WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Credit Corp. v. World Funding Group, Inc.
Case No. D2001-0674
1. The Parties
Complainant: Toyota Motor Credit Corporation, 19001 South Western Avenue Torrance, CA 90509-2991,USA.
Respondent: World Funding Group, Inc., 23123 State Road 7, Suite 340, Boca Raton, FL 33428, USA.
2. Domain Name and Registrar
The domain name at issue is . The registrar is Internet Domain Registrars, d.b.a. R, in Vancouver, British Columbia, Canada.
3. Procedural History
The Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by email on May 18, 2001, and in hardcopy on May 22, 2001. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel (the "Panel") is satisfied that this is the case.
On May 22, 2001, the Center sent an Acknowledgement of Receipt of Complaint to the Complainant. On May 22, 2001, the Center sent to the registrar, R, a request for verification of registration data. On the same date, the registrar confirmed that it is the registrar of the domain name in dispute (the "Domain Name") and that it is registered in the Respondent's name.
Having verified that the Complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"), the Center on May 25, 2001, sent to the Respondent, with a copy to the Complainant, a notification of the Complaint, the Complaint, and a notification of the Commencement of Administrative Proceeding. This notification was sent by the methods required under Paragraph 2(a) of the Rules. The formal date of the commencement of this administrative proceeding is May 25, 2001.
The Center notified Respondent that the last day for submitting a response to Complainant was June 13, 2001. The Center never received a Response. On June 14, 2001, the Center notified the Parties of the Respondent�s default.
On June 22, 2001, WIPO appointed the administrative panel (the "Panel"). The Panel was properly constituted. The undersigned Panelist submitted a Statement of Acceptance and Declaration of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the original date scheduled for the issuance of the Panel�s decision was July 5, 2001.
4. Factual Background
Complainant, Toyota Motor Credit Corporation, is a wholly-owned subsidiary of Toyota Financial Services Americas Corporation, a U.S. corporation, which is wholly-owned by Toyota Financial Services Corporation, a Japanese corporation, which in turn is wholly-owned by Toyota Motor Corporation, a Japanese corporation. Complainant is engaged in the business of selling automobiles, motor trucks, structural parts and accessories in the United States. Complainant also finances the sales of its automobiles, trucks and parts. Complainant is licensed to use the marks TOYOTA and TOYOTA FINANCIAL SERVICES in the United States for financing and insurance services.
Complainant�s official website is connected to the domain name .
On January 30, 1968, Complainant�s ultimate corporate parent registered the mark TOYOTA for automobiles and motor trucks with the United States Patent and Trade Office. On May 28, 1985, Complainant�s ultimate corporate parent registered the mark TOYOTA for financing the purchases of vehicles by others. Both of these registrations have been duly renewed.
Complainant�s ultimate corporate parent has also applied to register the service mark TOYOTA FINANCIAL SERVICES, application serial number 75/826750, for financing the purchase and leasing of motor vehicles. On June 20, 2000, the mark TOYOTA FINANCIAL SERVICES was approved by the United States Patent and Trade Office and published for opposition in the Official Gazette.
Respondent, World Funding Group, Inc., registered the Domain Name on December 27, 1999.
5. Parties� Contentions
A. Complainant
Complainant contends as follows:
Complainant�s ultimate corporate parent has used the registered mark TOYOTA in the United States substantially and continuously for more than 40 years. During that time, Complainant�s parent has used the mark TOYOTA continuously in connection with the sale of automobiles, trucks, accessories and structural parts. Complainant�s ultimate corporate parent has also been using the mark TOYOTA for financing the purchases of vehicles by others since 1985. Because of such extended use, there is significant goodwill and value in the mark TOYOTA. Complainant has a license to use the mark TOYOTA in the United States and has been using the mark for a substantial period of time.
