WIPO Domain Name Decision D2005-0562 for lexus--parts.com, toyota--parts.com

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc

Case No.�D2005-0562

1. The Parties

The Complainant is Toyota Motor Sales, U.S.A., Inc., Torrance, California, United�States�of�America, represented by Howrey LLP, Washington,�DC United�States�of�America.

The Respondent is Pick Pro Parts Inc, Santa�Clara, California, United�States�of�America.

2. The Domain Names and Registrar

The disputed domain names and (the�“Domain Names”) are registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the�“Center”) on May�27,�2005. On May�30,�2005, the Center transmitted by email to eNom a request for registrar verification in connection with the domain names at issue. On June�1,�2005, 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 June�3,�2005. In accordance with the Rules, paragraph�5(a), the due date for Response was June�23,�2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June�27,�2005.

The Center appointed W.�Scott�Blackmer as the Sole Panelist in this matter on July�6,�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

The Complainant Toyota Motor Sales, U.S.A., Inc. is a California corporation that is wholly owned by the Toyota Motor Corporation of Japan, one of the world’s leading manufacturers of automobiles, trucks, and associated parts and accessories. The Complainant asserts, without contradiction, that it is the exclusive importer and distributor of TOYOTA and LEXUS automobiles in the United�States of America, apart from the State of Hawaii. Portions of its Importer Agreement are attached to the Complaint in support of this assertion.

According to the Complaint, the Complainant has continuously used the TOYOTA name and mark in the United States since at least as early as�1958, spending large sums to advertise automobiles, trucks, parts, and accessories under the TOYOTA mark and achieving sales of over $90 billion in the United States since�1958. The Complainant has also advertised and sold over $50 billion of automobiles, parts, and accessories under the LEXUS mark in the United States since 1989.

The TOYOTA and LEXUS marks have been registered by the US Patent and Trademark Office since 1968 and 1990, respectively. The Complainant’s parent company, Toyota Motor Corporation, holds thirteen US trademark registrations associating the TOYOTA or LEXUS marks with automobiles, trucks, forklifts, or tractors, or with related parts, lubricants, financing services, repair and maintenance services, and roadside travel assistance services.

It is undisputed that Complainant is authorized to use its parent corporation’s TOYOTA and LEXUS marks in the United States. Further, the Importer Agreement obliges the Complainant to monitor for trademark infringements in the distribution territory and pursue remedies to abate such infringement.

The Complainant has registered the domain names and , as well as others incorporating the TOYOTA and LEXUS marks.

According to the WHOIS database, the Respondent Pick Pro Parts Inc initially registered the Domain Names with eNom Inc. on December�2,�2002. The registration gives a California address for Respondent and for its administrative contact, Kintex�Ho.

The Domain Names both resolve to a website at “” that advertises “aftermarket” automotive parts for sale, not only for various listed models of TOYOTA and LEXUS vehicles but for more than thirty other makes of vehicles as well, such as BMW, Chevrolet, Ford, Mazda, and Volkswagen. According to the WHOIS database, this website is registered to Pick Pro Parts Inc, with the same address and contacts as are given for the Respondent with respect to the Domain Names at issue here.

A disclaimer appears at the bottom of the page first displayed on the Respondent’s website “” when a visitor is redirected from or , respectively:

“toyota� is not affiliated with and is used here for descriptive purposes only. Designated trademarks are the property of their respective owners.”

“lexus� is not affiliated with and is used here for descriptive purposes only. Designated trademarks are the property of their respective owners.”

It is undisputed that the Complainant sent the Respondent four cease-and-desist letters in 2003 and 2004, and that the Respondent has not replied to any of them. According to the WHOIS database, the Respondent subsequently renewed its registrations for the Domain Names on December�4,�2004, using the same postal and electronic contact addresses to which the cease-and-desist letters (and the notices of this proceeding) were directed.

5. Parties’ Contentions

A. Complainant

The Complainant demonstrates its rights in the United States of America regarding the famous TOYOTA and LEXUS marks. The Complainant urges that the Domain Names are confusingly similar to these marks, since the Domain Names wholly incorporate the marks and add a generic term (“parts”) that is relevant to the sale of parts and related services for TOYOTA and LEXUS vehicles.

