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Toyota Motor Credit Corporation v. Digi Real Estate Foundation [2005] GENDND 2129 (6 December 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toyota Motor Credit Corporation v. Digi Real Estate Foundation

Case No. D2005-1111

1. The Parties

The Complainant is Toyota Motor Credit Corporation, of the United States of America, represented by Howrey LLP, United States of America.

The Respondent is Digi Real Estate Foundation, of Panama.

2. The Domain Name and Registrar

The disputed domain name <wwwtoyotafinancial.com>is registered with Gunga Galunga, Incorporated.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 21, 2005. On October 24, 2005, the Center transmitted by email to Gunga Galunga, Incorporated a request for registrar verification in connection with the domain name at issue. On October 26, 2005, Gunga Galunga, Incorporated, through eNOM, transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 28, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 18, 2005.

The Center appointed Mr. Dietrich Beier as the sole panelist in this matter on November 25, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a wholly-owned subsidiary of the company Toyota Motor Corporation, a well-known car manufacturer which has sold automobiles, motor trucks and structural parts and accessories which, in the United States alone, amount to ninety billion dollars since 1958 and which is the owner of numerous marks for TOYOTA, and TOYOTA FINANCIAL SERVICES. Such marks comprise inter alia

1. TOYOTA, US-registration 1, 38,339 for financing the purchase of vehicles by others, registered on May 28, 1985 and

2. TOYOTA FINANCIAL SERVICES, US-registration 2, 762,080 for inter alia financing the purchase and lease of motor vehicles, registered on September 9, 2003.

Complainant, a provider of retail financing, retail leasing, wholesale financing and other financial services in the United States, is authorized to use the marks TOYOTA and TOYOTA FINANCIAL SERVICES for financial and insurance services.

Complainant’s corporate parent company has substantially and continuously used the name and mark TOYOTA in the United States since at least 1958. Complainant has used the name and mark since 1983, prior to the time Respondent registered the domain name in question.

Complainant and its parent company are the owners of several domain names such as <toyotafinancial.com>, toyotafinancialservices.com> and <toyota.com>.

Respondent is neither a licensee nor an authorized dealer or a distributor of Complainant or its parent company, nor is it authorized to use the trademarks mentioned above. The website under <wwwtoyotafinancial.com> shows sponsored links related to web sites and business of competitors of Complainant.

Respondent was involved several times in UDRP proceedings, inter alia, in Adidas-Salomon AG v. Digi Real Estate Foundation, WIPO Case No. D2004-1079, Medco Health Solutions, Inc v. Digi Real Estate Foundation, WIPO Case No. D2005-0216 and Robert Half International Inc. v. Digi Real Estate Foundation (Nominet Dispute No. 2177). In all these cases, Respondent was found to have acted without rights or legitimate interests and to have registered and used the domain name in question in bad faith.

5. Parties’ Contentions

A. Complainant

The domain name in question <wwwtoyotafinancial.com> is confusingly similar with the trademarks Complainant has rights in, because it fully incorporates the trademarks TOYOTA and TOYOTA FINANCIAL SERVICES with the exception of the elements “www” and “services” which are both generic and not distinctive.

Respondent has no rights or legitimate interests in the domain name <wwwtoyotafinancial.com>. Respondent does not use or make any preparations to use the domain name in connection with a bona fide offering of goods and services, because Respondent does not use the domain name in question to sell its own wares and services. Respondent is not commonly known by the <wwwtoyotafinancial.com> domain name.

Respondent’s registration of the <wwwtoyotafinancial.com> domain name and failure to use such name for legitimate purposes, but for sponsored links relating to Complainant’s competitors, and the pattern of conduct in registering domain names incorporating well-known marks of others establish that Respondent has registered and used the domain name in bad faith under the criteria set forth in Paragraph 4(b)(iv) of the Policy.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In order to succeed in its claim, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:

(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests with respect to the domain name; and

(iii) the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

Complainant has established the fact that it has valid trademark rights for TOYOTA and TOYOTA FINANCIAL SERVICES inter alia for financing the purchase of vehicles by others and financing the purchase and lease of motor vehicles.

The trademarks of Complainant and domain name in question <wwwtoyotafinancial.com> only differ in the additional element “www” in the domain name and “services” in one of the trademarks. The addition of the element “www” without any distinctiveness in domain names and the omission of the purely descriptive element “services” in the domain name does not have a relevant influence on the distinctiveness of the main element TOYOTA which clearly carries the weight of the designation <wwwtoyotafinancial.com>. This is widely acknowledged by panel decisions under the Policy (See e.g. Advanced Micro Devices, Inc. v. Dmitry, WIPO Case No. D2000-0530).

The Panel therefore considers the domain name in question to be confusingly similar to the trademarks TOYOTA and TOYOTA FINANCIAL SERVICES in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent has no rights in the domain name in question, since Respondent is not a licensee of Complainant or its parent company, nor has Complainant or its parent company granted any permission or consent to Respondent to use the trademarks TOYOTA and TOYOTA FINANCIAL SERVICES. Furthermore, Respondent has no legitimate interest in the domain name in question, since there is no indication that Respondent is commonly known by the name <wwwtoyotafinancial.com> nor that Respondent is using the domain name in question in a generic way in connection with a bona fide offering of related goods or services. If Respondent’s website under the domain name in question would concentrate on goods or services connected with financing of cars, the Panel does not exclude that Respondent could claim legitimate interests on a domain name <wwwcarfinancing.com>. The addition of “TOYOTA,” a trademark of Complainant for financing services, in the present case, however, cannot be explained by any legitimate interests of the Respondent.

The Panel therefore considers that Respondent has no rights or legitimate interests in respect of the domain name in question in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Respondent’s bad faith is established already by the fact that Respondent was involved in several domain name dispute resolution proceedings as a respondent (see Adidas-Salomon AG v. Digi Real Estate Foundation, WIPO Case No. D2004-1079, Medco Health Solutions, Inc v.v Digi Real Estate Foundation, WIPO Case No. D2005-0216 and Robert Half International Inc. v. Digi Real Estate Foundation (Nominet Dispute No. 2177) and that in all cases, the panels found that the domain names should be transferred. This represents a pattern of conduct in registering domain names in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name. In certain circumstances, even one other case can be sufficient to establish such a pattern of conduct (See Kesko Oyj v. Jessimet Oy, WIPO Case No. D2001-0199). Herewith, the test of paragraph 4(b)(ii) of the Policy is met.

Furthermore, by not submitting any response, Respondent has failed to invoke any circumstances that could demonstrate that it did not register and use the domain name in bad faith.

Respondent’s bad faith is also established by the fact of using the element TOYOTA in its domain name that he must have known Complainant or at least Complainant’s parent company and for this reason intentionally attempting to attract, for commercial gain (sponsored links) Internet users to his website by creating a likelihood of confusion with the marks Complainant has rights in as to the source, sponsorship, affiliation of his website or services on the website. Thus, the test of paragraph 4(b)(iv) of the Policy is met.

The Panel therefore, considers the domain name in question to have been registered and used in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <wwwtoyotafinancial.com> be transferred to the Complainant.

Dietrich Beier
Sole Panelist

Dated: December 6, 2005