

(i) Respondent registered or 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

trademark or service mark for valuable consideration in excess of

the documented out-of-pocket costs directly related to the domain

name;

(ii) Respondent registered the Domain Name in order to prevent

the owner of the trademark or service mark from reflecting the mark

in a corresponding Domain Name, provided Respondent has engaged in

a pattern of such conduct;

(iii) Respondent has registered the Domain Name primarily for

the purpose of disrupting the business of a competitor; or

(iv) Respondent has intentionally attempted to attract, for commercial

gain, Internet users to its web site, by creating a likelihood of

confusion with the Complainant’s mark as to the source, sponsorship,

affiliation, or endorsement one of Complainant’s products or services.

The Panel considered the following to be pertinent in deciding the third element.

First, Respondent has held the Domain Name beginning in January 2001, until

the present time. There is no evidence to show that the Respondent has ever

used the Domain Name for any purpose. The Panel is inclined to agree with the

Panel in the Telstra decision which found that under some circumstances,

passive holding of a domain name can constitute use in bad faith of that domain

name. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO

Case No. D2000-0003 (February 18, 2000). In this Panel’s opinion

this case presents the very kind of circumstances envisioned by the Telstra

Panel.

Second, the Panel finds that the Complainant has valid rights in the name

YOHJI YAMAMOTO, and that Complainant’s Marks are well established.

Complainant’s Marks and domain names have been and are recognized by the

public and the industry as originating from a single source, namely, Complainant,

and Complainant’s Marks and domain names serve to distinguish Complainant’s

services from the services of others. The Panel agrees with Complainant

that there is little chance that Respondent unknowingly, arbitrarily and

in good faith picked the name YOHJI YAMAMOTO as a domain name. Mr.

Yamamoto has a distinctive name and Complainant’s Marks are equally distinctive.

Thus, the Panel finds that Respondent has registered the Domain Name solely

to prevent Complainant from reflecting its Marks in a corresponding domain

name.

Third, the Panel has verified that Respondent is the registrant of names

belonging to other famous designers and personalities, and that another

designer has successfully instituted an administrative proceeding against

Respondent. As such the Panel concludes that the Respondent has engaged

in a pattern of registering domain names with the sole objective of preventing

a mark holder from reflecting its mark in the corresponding domain name.

Finally, consistent with prior WIPO decisions, the Panel draws inferences

from the fact that the Respondent elected to not submit a response in this

administrative proceeding and also failed to respond to Complainant’s various

letters to Respondent prior to the commencement of this Administrative Proceeding.

In light of the circumstances of this case, it is difficult to reach any

conclusion other than that the Respondent registered and is using the Domain

Name in bad faith.

7. Decision

For the foregoing reasons, the Panel decides:

1. That the Domain name registered by Respondent is identical

or confusingly similar to marks in which Complainant has rights;

2. That the Respondent has no rights or legitimate interest with

respect to the Domain Name; and

3. That the Domain name has been registered and is being used

in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires

that the registration of the domain name <yohjiyamamoto.com>

be transferred to the Complainant.

Arif Hyder Ali

Sole Panelist

Date: May 29, 2002