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Generic Top Level Domain Name (gTLD) Decisions |
Toyota Motor Sales, U.S.A., Inc. v. I. E.
Mann d/b/a Everything Internet
Claim Number: FA0411000370902
Complainant is Toyota Motor Sales, U.S.A., Inc. (“Complainant”),
represented by John Hornick, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street Nw, Washington, DC
20005. Respondent is I. E. Mann d/b/a Everything Internet (“Respondent”), 1 Oxford Valley, Suite 850,
Langhorne, PA 19047.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <autotoyotaparts.com>, registered with Register.com.
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.
Honorable
Paul A. Dorf (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on November
23, 2004; the National Arbitration
Forum received a hard copy of the Complaint
on November 24, 2004.
On
November 24, 2004, Register.com confirmed by e-mail to the National Arbitration
Forum that the domain name <autotoyotaparts.com> is registered
with Register.com and that 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
November 30, 2004, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"),
setting
a deadline of December 20, 2004 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@autotoyotaparts.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 National Arbitration Forum
transmitted to the parties a Notification of Respondent Default.
On
December 27, 2005, pursuant to Complainant's request to have the dispute
decided by a single-member Panel, the National Arbitration
Forum appointed
Honorable Paul A. Dorf, (Ret.) as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration 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 National Arbitration
Forum's
Supplemental Rules and any rules and principles of law that the Panel
deems applicable, without the benefit of any Response from
Respondent.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A.
Complainant makes the following assertions:
1. Respondent’s <autotoyotaparts.com>
domain name is confusingly similar to Complainant’s TOYOTA mark.
2. Respondent does not have any rights or
legitimate interests in the <autotoyotaparts.com> domain name.
3. Respondent registered and used the <autotoyotaparts.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
Complainant is a
wholly owned subsidiary of Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor
Corporation, owner of the TOYOTA trademark.
Complainant is authorized to
enforce the TOYOTA trademark registration. Complainant develops and
manufactures passenger vehicles
and a wide variety of other products related to
automobiles, including automobile parts. Complainant has sold millions of
vehicles
bearing the TOYOTA mark and offers parts and accessories under the
TOYOTA mark for all of its vehicles. Complainant spends millions
of dollars
each year to advertise and promote its TOYOTA-branded products and services.
Complainant has
continuously used the TOYOTA mark since at least 1958. In August 2004, Business
Week magazine ranked the TOYOTA mark as the ninth most valuable brand name
in the world. Complainant also holds registrations for the
TOYOTA mark in
almost 200 countries, including U.S. Reg. No. 843,138, on file at the United
States Patent and Trademark Office (issued
January 30, 1968). Complainant also
operates a website at the <toyota.com> domain name.
Respondent
registered the <autotoyotaparts.com> domain name on May 17, 2002.
The domain name resolves to a website that offers and promotes Complainant’s
products and products
and services that compete with Complainant. Respondent is
not an authorized TOYOTA dealer and is not licensed to use Complainant’s
TOYOTA
mark for any purpose.
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.
Complainant has
established that it has rights in the TOYOTA mark through registration with the
United States Patent and Trademark
Office and through continuous use of the
mark in commerce. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat.
Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a
presumption that they are inherently
distinctive and have acquired secondary
meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201
(WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration
of a mark is prima facie evidence of validity,
which creates a rebuttable
presumption that the mark is inherently distinctive. Respondent has the burden
of refuting this assumption).
The <autotoyotaparts.com>
domain name is confusingly similar to Complainant’s TOYOTA registered trademark
because the disputed domain name fully incorporates
the mark while merely
adding the generic terms “auto” and “parts,” which are also descriptive of
products and services that Complainant
offers. The disputed domain name also
incorporates the “.com” generic top-level domain. Neither the addition of
generic or descriptive
terms nor the addition of a generic top-level domain
distinguishes the disputed domain name from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493
(WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s
mark because the generic top-level domain
(gTLD) “.com” after the name
POMELLATO is not relevant); see also Yahoo!
Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration
and use of multiple domain names incorporating the distinctive and famous
YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as
‘chat’ and ‘financial’ to be confusingly similar to
Complainant’s marks and
likely to mislead Internet users into believing that products and services
offered by Respondents are being
sponsored or endorsed by YAHOO! or GeoCities,
given the similarity of the names and products and services offered); see
also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where Respondent’s domain name combines
Complainant’s mark with
a generic term that has an obvious relationship to
Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela,
FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is 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).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent
has failed to submit a Response in this proceeding. Therefore, Complainant’s
submission has gone unopposed and its arguments
unrefuted. In the absence of a
Response, the Panel accepts as true all reasonable allegations contained in the
Complaint unless clearly
contradicted by the evidence. Because Respondent has
failed to submit a Response, it has failed to propose any set of circumstances
that could substantiate its rights or legitimate interests in the <autotoyotaparts.com>
domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO
Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed
to invoke any circumstance which
could demonstrate any rights or legitimate
interests in the domain name); see also Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding
that Respondent’s failure to respond allows all reasonable inferences of fact
in
the allegations of the Complaint to be deemed true).
