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Generic Top Level Domain Name (gTLD) Decisions |
Toyota Jidosha Kabushiki Kaisha t/a
Toyota Motor Corporation v. Double Time Jazz a/k/a Jamey Aebersold
Claim Number: FA0205000113316
PARTIES
Complainant
is Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation, Toyota
Aichi, JAPAN (“Complainant”) represented by John F. Hornick, of Finnegan,
Henderson, Farabow, Garrett & Dunner LLP. Respondent is Double Time
Jazz a/k/a Jamey Aebersold,
Floyds Knobs, IN, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <TOYOTAF1.COM>,
registered with Register.com.
PANEL
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.
Tyrus
R. Atkinson, Jr., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on May 10, 2002; the Forum received
a hard copy of the Complaint
on May 13, 2002.
On
May 13, 2002, Register.com confirmed by e-mail to the Forum that the domain
name <toyotaf1.com> is
registered with Register.com and that the Respondent is the current registrant
of the name. Register.com has verified
that Respondent is bound by the Register.com registration agreement and has
thereby agreed to resolve domain-name
disputes brought by third parties in
accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
May 13, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting
a deadline of June 3,
2002 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail,
post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts,
and to postmaster@toyotaf1.com by e-mail.
A
late Response was received and determined to be in noncompliance with ICANN
Rule 5(b)(vii) on June 4, 2002. On June
4, 2002, a further e-mailed submission was received from Respondent, which did
not substantively address Complainant’s claim.
The Panel decides to consider all of Respondent’s submissions under the
provisions of Rule 10(b) of the Rules for Uniform Domain Name
Dispute Resolution
Policy.
Complainant
submitted a timely Additional Submission pursuant to Forum Supplemental Rule 7
on June 10, 2002.
On June 26, 2002, pursuant to Complainant’s request to
have the dispute decided by a single-member
Panel, the Forum appointed Tyrus R.
Atkinson, Jr., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation (TMC) has its
principal office in Japan. TMC owns
numerous subsidiaries, including Toyota Motorsports GmbH in Germany and Toyota
Racing Development U.S.A., Inc. in the United
States.
Traded
on the New York Stock Exchange, TMC is a global leader in the development and
manufacturing of passenger vehicles, work vehicles,
racecars, and a wide
variety of other products related to automobiles, including promotional goods
such as clothing.
TMC’s
motor vehicle products are currently sold by TMC directly and through TMC’s
network of authorized partners in over 200 countries.
TMC
showcases its award-winning products and services, including Formula One racing
teams, at its <TOYOTA-F1.COM>, <TOYOTA.COM>,
<TOYOTAMOTORSPORTS.COM>, and <TRDUSA.COM> websites.
Complainant
has continuously used TOYOTA as a trade name, trademark, and service mark from
at least 1958 to present. TMC owns
registrations for the TOYOTA mark in almost 200 countries around the world,
including the United States. Complainant
owns a family of TOYOTA marks that consist of the word TOYOTA in association
with other words.
Respondent
had actual knowledge of the TOYOTA mark when he registered the Domain
Name. On February 19, 2002, Complainant
received an e-mail from Respondent advising Complainant that Respondent was
owner of the Domain
Name and inquiring whether Respondent could become an
authorized dealer of TOYOTA branded clothes to promote TMC’s Formula One racing
team. Respondent’s request was denied
by TMC.
Respondent
misappropriated Complainant’s goodwill when he purchased the previously registered
domain name <TOYOTAF1.COM>,
which is virtually identical to and confusingly similar to Complainant’s famous
TOYOTA mark.
Without
permission from TMC, Respondent launched an active website featuring the TOYOTA
mark and falsely claiming that Respondent
would soon be selling authorized
TOYOTA branded goods relating to Formula One racing.
Respondent
is not and has never been an authorized TOYOTA dealer.
Respondent’s
registration and use of the Domain Name are likely to cause confusion and to
deceive consumers into mistakenly believing
that Respondent’s <TOYOTAF1.COM> website and
associated products and services are offered, authorized or sponsored by
Complainant.
Because
Respondent’s registration and use of the Domain Name improperly trades on
Complainant’s goodwill and infringes Complainant’s
rights in its TOYOTA mark,
Respondent is not using and cannot demonstrate an intent to use the Domain Name
in connection with a bona
fide offering of goods or services.
Respondent
is not and has not been commonly known by the Domain Name.
Respondent
is not making a legitimate noncommercial or fair use of the Domain Name.