The Complainant asserts that the Respondent has not been authorized by the Complainant or its parent corporation to use the TOYOTA and LEXUS marks. The Complainant argues that the use of these marks in the Domain Names is illegitimate even if the Respondent actually sells TOYOTA and LEXUS parts obtained from others, since the Domain Names resolve to a website that also offers parts manufactured by the Complainant’s competitors. As the marks are famous and uniquely identified with TOYOTA- and LEXUS-branded parts, the Complainant infers that the Respondent knew of the marks and sought to attract customers to its website by using the marks in the Domain Names.

The Complainant concludes that the Respondent registered and used the Domain Names in bad faith -- fully aware of the Complainant’s trademarks from the beginning, profiting from the likelihood of confusion with the Complainant’s websites, and ignoring the Complainant’s objections. The Complainant points out that the trademark disclaimers on the Respondent’s website do not avoid initial confusion on the part of potential customers and may never be seen by many who visit the site; consequently, they do not negate an inference of bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph�4(a) of the Policy provides that in order to divest the Respondent of the Domain Names, the Complainant must demonstrate each of the following:

(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 interests in the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that the Complainant here has met its overall burden of proof under paragraph�4 of the Policy. Panel decisions are to be based on the documents and statements submitted and on applicable rules and principles of law (Rules, paragraph�15(a)). Thus, the uncontested facts supported by documents and statements must provide a sufficient prima facie basis for finding confusing similarity with the Complainant’s mark and then for inferring that, more probably than not, the Respondent has no right or legitimate interest in the Domain Names and has registered and used them in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No.�D2003-0455 (August�21,�2003), .

A. Identical or Confusingly Similar

As the Complainant observes, numerous panel decisions under the Policy have recognized that the Complainant has rights to the registered and famous TOYOTA and LEXUS marks. These decisions include Toyota Motor Sales, U.S.A., Inc. v. Rafi Hamid d/b/a ABC Automobile Buyer, WIPO Case No.�D2001-0032 (March�28,�2001), among others; Toyota Motor Sales, U.S.A., Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. d/b/a Price Leblanc Toyota v. GulfSouth Limited, WIPO Case No.�D2001-0698 (July�25,�2001), , ; Toyota Motor Sales, U.S.A., Inc. v. Antonio R. Diaz, d/b/a D, WIPO Case No.�D2001-1133 (November�7,�2001), ; Toyota Motor Sales, U.S.A., Inc. v. John Zuccarini, Cupcake Patrol, WIPO Case No.�D2002-0951 (December�3,�2002), ; Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), ; Toyota Motor Sales U.S.A., Inc. v. Indian Springs Motor, FA0305000157289 (Nat. Arb. Forum, June�23,�2003), and ; and Toyota Motor Sales U.S.A., Inc. v. Tony Mwangi, WIPO Case No.�D2003-0623 (October�16,�2003), and .

The Domain Names are likely to be confused with these marks. The Domain Names incorporate the TOYOTA and LEXUS marks, respectively, in their entirety. The addition of the double hyphen and the generic word “parts” does not lessen the likelihood of confusion with the marks. To the contrary, it increases the likelihood of confusion because the word “parts” is relevant to goods and services offered by the Complainant itself, which provides parts, repair, and maintenance services related to TOYOTA and LEXUS vehicles. See Toyota Motor Sales, U.S.A., Inc. v. Antonio R. Diaz, d/b/a D, WIPO Case No.�D2001-1133 (November�7,�2001), ; Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), .

The trademark disclaimer displayed at the bottom of the pages to which the Domain Names resolve does not lessen the initial confusion of Internet users seeking a website operated by the Complainant or an authorized reseller of the Complainant’s parts. Users see the disclaimer (if they notice it at all) only after selecting the confusingly labeled Domain Names and being redirected to the Respondent’s website. See Toyota Motor Sales U.S.A., Inc. v. Tony Mwangi, WIPO Case No.�D2003-0623 (October�16,�2003), and (a disclaimer on the website does not avoid initial interest confusion).

Under the Policy, paragraph�4(a)(i), the question is whether the Domain Names themselves, not the website to which they resolve, are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. That is certainly the case here.