Complainant has been licensed to use and has been using the mark TOYOTA FINANCIAL SERVICES in connection with financing purchases of vehicles by others for several years. During that time, the mark has been constantly used in connection with the mark TOYOTA. Because of its long use and recognition, the mark TOYOTA FINANCIAL SERVICES has substantial common law rights. The mark may also soon be a federally registered service mark in the United States. Thus, in addition to Complainant�s common law rights, Complainant may soon have federally registered rights in the mark TOYOTA FINANCIAL SERVICES.
Respondent is not a licensee of Complainant and it was never authorized by Complainant to use any of Complainant�s marks. Respondent is aware that it has no rights or legitimate interest in the Domain Name. It is not registered to do business under any name similar to the Domain Name.
Respondent has not made any demonstrable preparations to use the Domain Name except to redirect the Domain Name to an online search engine and directory. Therefore, Complainant�s customers are likely to be frustrated in their efforts to reach Complainant�s authentic website.
On August 20, 2000, Respondent sent a letter to Complainant in which Respondent agreed to transfer the Domain Name to Complainant. Contrary to this promise, however, Respondent has continued to use the Domain Name. Thus, Respondent�s bad faith registration and use of the Domain Name has been evidenced by the fact that it has failed to fulfill its August 28, 2000, agreement to transfer the Domain Name to Complainant.
In sum, Respondent is using the Domain Name that is confusingly similar to Complainant�s protected marks, and such use is in bad faith. Respondent�s actions have served to intentionally divert potential customers from Complainant�s website. Because Respondent has no legitimate interest or rights in the Domain Name, it is violating Complainant�s trade and service mark rights.
B. Respondent
Respondent failed to submit a Response to the Complaint.
6. Discussion and Findings
A. General
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name 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 interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
B. Identical or Confusingly Similar
The evidence presented by the Complainant demonstrates that Complainant�s trademark TOYOTA has long been a federally registered trademark in the United States. The mark is very famous and has substantial value on account of its recognition and goodwill. Respondent does not use the TOYOTA trademark per se.
Complainant�s second mark, TOYOTA FINANCIAL SERVICES, may soon be a federally registered service mark. The evidence shows that Complainant has used the mark extensively for the last few years in connection with the trademark TOYOTA. The Panel is convinced that the mark TOYOTA FINANCIAL SERVICES is known in the automobile financing field. The Panel thus finds, given the totality of unrebutted evidence, that the service mark TOYOTA FINANCIAL SERVICES is protected by federal and common law.
Because both marks are protectable marks and designs, the Panel next looks to whether the Domain Name is confusingly similar to the service marks. The Panel finds that the Domain Name is identical to Complainant�s service mark TOYOTA FINANCIAL SERVICES and is confusingly similar to Complainant�s mark TOYOTA.
Therefore, the standard of confusingly similar has been reached and the requirement of Paragraph 4(a)(i) is met.
C. Rights or Legitimate Interest of the Respondent
Complainant alleges that the Respondent has no rights or legitimate interest in the Domain Name. The Domain Name is identical to Complainant�s mark and the Complainant did not grant the Respondent a license to use Complainant�s service mark. Thus, a prima facie case has been made by Complainant.
Respondent�s failure to respond to the Complaint allows the inference that the evidence would not have been favorable to Respondent. Accordingly, the Panel finds that Respondent has no legitimate interest in the Domain Name. Therefore, the requirement of Paragraph 4(a)(ii) is met.
D. Bad Faith
Complainant alleges that Respondent registered and used the Domain Name in bad faith. In fact, the Dun & Bradstreet report lists the Respondent as operating as auto consultants. It would be disingenuous to assert that an auto consultant does not know that the mark TOYOTA and variations thereof are protected from infringing use by third parties.
The Panel finds that Respondent�s registration and use of the Domain Name was in bad faith and thus, the requirement of Paragraph 4(a)(iii) is met.
7. Decision
The Panel, having found that the Domain Name is identical and confusingly similar to Complainant�s marks, that Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name has been registered and is being used in bad faith, finds in favor of Complainant.
The Panel directs that the Domain Name be transferred to the Complainant.
Maxim H. Waldbaum
Sole Panelist
Dated: July 5, 2001
Full & Egal Universal Law Academy