Respondent
registered and uses the Domain Name primarily for the purpose of disrupting
Complainant’s business.
Respondent
knew of Complainant’s trademark and its unauthorized use for commercial gain is
evidence of bad faith.
B.
Respondent
Respondent
is Jamey Aebersold of Floyds Knobs, Indiana, who registered <TOYOTAF1.COM> on November 30,
2001, under the name “Double-Time Jazz Jamey Aebersold.”
Respondent
is a loyal fan of Toyota since 1983.
Respondent has, since that time, purchased Toyota motor vehicles for the
purpose of racing in the S.C.C.A. autocrossing events across
the country. Respondent has won a number of racing events
using Toyota vehicles.
When
Respondent began racing in the Pro-Solo series he signed up with Toyota Motor
Sport’s contingency program to be one of the contract
drivers eligible for
awards at each of the events. This
permitted Respondent to purchase directly from TRD (Toyota Racing Development)
their entire line of performance parts and apparel.
Respondent
purchased the domain name, <TOYOTAF1.COM>
from an individual who had registered it.
The initial intent was to set up a public forum for discussion of data
acquisition, Toyota’s entry into Formula 1, Autocrossing and
many other forms
of racing.
During
the month of January 2002, Respondent thought it would be nice to offer Toyota
F1 apparel on a website. Respondent
contacted by e-mail various employees of Complainant submitting his request to
be granted a license to distribute the Toyota
line of apparel.
After
a number of such messages, Complainant informed Respondent that “TMC will not
be granting you or your company a license and
that there will be no
negotiations for such a license.”
Respondent
assumed that having seen the domain name offered for sale for approximately 6
months time by an individual in Europe, that
TMC had no interest in the
name. The name was purchased on the
open market via Afternic.com and it was an open bid action in which TMC could
have participated if it
had any interest in the domain name.
Three
days after being informed by TMC that there would be no license granted,
Respondent changed the website to reflect a public
forum for discussion. There is nothing commercial about the
website.
Respondent
is making a noncommercial or fair use of the domain name. Respondent provides a link to the official
Toyota F1 Racing site located at <Toyota-F1.com>.
C.
Additional Submissions
Complainant
in its Reply, contends that Respondent is not an authorized Toyota reseller,
that even if he were a reseller, that would
not give Respondent a legitimate
interest in the domain name, that Complainant has no obligation to register all
variations of its
marks, and that Respondent had no intention of creating a
public forum.
FINDINGS
1. Complainant is a well-known organization
that operates on a worldwide basis in the sale of motor vehicles and related
products, including
clothing.
Complainant is involved in motor vehicle racing by its sale of vehicles
suited for that purpose, components and clothing associated
with Toyota racing.
2. Complainant has operated as TOYOTA for
many years and owns trademark and service mark registrations in the United
States and in a
large number of countries for the mark, TOYOTA.
3. Complainant markets its products either
directly or through authorized license agreements with third parties.
4. Complainant operates a website at
<TOYOTA-F1.COM> to promote its racing interests.
5. Respondent is a racecar driver who elects
to use Toyota motor vehicles in the racing events in which he competes.
6. Respondent purchased the domain name, <TOYOTAF1.COM> from another and
on or about November 30, 2001, registered it in his name.
7. Respondent thereafter contacted
Complainant with a request that Respondent be made an authorized seller of
Complainant’s racing clothing
which was to be sold through the <TOYOTAF1.COM> website.
8. After a number of e-mail correspondences
between Respondent and employees of Complainant, Complainant rejected
Respondent’s request
for a license.
9. During this time, Respondent was
operating the website at <TOYOTAF1.COM>
with the information contained therein that Respondent was “currently in talks
with Toyota Motor Sports to be a licensed distributor
of their Toyota
racir…click here if you would like to be notified by e-mail when these
negotiations are finalized and we have Toyota
F1 for sale…The official Toyota
F1 Racing site is located here Toyota-F1.com.”
10. On March 15, 2002, Counsel for
Complainant served Respondent with a cease and desist letter demanding a
discontinuance of any and
all use of the word Toyota and of <TOYOTAF1.COM> and to transfer
the domain name to Complainant.
11. Respondent received the cease and desist
letter and sent his answer to Complainant.
12. At some later time, Respondent changed
the <TOYOTAF1.COM> to reflect
that the website was a “public forum” operation.
13. The domain name is confusingly similar to
the Complainant’s mark, TOYOTA.
