WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation V. Andrew Hirsch
Case No. D2002-0546
1. The Parties
The Complainant is Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation, 1 Toyota-cho, Toyota, Aichi, 471-8572, Japan.
The Respondent is Andrew Hirsch, 12 Heath Hurst Road, London NW3 2RX, United Kingdom.
2. The Domain Names and Registrar
The domain names at issue are and .
The Registrar is Network Solutions Inc.
3. Procedural History
The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on June 13, 2002 (electronic version), on June 17, 2002, (hard copy) and on June 25, 2002 (original). The Center acknowledged receipt of the Complaint on June 16, 2002. On the same date the Center sent a Request for Verification of registration data. The date for Registrar Verification was June 19, 2002. It was confirmed that Andrew Hirsch is the Registrant and that administrative contact is the same person for both domain names. Further it was confirmed that technical contact is VeriSign, Inc., 21355 Ridgetop Circle, Dulles, VA 20166, United States of America, for the domain name and NetNames Hostmaster, NetNames International, 1 Clerkenwell Green, London, EC1R 0DP, United Kingdom, for the domain name .
On June 25, 2002, the Center verified that the Complaint satisfies the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy and that payment was made by the Complainant. On the same date the Center notified the Respondent of the Complaint and that administrative proceedings had been commenced according to the Rules, paragraph 2(a).
The complaint was sent by courier to the Respondent on June 25, 2002, and reported delivered. The Respondent was also on the same date notified by telefax, emission OK, and by email.
On July 12, 2002, the Center sent to the Respondent a Notification of Respondent Default. There has also been e-mail communication with the administrative and technical contact for the domain name to get more details about the Registrant. No response has been received up to the date when the Administrative Panel has been appointed.
On July 19, 2002, the Center notified the parties that an Administrative Panel, consisting of a single member, Jette Robsahm, had been appointed, and that the Panelist had submitted a Statement of Acceptance and Declaration of Impartiality and Independence to the Center.
The Administrative Panel must issue its decision at the latest on August 2, 2002.
4. Factual Background
A. Complainant
The Complainant is Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation, a company incorporated in Japan. Complainant Toyota Motor Corporation has substantially and continuously used the name and mark TOYOTA since 1937 in Japan and at least since 1958 throughout most of the world. Sales of TOYOTA automobiles, motor trucks and structural parts and accessories therefore in the world have exceeded one hundred Billion Dollars ($100,000,000,000) in fiscal year 2001.
Toyota Motor Corporation has participated in FIA Formula One World Championship Race in March 2002.
Toyota Motor Corporation is the proprietor of numerous registered trademarks throughout the world, comprising the word TOYOTA. Toyota Motor Corporation�s registered trademarks include, amongst others, the following:
Community Trademarks
CTM 000 042721
TOYOTA
Classes 7, 12, 36, 37 and 39
CTM 000 512780
TOYOTA
Classes 1 to 42
UK Trademarks
975117
TOYOTA
Class 12
1282923
TOYOTA
Class 36
1282924
TOYOTA
Class 37
1282925
TOYOTA
Class 39
1347812
TOYOTA
Class 1
1347813
TOYOTA
Class 4
The marks are registered for not only motor vehicles, but also for a wide range of other goods and services, and are used in connection with the manufacture of motor vehicles including, inter alia, motor vehicles and parts and fittings therefore and servicing and maintenance and repair of motor vehicles. The mark TOYOTA is also used in promotion and advertising in connection with the sale and marketing of such products.
The Complainant is also the owner of numerous domain names containing the mark TOYOTA.
B. Respondent
The Respondent registered the domain names in question on November 17, 1999, , and on February 25, 2000, .
5. Parties� Contentions
A. Complainant
The Complainant states, inter alia, as follows:
1."Complainants Toyota Motor Corporation and its affiliated companies is the owner of numerous domain names containing the TOYOTA marks, including . Complainant Toyota Motor Corporation and its affiliated company Toyota Motorsport GmbH has operated official F1 Web site providing the information regarding the activity of Toyota F1 team.
2.The domain names and registered by Respondent are identical and confusingly similar to Complainants� mark TOYOTA. 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, endorsed by or sponsored by Complainants.
3.Respondent has no rights or legitimate interests in respect of the domain names and . Respondent is neither an authorized sponsor nor dealer/distributor of TOYOTA automobiles nor has it been licensed to use the mark TOYOTA by Complainants. Moreover, contact has been made with Complainant Toyota Motor Corporation by the Respondent confirming intentions to use the domain names on a commercial basis. The Respondent has not made any demonstrable preparations to use the domain names and or the mark TOYOTA other than registering the domain name. As shown in the attached Appendix, the domain names and resolve to an "under construction" web site; accordingly, confused customers of Complainants are likely to be frustrated in their efforts to reach the official TOYOTA web site. Respondent is not commonly known by the domain names and and has no basis to claim that it is making a fair use of the domain names.
4.Respondent�s registration and use of the domain names and in bad faith is further evidenced by Respondent�s knowledge of Complainants� rights in the mark TOYOTA and its preventing Complainant from using the domain names that incorporate its famous and well-known mark TOYOTA in the commercial portion of generic top level domain. Respondent�s actions have therefore unduly interfered with and disrupted Complainants� ability to promote their own products and services.
