Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Standard Knitting Ltd. of 1650 Inkster Boulevard, Winnipeg, Manitoba R3C 2T3, Canada.

The Respondent is Toyota Motor Sales, USA, of 19001 S Western Avenue, A307, Torrance, California, 90509-2722, USA.

The domain name is <tundra.biz>, registered with Neulevel Inc. through Register.com.

(1) The Complaint in Case DBIZ2001-00011 was filed by E-mail on December 8, 2001 and by hard copy on December 13, 2001 and is made under the Start-Up Trademark Opposition Policy for .BIZ (hereafter "STOP").

(2) The WIPO Arbitration and Mediation Center has stated that:

- the Complaint was filed in accordance with the requirements of the Rules for Start-up Trademark Opposition Policy (hereafter "STOP Rules") and WIPO Supplemental STOP Rules;

- the payments for filing were properly made;

- the Complaint complies with the formal requirements;

- the Complaint was properly notified to the named registrant as Respondent on December 21, 2001, in accordance with the STOP Rules, paragraph 2(a);

- the Response has been received within the permitted period for filing; and

- the Administrative Panel was properly constituted.

As Panelist, I accept these statements as demonstrating proper compliance with the procedural steps laid down in STOP.

(1) As Panelist, I have submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(2) The language of the proceedings is English.

(3) On January 31, 2002, the Complainant filed a request to suspend these STOP proceedings on grounds considered below. On February 12, 2002, the Respondent filed an opposition to this request.

(1) The Complainant asserts that it is the registered proprietor of the trade mark, "Tundra", in over nineteen countries. In its Complaint it states that it is "a privately-held designer and manufacturer of high fashion knitwear and sportswear" and that its business is worldwide. No details are provided in the Complaint of the classes, dates or countries of registration of its marks. The Complainant states that that it first used its mark in 1952 and that the registrations of it were prior to October 1989.

(2) The Complainant maintains a website at www.tundrasportswear.com and holds the domain names <tundra.ca>, <tundratec.ca> and <tundrasport.ca>.

(3) The Respondent states that it is an indirect wholly-owned subsidiary of Toyota Jidosha KK, the well-known Japanese manufacturer of Toyota automobiles. Since 1999, it has promoted and sold trucks in the USA under the product mark, "Tundra". Examples of its promotional literature for this vehicle have been appended to the Response and the awards which it has received have been listed. Sales are stated to have been 100,000 trucks a year for the past two years.

(1) On the basis of the alleged trade mark registrations and uses, the Complainant has rights in the mark "Tundra" which were established prior to registration of the domain name in dispute by the Respondent.

(2) The Respondent's registration of that domain name was in bad faith because it was made at time when the Complainant was already bringing court proceedings for infringement of its mark. "The registration or use of this mark by outside companies can be detrimental to the integrity of the mark that has been established and promoted over the years by [the Complainant], and may cause a disruption in the business, as well as the viability of [the Complainant]".

(1) Suspension is requested by the Complainant on the ground that it has previously instituted two sets of proceedings against the Respondent. The first of these is for trade mark infringement and passing off in the Federal Court of Canada and is evidenced by a copy of the Statement of Claim. The main allegation there made is that the Respondent was using "Tundra" on clothing in a manner amounting to infringement of the Complainant's Canadian marks and associated passing off. The second proceeding is an opposition to the Respondent's application for a US trade mark registration of "Tundra" for automobiles and their structural parts, which is evidenced only indirectly by a copy of a TESS search which refers to the fact that the application is under opposition but does not say by whom.

(2) The justification for the request is stated to be: "The commencement of yet another proceeding on substantially the same issues runs contrary to the policy of cost effective dispute resolution – the very goal this forum seeks to achieve".

(1) The Complainant has offered no proof of its rights to a trade mark or service mark, either by registration or by use. The Respondent has, moreover, instituted an opposition before the US Trademark Trial and Appeal Board to the Complainant's registration of three "Tundra" trade marks in that country on grounds that they were obtained upon a fraudulent representation as to prior use there. The statement of grounds in those proceedings is annexed.

(2) The Complainant has not established that the domain name has been registered or used in bad faith. In particular there are no grounds for saying that the Respondent's conduct falls within any of the four instances of bad faith specified in the STOP, Para. 4.

(3) The Respondent has rights or legitimate interests in "Tundra" arising out of its extensive business using that product mark for trucks, and also from a registration in 1999 of "Tundra" as a mark for automobiles in Mexico. Its main use of the mark has been on products unrelated to the Complainant's knitwear and sportswear. It has used "Toyota Tundra" on promotional items which have been given to its employees and sold as merchandise through the auto parts departments of its franchised dealers. It denies that this latter use of "Tundra" amounts to trade mark infringement and states that in the Canadian action referred to above, the Complainant's attempt to obtain summary judgement was denied by the court.