Respondent
is not using the disputed domain name in connection with a bona fide offering
of goods or services under Policy ¶ 4(c)(i),
nor is Respondent making a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶
4(c)(iii). The record reveals
that Respondent’s domain name directs
unsuspecting Internet users to a website that offers for sale both
Complainant’s products and
products and services that compete with Complainant.
Respondent makes opportunistic use of Complainant’s mark in order to capitalize
on the goodwill and fame associated with the TOYOTA moniker; thus, Respondent
fails to establish rights or legitimate interests in
the <autotoyotaparts.com>
domain name. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252
(WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent
generated commercial gain by intentionally
and misleadingly diverting users
away from Complainant's site to a competing website); see also Am. Online,
Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable
to find a bona fide offering of services in a respondent’s operation
of [a]
web-site using a domain name which is confusingly similar to the Complainant’s
mark and for the same business”); see also Nike, Inc. v. Ben 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).
No
evidence before the Panel suggests Respondent is commonly known by the <autotoyotaparts.com>
domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates
that the registrant of the disputed domain name
is known as “I. E. Mann d/b/a Everything Internet”
and is not known by the confusing second-level domain that infringes on
Complainant’s TOYOTA mark. Moreover, Respondent is not authorized
or licensed
to use Complainant’s mark for any purpose. See Tercent Inc. v. Yi, FA
139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS
information implies that Respondent is ‘commonly
known by’ the disputed domain
name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also 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").
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent
uses a confusingly similar variation of Complainant’s famous TOYOTA mark within
the <autotoyotaparts.com> domain name to ensnare unsuspecting
Internet users. Respondent then redirects the users to its website, which
offers competing
products and services. Respondent commercially benefits from
this diversion by selling products and services to Internet users who
are
searching under Complainant’s mark. Such infringement is what the Policy was
intended to remedy. Thus, the Panel finds Respondent
registered and used the
domain name in bad faith pusuant to Policy ¶ 4(b)(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)).
Respondent has
also registered and used a domain name that is confusingly similar to
Complainant’s mark for the purpose of offering
products and services that
compete with Complainant’s products and services. Moreover, Respondent’s
website purports to offer Complainant’s
products for sale even though
Respondent lacks authorization from Complainant to sell Complainant’s products.
Respondent’s use of
the <autotoyotaparts.com> domain name
establishes that Respondent registered the domain name for the purpose of
disrupting the business of a competitor
pursuant to Policy ¶ 4(b)(iii). See
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); see also Puckett v.
Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted
business from Complainant to a competitor’s website in violation
of Policy ¶
4(b)(iii)); see also Volkswagen of
Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000)
(transferring BAYAREAVW.COM from Respondent, an automobile dealership
specializing in Volkswagens,
to Complainant); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb.
Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from
Respondent, a watch dealer not
otherwise authorized to sell Complainant’s
goods, to Complainant).
Furthermore,
while each of the four circumstances listed under Policy ¶ 4(b), if proven,
evidences bad faith use and registration
of the <autotoyotaparts.com>
domain name, additional factors can also be used to support findings of bad faith.
See Twentieth Century Fox Film
Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in
determining if a domain name has been registered in bad faith, the Panel
must
look at the “totality of circumstances”); see also Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith]
in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).
Respondent’s
registration of the disputed domain name, which incorporates Complainant’s
well-known registered mark and simply adds
generic and descriptive terms,
suggests that Respondent knew of Complainant’s rights in the TOYOTA mark.
Additionally, Complainant’s
trademark registration, on file at the United
States Patent and Trademark Office, gave Respondent constructive notice of
Complainant’s
mark. Thus, the Panel finds that Respondent chose the <autotoyotaparts.com>
domain name based on the distinctive and well-known qualities of Complainant’s
mark, which evidences bad faith registration and
use pursuant to Policy ¶
4(a)(iii). See Pavillion Agency,
Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding
that the “domain names are so obviously connected with the Complainants that
the use or
registration by anyone other than Complainants suggests
‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding bad faith registration and use where it is “inconceivable that the
respondent could make
any active use of the disputed domain names without
creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd.,
D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith
where Respondent was aware of Complainant’s famous
mark when registering the
domain name as well as aware of the deception and confusion that would
inevitably follow if he used the
domain names); see also Digi Int’l v. DDI
Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy
paragraph 4(b) sets forth certain circumstances, without limitation,
that shall
be evidence of registration and use of a domain name in bad faith); 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat.
Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the
Principal Register of the USPTO, a status
that confers constructive notice on
those seeking to register or use the mark or any confusingly similar variation
thereof”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <autotoyotaparts.com> domain name be TRANSFERRED
from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: January 11, 2005
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URL: http://www.worldlii.org/int/other/GENDND/2005/122.html