DECISION

Toyota Motor Sales, U.S.A., Inc. v. Indian Springs Motor

Claim Number: FA0305000157289

PARTIES

Complainant is Toyota Motor Sales, U.S.A., Inc., Torrance, CA (“Complainant”) represented by Bernard R. Gans of Jeffer, Mangels, Butler & Marmaro LLP. Respondent is Indian Springs Motor, Ringgold, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <glennstoyota.com> and <usedtoyotalexus.com> registered with Network Solutions, Inc. and Tucows, Inc., respectively.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Judge Harold Kalina (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on May 9, 2003; the Forum received a hard copy of the Complaint on May 12, 2003.

On May 12, 2003, Tucows, Inc. confirmed by e-mail to the Forum that the domain name <usedtoyotalexus.com> is registered with Tucows, Inc. and that Respondent is the current registrant of the name. Tucows, Inc. has verified that Respondent is bound by the Tucows, 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 May 14, 2003, Network Solutions, Inc., confirmed by e-mail to the Forum that the domain name <glennstoyota.com> 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 the Policy.

On May 15, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 4, 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@glennstoyota.com and postmaster@usedtoyotalexus.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 June 11, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Judge Harold Kalina (Ret.) 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 names be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <glennstoyota.com> and <usedtoyotalexus.com> domain names are confusingly similar to Complainant’s TOYOTA and LEXUS marks.

2. Respondent does not have any rights or legitimate interests in the <glennstoyota.com> and <usedtoyotalexus.com> domain names.

3. Respondent registered and used the <glennstoyota.com> and <usedtoyotalexus.com> domain names in bad faith.

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

FINDINGS

Complainant is a wholly owned subsidiary of Toyota Motor Corporation (“TMC”). Complainant submits that it is the exclusive importer and exclusive licensee of TMC’s trademarks and service marks, including the TOYOTA and LEXUS marks. Through this licensing relationship, Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TOYOTA mark (Reg. No. 843,138 registered on August 1, 1989) in relation to automobiles and motor trucks. Complainant holds two trademark registrations with the USPTO for the LEXUS mark (Reg. No. 1,574,718 registered on January 2, 1990) related to automobiles.

Complainant operates websites at <toyota.com> and <lexus.com>, which allow customers to locate local dealerships and obtain information about the latest models of Toyota and Lexus vehicles.

Respondent registered the <glennstoyota.com> domain name on December 22, 2000. The disputed domain name initially resolved to a website for Glenn’s Toyota and Indian Springs Motor, although Respondent is not currently using the domain name. After Complainant sent Respondent a letter on October 23, 2001 informing Respondent of Complainant’s rights in the TOYOTA and LEXUS marks, Respondent registered the <usedtoyotalexus.com> domain name on November 28, 2001. The <usedtoyotalexus.com> domain name is currently the home page for Glenn’s Toyota, which has since adopted the name “Used Toyota and Lexus” as well as “Indian Springs Motor Co.”

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 has established that it has rights in the TOYOTA and LEXUS marks through TMC’s registration with the USPTO and Complainant’s subsidiary relationship with TMC.

Respondent’s <glennstoyota.com> and <usedtoyotalexus.com> domain names are confusingly similar to Complainant’s marks because the disputed domain names appropriate Complainant’s marks and merely add the generic terms “glenns” and “used” to the beginning of Complainant’s marks. The addition of a generic term to a famous mark does not sufficiently differentiate the domain name for purposes of Policy ¶ 4(a)(i) because the mark remains the primary focus of the domain name. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that common geographic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights).

The Panel finds that Complainant has established Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent has failed to come forward and answer the allegations of the Complainant. Thus, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard”); 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).

Moreover, Respondent’s failure to answer the Complaint allows the Panel to presume that Respondent lacks any rights to or legitimate interests in the disputed domain names. 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 Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interests in the domain name because the Respondent never submitted a response or provided the Panel with evidence to suggest otherwise).

Respondent is currently not using the <glennstoyota.com> domain name. However, Resopndent is using the <usedtoyotalexus.com> domain name to redirect Internet traffic to Respondent’s website. The Panel finds that neither demonstrates a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) because Respondent is not related to or licensed by Complainant. See Body Shop Int’l PLC v. CPIC NET & Hussain, D2000-1214 (WIPO Nov. 26, 2000) (finding “that on the evidence provided by the Complainant and in the absence of any submissions from the Respondents, that the Complainant has established that (i) the Respondents are not using and have not used, or are not demonstrating and have not demonstrated, an intent to use the said domain name in connection with a bona fide offering of goods or services; (ii) the Respondents are not and have not been commonly known by the said domain name; and (iii) the Respondents are not making legitimate noncommercial or fair use of the said domain name, without intending to mislead and divert consumers or to tarnish Complainant’s <THE BODY SHOP> trademark and service mark”); see also Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that Respondent’s commercial use of the domain name to confuse and divert Internet traffic is not a legitimate use of the domain name).

Furthermore Respondent has submitted no proof and there is no proof in the record that indicates Respondent is commonly known by GLENNS TOYOTA, USED TOYOTA LEXUS, <glennstoyota.com> or <usedtoyotalexus.com>. Therefore, Respondent has failed to establish that it has any rights to or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (Interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also 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).

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

Registration and Use in Bad Faith

Respondent’s <glennstoyota.com> domain name does not resolve to an active website. Passively holding a domain name confusingly similar to a registered trademark holder’s mark is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Hewlett-Packard Co. v. Martineau, FA 95359 (Nat. Arb. Forum Aug. 30, 2000) (finding that the Respondent’s failure to submit an assertion of good faith intent to use the domain name, in addition to the passive holding of the domain name, reveal that the Respondent registered and uses the domain name in bad faith); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that Respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).

Respondent is not related to or authorized by Complainant or Complainant’s parent company, TMC. Thus, Respondent has no right to incorporate Complainant’s mark into Respondent’s domain name over the objections of the trademark holder. The Panel finds that Respondent has intentionally attempted to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s mark with respect to the <usedtoyotalexus.com> domain name as to the source, sponsorship, affiliation or endorsement of Respondent’s website, which is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Kahn, 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 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).

Accordingly, the Panel finds that Complainant has established Policy ¶ 4(a)(iii).

DECISION

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

Accordingly, it is Ordered that the <glennstoyota.com> and <usedtoyotalexus.com> domain names be TRANSFERRED from Respondent to Complainant.

Judge Harold Kalina (Ret.), Panelist

Dated:  June 23, 2003

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