(1) Unlike the position under the Rules for the Uniform Domain Name Resolution Policy, Para. 18(a), under the STOP the Panel has no power to order suspension of proceedings.

(2) The two proceedings referred to by the Complainant in its request for suspension do not directly address the question whether the domain name in issue has been registered or used in bad faith within the meaning of the STOP.

I refuse to order the suspension of the present STOP proceedings. The Respondent submits that a Panelist has no power to do so within the Rules for STOP (except in cases where there are no other pending challenges and the parties are engaged in settlement negotiations, See Paragraph 17 of STOP Rules), whereas such a power is present in the Rules for the general Uniform Dispute Resolution Policy. Both sets of rules have been carefully drawn in order that these jurisdictions, established by contract, can function satisfactorily. The omission of any suspensory power in the STOP Rules must therefore be taken to be a deliberate omission related to the special conditions needed for establishing the .biz domain. It must be remembered that STOP allows a prior trade mark owner to secure transfer of a conflicting domain name to it on less onerous terms than under the UDRP. There need to be balancing constraints in the procedure in order to ensure that complaints are disposed of as expeditiously as is practicable.

In any case I find it curious that it is the Complainant who is requesting the suspension by reason of the priority in time of two other proceedings which it also commenced (no reliance is placed on the Respondent's proceedings before the TTAB attacking the Complainant's registrations of trade marks in the USA). The Respondent rightly points out that both of the Complainant's other proceedings concern different aspects of its conflict with the Respondent from the latter's registration of the domain name in issue. The relationship between the various proceedings is indirect.

According to Paragraph 4(a) of STOP, the Complainant must establish each of the three following elements:

(i) that the domain name in issue is identical to a trade mark or service mark in which the Complainant has rights;

(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered or is being used in bad faith.

Examples of rights or legitimate interests under (ii) may consist of the Respondent showing that it is the owner or beneficiary of an identical trade or service mark; that, before notice of the dispute, it used or prepared to use the domain name or a corresponding name in connection with a bona fide offering of goods or services; or that, as an individual, business or other organisation, it has been commonly known by the domain name.

Examples of bad faith under (iii) may consist of the Respondent being shown to have registered the domain name primarily for the purpose of transferring the registration for more than documented out-of-pocket costs directly related to the domain name; in order to prevent the Complainant from reflecting its mark in a corresponding domain name; for the purpose of disrupting the business of a competitor; or in order, through use, intentionally to attract, for commercial gain, Internet users to its web site or other on-line location by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the web site or location of a product or service on your web site or location.

In its Complaint, the Complainant has provided no adequate evidence of registration of the trade mark "Tundra" upon which it relies in these proceedings, and none of the use of the mark on which it relies. In some circumstances it may be appropriate to order that defects of this type be made good by a further submission. However, I am not prepared to do so in a case where the initial Complaint is so seriously defective. The absence of any detail or evidence about the trade mark registrations has already been noted in Para. 4(1) above. These proceedings aim to deal with complaints about domain name registration with despatch. It is evidently unfair to face a respondent with such vague assertions about entitlement when the matter is in the complainant's knowledge, rather than its own. It is not necessary, however, to rest this decision upon this issue alone.

The Respondent has provided sufficient evidence of the very substantial use which it has made of "Tundra" as a mark for its trucks and has explained that its use on clothing (together with "Toyota") was only as an incidental means of promotion, even though it involved the sale of merchandise through its authorised dealers. This being so, I am unable to find that the Complainant has made out that the Respondent has no right or legitimate interest in registering the domain name in issue. On the contrary the Respondent's use of "Tundra" appears to constitute beyond question use of a corresponding name to the domain name in issue in connection with a bona fide offering of goods and services. On this issue the Complaint clearly fails.

Likewise, no sufficient case of mala fides against the Respondent has been established. Under the STOP it is enough to show that registration of the domain name in bad faith and the Complainant seeks to rely upon the fact that at the time of registration it was already challenging the Respondent's entitlement to use "Tundra" on clothing in the proceedings before the Federal Court of Canada. Whether those proceedings could ultimately result in any order against the Respondent is a matter for that court after receiving evidence from both sides. Whatever the eventual outcome, a view of the Respondent's motivation in registering the domain name in issue has to be taken in the light of its conduct as a whole up to the date of registration. The Complainant has not demonstrated that the Respondent was not using "Tundra" primarily to market a successful line of "Toyota" trucks but instead was using the Complainant's mark in some way to its own unfair advantage. In my opinion, unless such an attack on the Respondent's motivation can be made out on the balance of probabilities the Complaint must fail. The matter is one on which the overall onus of proof remains on the Complainant.

In consequence, in accordance with the STOP Policy, Paragraph 4, the Panel dismisses the request that the domain name, <tundra.biz>, be transferred to the Complainant.