Complainants Toyota Motor Corporation have used the mark TOYOTA substantially and continuously for over 40 years on products and services throughout most of the world. The significant goodwill and value of the mark TOYOTA is understood by Respondent and undoubtedly is what prompted its registration of the domain name. Given the fame of the mark TOYOTA, it is difficult to imagine that Respondent�s motive in registering the domain name was anything other than to sell or otherwise transfer the domain name registration of Complainants for valuable consideration in excess of the Respondent�s out-of-pocket costs directly related to the domain name. Whatever Respondent�s motive in registering the domain name, it is clear that it intentionally trades off the significant goodwill and value in the mark TOYOTA and can be used to divert traffic intended for Complainants. Respondent�s conduct also prevents Complainants from promoting their own products and services directly to the market. The result is that Internet traffic intended for Complainants will be diverted to Respondent. Respondent�s use of the domain names and clearly creates a likelihood of confusion with Complainants� mark. Since Respondent is not licensed to use the mark TOYOTA in this manner, Complainants are harmed because their valuable trademark and reputation is being placed into the hands of Respondent over which they have no control. The public is harmed because it is likely to be confused as to the sources of any web page located at "www." or "www."."
B. Respondent
The Respondent has not submitted a response.
6. Discussion and Findings
In accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), paragraph 4(a), the Complainant must prove that
(i) the domain names in question are identical or confusingly similar to a trademark or service mark in which the Complainant has rights, and
(ii) that the Respondent has no rights or legitimate interests in respect of the domain names, and
(iii) that the domain names have been registered and are being used in bad faith.
In the administrative proceeding, the Complainant must prove that each three of these elements are present.
The Complainant has provided sufficient evidence of his rights to the trade mark TOYOTA.
(i) Identical or confusingly similar
It is clear that the domain names are not identical to the trade mark TOYOTA owned by the Complainant. However they must be considered confusingly similar to the trade mark. The domain names incorporate the trade mark TOYOTA which is a distinctive and a well-known mark. To add the expression "formulaone" or "formula1", which are common expressions in connection with racing cars, does not change the overall expression of strong likelihood with the mark TOYOTA. Most consumers know about Toyota Motor Corporation and the racing ability of their cars, demonstrated in the first season of participation in the Formula One races. Furthermore Toyota Motor Corporation registered the domain name for their official formula one racing web site on July 8, 1999, which is four months before the registration of by the Respondent.
There is reason to believe that the public, when reading or hearing the domain names or , will believe that the domain names are owned by, or related to, the Complainants and points towards a web site where one can read about Toyota cars and the formula one races.
The result may therefore be that the disputed domain names would be associated in the minds of the consumers with the Complainants� trademarks so that a risk of confusion is likely.
Numerous ICANN decisions have recognized that incorporating a trademark in its entirety can be sufficient to establish that a domain name is identical or confusingly similar to a registered trade mark. See for example earlier decisions involving the Complainant and his trade mark, Toyota France and Toyota Motor Corporation v. Computer-Brain, WIPO Case No. D2002-0002 (March 22, 2002), and Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd, WIPO Case No. D2000-0802 (September 9, 2000). The same view is also common trade mark theory.
(ii) Rights or legitimate interests in respect of the domain names
The Respondent does not use the domain names actively, but when the public tries to find the web site for the TOYOTA Formula One activity and write and/or which both are logical entries in this connection, they can be mislead to think that such a page does not exist since neither of the disputed domain names lead to a site. This may be detrimental to the reputation of TOYOTA.
The Respondent has obviously no connection whatsoever to the Complainant. He is not an authorized dealer and he has no license to use the mark TOYOTA.
On this background the Administrative Panel finds that the Respondent has no rights or legitimate interests in respect of the domain names.
(iii) Bad faith
It is obvious that the Respondent knew of the Complainant and the trade mark TOYOTA prior to registering the domain name. The trademark and company name TOYOTA is well known. It has been used world wide for many years and is probably one of the best known trademarks for motor vehicles. To choose two domain names that are logical in connection with cars and racing indicates (1) that the Respondent knew the trademark in question and (2) a possible wish to either offer the domain names to the Complainant for a lump sum of money or divert the public to an own homepage taking advantage of the reputation of the TOYOTA trademark.
Failing an answer from the Respondent, the Administrative Panel can see no other reason to choose the domain names in question than a wish to attract consumers to a website for commercial gain or perhaps to offer them to the right owner for money.
Paragraphs 4 (b)(i) and (iv) of the Policy provides that sufficient evidence of bad faith may exist where:
"( i) Circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name"; or
(iv)By using the domain name, you have intentionally intended to attract for commercial gain, Internet users to your website or other on-line locations, by creating a likelihood of confusion with the Complainant�s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location."
The Administrative Panel therefore concludes that the Complainant has provided sufficiently evidence that Respondent�s registration and use of the domain names and is in bad faith.
7. Decision
With specific reference to Paragraphs 4(i) of the Policy and 15 of the Rules it is the decision of this Administrative Panel that the Complainant has provided the required evidence to request the transfer of the domain names from Respondent to Complainant, and that accordingly the domain names and shall be transferred to Complainant.
Jette Robsahm
Sole Panelist
Dated: July 23, 2002
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