14. Respondent has no rights or legitimate
interests in the domain name, <TOYOTAF1.COM>.
15. Respondent registered and used the domain
name in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant
has rights;
(2)
the 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.
Identical and/or Confusingly Similar
Complainant has rights in the mark,
TOYOTA, by reason of the long use of the mark in commerce and the numerous
trademark registrations
of the mark in the United States and other
countries.
Complainant contends that the domain name
<TOYOTAF1.COM> is confusingly
similar to Complainant’s valuable and famous federally registered trademark
TOYOTA. Respondent’s addition, it is
contended, of the generic term “F1”(which stands for “Formula One” racing) to
the disputed Domain Name
does not provide a basis for distinguishing it from
Complainant’s TOYOTA mark. Respondent
fails to dispute the confusing similarity of the mark and domain name. Respondent admits that he purchased the
domain name for the specific purpose that it be associated with Complainant’s
products and
services. Respondent
states “Our initial intent when we bought the domain name, <TOYOTAF1.COM>, was to set up a public forum for discussion
of data acquisition, Toyota’s entry into Formula 1, Autocrossing and many other
forms
of racing.” Respondent stated in
a letter to Complainant’s counsel as follows.
“Back in June of 2001 I found out that Toyota would be entering into the
Formula 1 racing scene in 2002 …I was thrilled with the idea
that Toyota would
be entering Formula 1…I immediately went out to <TOYOTAF1.COM>, being the logical name the team would have
for their website, and to my surprise I see a nice flash animation with the
words ToyotaF1
and a note that this domain name was for sale. I then did a search for Toyota and F1 and
found the TMC site to be located at Toyota-F1.com.” Respondent chose <TOYOTAF1.COM> to be identical or
confusingly similar to Complainant’s mark.
Respondent was correct in his choice. The domain name fully incorporates
the entire mark of Complainant and the term “F1” which has
a direct connection
to Complainant’s business. That
constitutes confusing similarity at the least. see Space Imaging LLC v.
Brownwell, AF-0298 (eResolution Sept. 22, 2000). see also Brown & Bigelow, Inc. v. Rodela, FA96466
(Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain
name was confusingly similar to Complainant’s
Hoyle mark, and that the addition
of “casino”, a generic word describing the type of business in which
Complainant is engaged, does
not take the disputed domain name out of the realm
of confusing similarity).
Complainant prevails on this issue.
Rights or Legitimate Interests
Complainant shows that it has not
authorized Respondent to use the TOYOTA mark.
No contention is made by either Complainant or Respondent that
Respondent is the owner of any trade or service mark that is identical
to the
domain name. Neither party contends
that Respondent has ever been known as TOYOTA or TOYOTAF1.COM. Complainant shows that it has exclusive
right to use the mark TOYOTA. As result
of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate
interests in the domain name, the burden
must shift to Respondent to
demonstrate rights and legitimate interests in the domain name. see Clerical
Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28,
2000).
Respondent may demonstrate his rights and
legitimate interests by any of the methods set out in Paragraph 4(c) of the
Policy.
Paragraph 4(c)(i) of the Policy permits a
Respondent to show that before any notice of the dispute, his use of, or
demonstrable preparations
to use, the domain name or a name corresponding to
the domain name in connection with a bona fide offering of goods and services
was made. In this case it seems clear
that Respondent registered the disputed domain name for the purpose of selling
Complainant’s products
under license to do so that Respondent hoped to receive
after registration. A number of e-mails
and letters are included in the pleadings illustrating Respondent’s attempts to
get a license to sell Complainant’s
clothing relating to Formula 1 racing and
his ultimate failure to acquire the desired license from Complainant. Even an actual licensee to sell products has
no claim to the right to register a domain name consisting of the licensor’s
trademark.
see Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26,
2001). “That is especially true if the domain name suggests a broader
relationship than in fact is the case.”
see R.T. Quaife Engineering, Ltd. v.
Luton, D2000-1201 (WIPO Nov. 14, 2000).
A Respondent cannot use Complainant’s
trademark in a domain name when the Respondent, even though selling
Complainant’s goods, has
no permission to use the trademark as the domain name.
see Avon Products, Inc. v. Lee, D2001-0272 (WIPO Apr. 12, 2001). The use of the domain name under such
circumstances is not in connection with a bona fide offering of goods or
services. see Caterpillar Inc. v. off Road Equipment Parts, FA95497
(Nat. Arb. Forum Oct. 10, 2000).
