DECISION

Toyota Motor Sales U.S.A. Inc. v. John Clelland

Claim Number:  FA0309000198018

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 John Clelland, 23000 Cricket Hill Road, Cupertino, CA  95014 (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <land-cruiser.com>, registered with Network Solutions.

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 September 29, 2003, Network Solutions confirmed by e-mail to the Forum that the domain name <land-cruiser.com> is registered with Network Solutions and that Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 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 September 30, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 20, 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@land-cruiser.com 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 <land-cruiser.com> domain name is identical to Complainant’s LAND CRUISER mark.

2. Respondent does not have any rights or legitimate interests in the <land-cruiser.com> domain name.

3. Respondent registered and used the <land-cruiser.com> domain name in bad faith.

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

FINDINGS

Respondent has failed to answer the Complaint.  Therefore, this 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 its 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 an automobile line that Complainant exclusively imports and distributes in the United States.  LAND CRUISER has been continuously used in commerce in the United States since 1957.  The LAND CRUISER mark has become famous and valuable property after being promoted and advertised extensively.  Complainant’s sales of LAND CRUISER vehicles, parts, and accessories in the United States have exceeded $1,000,000,000 since 1993.

Respondent registered <land-cruiser.com> on September 11, 1997.  Respondent used the domain name to advertise its business, Acme-Oufitters, which sells accessories for LAND CRUISER vehicles.  Sometime between August and November of 1999, Complainant learned of Respondent’s use of the domain name <land-cruiser.com> and demanded that the domain name be transferred.  On November 29, 1999, Respondent stated in writing that the domain name was no longer being used for the Acme Outfitter’s website.  Complainant confirmed shortly, thereafter, that Respondent ceased using the domain name in connection with the Acme website.  Complainant contacted Respondent again in December 1999 and February 2000, requesting the transfer of the domain name.  In February 2000, Respondent refused to transfer the domain name. 

Respondent renewed its registration of the domain name on September 13, 2002.  Respondent resumed using the domain name for its Acme-Outfitters website around April of 2003.  Sometime after July 16, 2003, the website redirected Internet users to another reseller of LAND CRUISER accessories located at <man-a-fre.com>. 

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 registered domain name incorporates the LAND CRUISER mark in its entirety.  The only difference between LAND CRUISER and <land-cruiser.com> is a hyphen separating “land” from “cruiser.”  Hyphens fail to alleviate the identical nature of a combination of words existing in a domain name from that of a registered mark.  See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen); see also Teradyne Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); see also Hewlett-Packard Co. v. Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a domain name which is phonetically identical to Complainant’s mark satisfies ¶ 4(a)(i) of the Policy).

Moreover, the Complainant and Respondent similarly conduct business relating to the LAND CRUISER automobile.  The only difference is that Complainant is licensed to use the LAND CRUISER mark and Respondent is not.  It is recognized that the likelihood of confusion increases when the parties are involved with the same product or industry.  See Slep-Tone Entm't Corp. v. Sounds Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also Vivid Video, Inc. v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) (finding it significant that Respondent and Complainant operate in the same industry, making any distinctiveness of Respondent’s domain name from Complainant’s mark less important).

Therefore, Complainant has satisfied Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Complainant has asserted that Respondent does not have any rights or legitimate interests in the <land-cruiser.com> domain name.  Accordingly, the Panel may presume Respondent has no such rights or interests.  See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true); see also 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 very failure to respond and assign greater weight to certain circumstances than it might otherwise do).

Additionally, Respondent is using <land-cruiser.com> in connection with the sale of LAND CRUISER accessories in competition with Complainant.  This is not a bona fide offering of goods or services, or a legitimate noncommercial fair use, pursuant to Policy ¶¶ 4(c)(i) and (iii).  See Computerized Sec. Sys., Inc. v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s appropriation of Complainant’s mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent, as a competitor of Complainant, had no rights or legitimate interests in a domain name that utilized Complainant’s mark for its competing website); see also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17, 2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract Internet users to its own website was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).

Also, the record indicates that Respondent is not commonly known by the <land-cruiser.com> domain name, but rather does business as “Acme-Outfitters.”  Therefore, Respondent has no rights or legitimate interests pursuant to Policy ¶ 4(c)(ii).  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); 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).

Therefore, Complainant has satisfied Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

When Respondent registered <land-cruiser.com> in 1997, nearly forty years after Complainant began using the LAND CRUISER mark, Complainant’s mark was famous as a result of extensive use and promotion.  Consequently, Respondent should have known about Complainant’s rights in the LAND CRUISER mark.  Bad faith can be inferred when one registers and uses a domain name identical to a famous mark.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. 2002) ("where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

Furthermore, bad faith is established when a domain name is used to intentionally attract, for commercial gain, Internet users to a website by creating a likelihood of confusion with another’s mark as to the source, sponsorship, affiliation, or endorsement of its website or product.  Respondent used <land-cruiser.com> to advertise its business, which sold goods in competition with Complainant.  This establishes bad faith as defined in Policy ¶ 4(b)(iv).  See ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the domain name to another website <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent attracted users to advertisements).

Therefore, Complainant has satisfied Policy ¶ 4(a)(iii).

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 <land-cruiser.com> domain name be TRANSFERRED from Respondent to Complainant.

                                                 James A. Carmody, Esq., Panelist

Dated:  November 10, 2003

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