WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota v. Gulf South Limited
Case No. D2001-0698
1. The Parties
The Complainants are: Toyota Motor Sales, U.S.A., Inc., a California corporation located at 19001 South Western Avenue, Torrance, California 90505-2991, U.S.A.; Gulf States Toyota, a Texas corporation located at 7701 Wilshire Place Drive, Houston, Texas 77040, U.S.A.; and Price Leblanc, Inc., a Louisiana corporation doing business as Price Leblanc Toyota, located at 13200 Airline Highway, Baton Rouge, Louisiana 70817, U.S.A. The Complainants are represented by Eric T. Fingerhut, Esq.; and Alisa C. Key, Esq., Shaw Pittman, 1650 Tysons Boulevard, McLean, Virginia 22102-4859, U.S.A.
The Respondent is Gulf South Limited, a Georgia corporation whose address is P.O. Box 813, Roswell, Georgia 30077, U.S.A.
2. The Domain Names and Registrar
The domain names in dispute are: and .
The registrar for the disputed domain names is Stargate Communications, Inc. ("Stargate"), 2805 Butterfield Road, Suite 100, Oak Brook, Illinois 60523, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on May 28, 2001 (hardcopy). On May 30, 2001, the Center requested that the registrar Stargate check the registrant for the domain names and . On the same day, i.e. May 30, 2001, Stargate reported that the registrant was the Respondent in this proceeding and that the domain name registrations are covered by the UDRP.
On May 31, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this Proceeding officially began. The Respondent did not file a Response as required by Rule 5, and on June 29, 2001, was declared in default. The Panel is mindful of Rule 5(e) which states: "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint."
The Administrative Panel submitted a Declaration of Impartiality and Independence on July 9, 2001, and on July 11, 2001, the Center proceeded to appoint the Panel. The Panel finds the Center has followed the Policy and the Rules in administering this proceeding.
This Decision is due by July 25, 2001.
4. Factual Background
Complainant Toyota Motor Sales, U.S.A., Inc. (TMS) is a wholly-owned subsidiary of Toyota Motor Corporation (a Japanese corporation) and is the exclusive importer and distributor of Toyota and Lexus automobiles throughout the United States except the State of Hawaii. TMS has the right to use the Toyota trademarks and service marks in the United States and to license authorized distributors and dealers to use the marks in connection with the sales and service of Toyota products.
Complainant Gulf States has been appointed by TMS as the distributor of Toyota motor vehicles in the five state area of Texas, Louisiana, Mississippi, Oklahoma and Arkansas. TMS has also authorized Gulf States to use the Toyota name as part of its corporate name.
Complainant Price Leblanc has been appointed by Gulf States as an authorized dealer of Toyota motor vehicles in Baton Rouge, Louisiana. Gulf States and TMS have authorized Price Leblanc to use the trade name Price Leblanc Toyota.
Complainant TMS has used the name and mark Toyota in the United States since 1958.
Complainant Gulf States has been an authorized distributor of Toyota products in the U.S.A. since June 1969.
Complainant Price Leblanc has been an authorized Toyota motor vehicle Toyota dealer in Baton Rouge since September 1969 and has used the trade name Price Leblanc to promote its business and Toyota products in its market since that time.
The Respondent registered the disputed domain name on January 2, 1999, and the disputed domain name on January 4, 1999. On April 27, 2000, the Complainants' legal counsel wrote to the Respondent alleging unauthorized use of the Toyota mark in the domain name and demanding that the Respondent transfer the domain name to the Complainants (Complaint Exhibit L).
On August 30, 2000, the Complainants' legal counsel followed up and stated it would take legal action to gain control of the domain name (Exhibit L). It appears the Respondent never acknowledged the Complainants' correspondence, and the Complainants have brought this proceeding seeking transfer of the two disputed domain names as a result.
5. The Parties' Contentions
Complainant's Contentions:
- The domain names and registered by Respondent are identical to the business names that have been used by Complainant Gulf States and Complainant Price Leblanc, with the authorization of TMS, for over thirty years. These domain names are confusingly similar to the mark Toyota, and are otherwise identical to the Toyota mark except for the use of the term "gulfstates" or "priceleblanc".
- Respondent's use of the Toyota mark in the domain names at issue erroneously leads Complainants' customers to believe that the domain names and are somehow associated with Respondent.
- Respondent has no rights or legitimate interests in respect of the disputed domain names. Respondent is neither an authorized dealer nor distributor of Toyota products, nor has it been licensed by Complainants to use the mark Toyota.