Respondent has never been commonly known
by the domain name so the elements of Paragraph 4(c)(ii) are of no significance
in this dispute.
Paragraph 4(c)(iii) permits Respondent to
show a noncommercial or 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 proof of legitimate rights and interests. Respondent attempts to prove the elements of
this Paragraph by his statement that when he registered the domain name, he
intended
it as a “public forum” site.
It was only later, Respondent contends, that he decided the site should
be used as a site for commercial gain selling Complainant’s
goods. No proof of this intention is offered except
the bare allegation of Respondent. No
web page is offered in evidence to support this contention. No affidavit is offered. The only evidence is offered by Complainant
in the form of a copy of a web page dated after the cease and desist letter
showing that
the web site was intended for the sale of Complainant’s products
after the license was obtained from Complainant allowing the sales.
A second
copy of the web page at <TOYOTAF1.COM>
dated some weeks after the cease and desist letter was received by Respondent
is attached as an exhibit to the Complaint.
It illustrated Respondent’s intention to convert the site to a “public
forum” site, presumably for noncommercial purposes. When a Respondent means to prove his rights and legitimate
interests in a disputed domain name he should present “concrete evidence.” “Concrete evidence constitutes more than
mere personal assertions. Just as a
Panel should require a complainant to establish by means other than mere bald
assertions that it is the owner of registered
marks, so should the Panel
require that a respondent come forward with concrete evidence that the
assertions made in the response
are true.
Evidence in the form of documents or third party declarations should be
furnished in support of such assertions.” see Do The Hustle, LLC. v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000).
Compare this case with Twentieth Century Fox Film Corp. v. Bernstein,
FA102962 (Nat. Arb. Forum Feb. 27, 2002) which found that Respondent’s
assertion that she registered the domain name for a specific
purpose, without
evidentiary support, was insufficient to establish that she had rights or
legitimate interests in respect to the
domain name at issue.
Nothing in the evidence presented shows
that Respondent has rights and legitimate interests in the domain name, <TOYOTAF1.COM>.
Registration and Use in Bad Faith
Respondent freely admits that he had
knowledge of Complainant’s marks at the time of registration of the disputed
domain name. He says he sought out the
domain name because it was the obvious domain name to fit Complainant’s Formula
1 products and interests. Registering
and using the disputed domain name despite knowledge of another’s rights in the
mark evidences bad faith under Policy
Paragraph 4(a)(iii). see Samsonite
Corp. v. Colony Holding, FA94313 (Nat. Arb. Forum Apr. 17, 2000). See
also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) that held
that Respondent had actual and constructive knowledge of Complainant’s EXXON
mark given
the worldwide prominence of the mark and thus Respondent registered
the domain name in bad faith. see
also Victoria’s Secret v. Hardin, FA96694 (Nat. Arb. Forum Mar. 31, 2001).
This Panel finds that intentionally registering a domain name that infringes
upon a legitimate
trademark of another, without the permission of the trademark
holder, in the hope that the trademark holder will thereafter somehow
accept the
registration as acceptable, is registration in bad faith. That is what Respondent did in this case.
The evidence leads to the conclusion that
the domain name was initially registered with an intention to produce
commercial gain. It was thereafter used
in that attempted purpose until the Complainant made it clear by its refusal to
grant a license to Respondent
that the purpose was impossible. The cease and desist letter demanding that
Respondent discontinue use of the Complainant’s mark concluded Complainant’s
rejection
of Respondent’s purpose. To
permit Respondent to thereafter convert the web site to a “public forum” web
site presumably operated on a noncommercial basis
would frustrate the purpose
of the Policy and Rules. A Respondent
cannot be permitted, after committing acts in violation of the provisions of
the Policy and Rules, to convert the use
of the disputed domain name, after the
fact, to a different purpose and evade the earlier improper conduct. The Panel finds that the conversion of the
disputed domain name web site to a “public forum” does not erase the earlier
bad faith
registration and use, under the facts and circumstances of this case,
so that Respondent can retain the disputed domain name which
infringes on the
trademark of the Complainant.
DECISION
IT IS DECIDED THAT THE DOMAIN NAME,
<TOYOTAF1.COM>, NOW REGISTERED TO RESPONDENT, DOUBLE TIME JAZZ AKA JAMEY AEBERSOLD,
BE TRANSFERRED
TO THE COMPLAINANT, TOYOTA JIDOSHA KABUSHIKI KAISHA T/A TOYOTA
MOTOR CORPORATION.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 10, 2002
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