DECISION

Toyota Motor Sales, U.S.A., Inc. v. Jim Straus

Claim Number:  FA0309000198019

PARTIES

Complainant is Toyota Motor Sales, U.S.A., Inc., Torrance, CA (“Complainant”) represented by John F. Hornick, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 1300 I Street NW, Washington DC, 20005  Respondent is Jim Straus, 23000 Cricket Hill Road,  Cupertino, CA  95014 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <landcruiser.org>, registered with Network Solutions, Inc.

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.

James A. Carmody, Esq.,  as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on September 24, 2003; the Forum received a hard copy of the Complaint on September 25, 2003.

On Septenber 30, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <landcruiser.org> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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 October 1, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 21, 2003 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@landcruiser.org by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On November 5, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Carmody, Esq., as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <landcruiser.org> domain name is identical to Complainant’s LAND CRUISER mark.

2. Respondent does not have any rights or legitimate interests in the <landcruiser.org> domain name.

3. Respondent registered and used the <landcruiser.org> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Respondent has failed to answer the Complaint.  Therefore, the Panel may draw any reasonable inferences from Complainant’s assertions.  See Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the absence of a Response, the Panel is free to make inferences from the failure to respond and assign greater weight to certain circumstances than it might otherwise do); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the Panel to draw adverse inferences from Respondent’s failure to reply to the Complaint).

Complainant asserts that it is a wholly owned subsidiary of Toyota Motor Corporation (“TMC”).  TMC is the owner of the mark, LAND CRUISER, registered on July 9, 2002, with the United States Patent and Trademark Office (Reg. No. 2590587).  Complainant asserts it is licensed to use TMC’s trademarks in its distribution territories.  Likewise, Complainant asserts its contractual obligation, through the licensing agreement with TMC, to monitor and enforce TMC’s rights in the LAND CRUISER mark within Complainant’s distribution territories.  Therefore, this Panel may reasonably infer that Toyota Motor Sales is a wholly owned subsidiary of Toyota Motor Corporation and has a contractual obligation to monitor and enforce infringements upon TMC’s trademarks.

The mark, LAND CRUISER, refers to a line of automobiles that Complainant exclusively imports and distributes in the United States, among other areas.  Complainant has continuously used the LAND CRUISER mark in the United States since 1957 in the course of commerce.  After extensively promoting and advertising its mark, Complainant’s LAND CRUISER mark has become famous and valuable property of Complainant.  Complainant’s sales of LAND CRUISER vehicles, parts, and accessories in the United States have exceeded $1,000,000,000 since 1993.

Land Cruiser Organization registered the <landcruiser.org> domain name on February 24, 1999.  Respondent was listed as the technical contact for the domain name.  The domain name was used to promote Acme-Outfitters, which sells accessories for LAND CRUISER vehicles.

The <landcruiser.org> domain name was transferred to Respondent and was registered on September 13, 2002.  On an unknown date Respondent began to use the domain name for an NSI “under construction” web directory website that features links to “Related Topics,” including numerous links prominently referencing Complainant’s products, such as the links titled “Toyota Land Cruiser,” “Toyota Automobiles,” “Toyota Dealerships,” “Toyota Truck,” and “Toyota Car Parts.”  Respondent’s website also displays links referencing Complainant’s competitors BMW and Ford.  The originating URL for Respondent’s website is <oingo.com>, an advertising company that offers “pay-per-click” commissions and that “delivers targeted, conceptually related keywords and advertisements to parked domain name pages by ‘understanding’ the intent/purpose of each domain name.” 

 

DISCUSSION

Paragraph 15(a) of 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."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that 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 Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) 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’s parent company, Toyota Motor Corporation, has ownership rights in the LAND CRUISER mark through registration with the United States Patent and Trademark Office and continuous use in commerce since 1957.  For purposes of this proceeding, TMS has established sufficient rights in the LAND CRUISER mark through its licensing agreement with TMC. 

Respondent’s domain name is identical to the LAND CRUISER mark because the domain name fully incorporates the mark, omits the space between the two words in the mark, and merely adds the generic top-level domain “.org” to the mark.  The omission of the space between the words of the mark and the addition of a generic top-level domain to the mark is insufficient to circumvent the Panel from finding the domain name confusingly similar.  See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (finding that "the addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants"); see also Microsoft Corp. v. Mehrotra, D2000-0053 (WIPO Apr. 10, 2000) (finding that the domain name <microsoft.org> is identical to Complainant’s mark).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Due to Respondent’s failure to contest the allegations of the Complaint, the Panel may conclude that Respondent lacks rights or legitimate interests in the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names); see also Canadian Imperial Bank of Commerce v. D3M Virtual Reality, Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interests where no such right or interest was immediately apparent to the Panel and Respondent did not come forward to suggest any right or interest it may have possessed).

Respondent’s use of the misleading domain name for commercial benefit by receiving “pay-per-click” fees, selling accessories for Complainant’s vehicles, and diverting Internet users to Complainant’s competitors does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that Respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to Complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).

Furthermore, Respondent is not authorized or licensed to register or use domain names that incorporate the LAND CRUISER mark.  The WHOIS information fails to establish that Respondent is commonly known by the disputed domain name or the LAND CRUISER mark.  Therefore the Panel concludes that Respondent lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

Although Respondent registered the disputed domain name prior to Complainant’s U.S. Patent and Trademark Office registration of the LAND CRUISER mark, Complainant through its use of the mark in commerce since 1957, established common law rights in the mark prior Respondent’s registration.  Therefore, Respondent did not establish rights in the domain name prior to Complainant’s establishment of rights in the LAND CRUISER mark. 

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent’s use of the domain name for commercial benefit by receiving “pay-per-click” fees, selling accessories for Complainant’s vehicles, and diverting Internet users to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv).  See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <landcruiser.org> domain name be TRANSFERRED from Respondent to Complainant.

James A. Carmody, Esq., Panelist

Dated:  November 10, 2003

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2003/1038.html