- In the two years since Respondent registered these domain names, Respondent has not made any demonstrable preparations to use them. The domain names are not connected to any web or mail servers and do not resolve to active sites.
- Respondent is not commonly known by the domain names and cannot claim that it is making a noncommercial or fair use of the domain names.
- That the Respondent registered and is using the domain names in bad faith is evidenced by Respondent's pattern of registering multiple domain names which are identical or confusingly similar to famous marks (Complaint Appendix H). The Respondent has registered some 372 domain names, many of which are identical or confusingly similar to famous or well-known marks.
- Respondent's registration and use of the disputed domain names in bad faith is further evidenced by Respondent's offering to sell the domain name to Complainant Price Leblanc for $6,000, a sum well in excess of the registration fee paid by Respondent for this domain name. (Complaint para. 13).
- The significant goodwill and value of the mark Toyota is understood by Respondent and undoubtedly is what prompted its registration of the domain names.
- Respondent's use of the domain names creates a likelihood of confusion with Complainants' marks.
Respondent's Contentions:
The Respondent did not file a Response and is in default in this proceeding.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain names transferred to it, Complainant must prove the following (the Policy, para 4a(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainants have exhibited a number of their Toyota trademark registrations from the principal register of the U.S.A. These include: no. 843,138 dated January 30, 1968, for automobiles and trucks; and no. 1,274,261 dated April 17, 1984, for automobiles, trucks, forklift trucks and towing tractors (Complaint Exhibit D). The Panel also is prepared to take ex officio notice that the Toyota mark for motor vehicles is world-famous.
The disputed domain names and are confusingly similar to Complainants' Toyota trademark. The Panel notes that the disputed domain names are in fact the trade names of dealerships licensed to distribute and sell Toyota products. The Policy does not speak about trade names but about citing trademarks and service marks. However, the Panel is convinced that since the trade names are reproduced in their distinctive Toyota element in the names of the products the dealerships sell, the requirements of the Policy are satisfied.
The Panel finds the Complainants have complied with their burden of proof under the Policy at para 4a(i).
Legitimate Rights or Interests
The Complainants aver not to have authorized or licensed the Respondent to use their Toyota mark. Moreover, it does not appear that the Respondent has ever actually used in any way the disputed domain names containing the Complainants' mark.
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Complainants assert the Respondent registered the disputed domain names in bad faith because it has made no use whatever of the domain names. The Panel finds this argument persuasive and notes that other ICANN Panels have found bad faith where a party has passively "warehoused" a domain name fully aware the name contained another party's (in this case famous) trademark. (see Toyota Motor Sales USA v. Rafi Hamid dba ABC Automotive Buyer, WIPO Case No. D2001-0032, March 28, 2001; and ISL Marketing AG and the Federation Internationale de Football Association v. J.Y. Chung, Worldcup , Wco., and Worldcup 2002, WIPO Case No. D2000-0034, April 3, 2000). Rule 15a allows the Panel to find bad faith on grounds other than the non-exhaustive list in the Policy at 4b(i-iv).
At one point (Complaint para 13), the Complainants assert the Respondent contacted the Complainants and attempted to sell the disputed domain name for $6,000. However, the Complainants offer no proof of this occurrence, and the Panel declines to find bad faith under the Policy 4b(i).
The Complainants also assert the Respondent registered the disputed domain names in order to prevent the Complainants from registering them and that the Respondent has engaged in a pattern of this conduct (the Policy at 4b(ii). The Panel finds this contention well substantiated in the record. The Complainants have shown the Respondent has registered almost 400 domain names, including many famous trademarks from a variety of business sectors: Dodge, Ford, Reebok, Adidas among others. It also appears to the Panel that, in registering the disputed domain names in this Case, the Respondent calculatedly tried to register names the Complainants would need for their business.
The Panel finds the Complainants have demonstrated the Respondent's bad faith in its registration and use of the disputed domain names.
7. Decision
The Panel has found the Respondent registered two domain names confusingly similar to the Complainants' famous trademark. The Panel also has found the Respondent has no legitimate rights or interests in the domain names, and that the Respondent registered and was using the domain names in bad faith.
Therefore, per the Policy 4(i) and Rule 15, the Panel orders that the two disputed domain names, and be transferred from the Respondent, Gulf South Limited, to the Complainants, Toyota Motor Sales, U.S.A., Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. dba Price Leblanc Toyota.
Dennis A. Foster
Sole Panelist
Date: July 25, 2001
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