B. Rights or Legitimate Interests

The Complainant avers that it has not authorized the Respondent to use the Complainant’s marks in the Domain Names. Once a complainant has made a prima facie case, a panel may infer from a respondent’s failure to contest a complainant’s allegation that the respondent has no rights or legitimate interests in the domain name. See, e.g., Toyota Motor Sales, U.S.A., Inc. v. Antonio R. Diaz, d/b/a D, WIPO Case No.�D2001-1133 (November�7,�2001), ; Toyota Motor Sales U.S.A., Inc. v. Tony Mwangi, WIPO Case No.�D2003-0623 (October�16,�2003), and ; Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), ; Toyota Motor Sales U.S.A., Inc. v. Indian Springs Motor, FA0305000157289 (Nat. Arb. Forum, June�23,�2003), and .

This inference is not contradicted by anything in the record of this proceeding or by applicable rules or principles of law. Paragraph�4(c) of the Policy lists three non-exclusive bases for demonstrating a respondent’s rights or legitimate interests. There is no evidence here that the Respondent is commonly known by the Domain Names (Policy, paragraph�4(c)(ii)). To the contrary, the Respondent’s commercial website, to which the Domain Names resolve, uses its corporate name Pick Pro Parts Inc, both in the domain name and in the page headings. There is also no indication that the Respondent made legitimate noncommercial use of the Domain Names (Policy,�paragraph�4(c)(iii).

The use of a domain name “in connection with a bona fide offering of goods or services” may also constitute a respondent’s “rights or legitimate interests” (Policy,�paragraph�4(c)(i)). It appears from the Respondent’s website to which the Domain Names resolve that the Respondent does offer TOYOTA and LEXUS parts for sale as “top quality aftermarket parts”, shipping them to customers throughout the United States of America (the territory for which the Complainant has an exclusive distribution license). The Complainant asserts, without contradiction, that neither the Complainant nor its parent corporation has authorized the Respondent to use the marks in its business. The only possible argument for legitimacy that appears from the record, then, is that the Respondent has a legitimate interest in using the marks in the Domain Names in an effort to promote its business, which includes selling aftermarket TOYOTA and LEXUS parts, even if it has not been authorized to do so by those who hold rights in the marks.

Several panel decisions under the Policy address the question of whether a reseller of branded goods is making a bona fide offering that should be viewed as conferring a “legitimate interest” in a domain name, where the reseller has not been authorized (contractually or otherwise) to use the mark in a domain name. These decisions were reviewed recently in Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No.�D2005-0447 (June�8,�2005) , a proceeding involving, like this one, unauthorized use of an automaker’s mark by a party that actually resells the automaker’s parts.

As noted in Volvo Trademark Holding AB v. Auto Shivuk, some panel decisions treat unauthorized use of a mark in a domain name as generally illegitimate. Such a case is Volvo Trademark Holding AB v. Peter Lambe, WIPO Case No.�D2001-1292 (January�20,�2002) , which held that “[i]t is a well-known principle of trademark law that the manufacturer of ‘unoriginal’ spare parts is entitled to a certain limited use of the trademark of the manufacturer of the original products in connection with the bona fide offering of these goods, but this principle does not entitle the said manufacturer to incorporate the trademark in his business name or in any other type of business identifier such as a domain name”.

Other Panels have more readily recognized a right to use a mark to describe a respondent’s business, even in a domain name. An example, again dealing with the automotive industry, is Daimler Chrysler A.G. v. Donald Drummonds, WIPO Case No.�2001-0160 (June�18,�2001, with dissent) , where the operator of a site marketing Mercedes parts and accessories was deemed to have a legitimate interest in using the MERCEDES mark descriptively in its domain name (and with appropriate disclaimers in the text of the website).

Judging from the subsequent decisions, however, the most influential view is that articulated by the Panel in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No.�D2001-0903 (November�6,�2001) . The Panel in Oki Data concluded that the use of a manufacturer’s trademark as a domain name by a dealer or reseller (an authorized dealer in that case) should be regarded as a bona fide offering of goods or services” within the meaning of paragraph�4(c)(iii) of the Policy if the following conditions are satisfied:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the site to sell only the trademarked goods (otherwise, there is the possibility that the respondent is using the trademark in a domain name to bait consumers and then switch them to other goods);

- the site itself must accurately disclose the respondent’s relationship with the trademark owner; and

- the respondent must not try to “corner the market” in all relevant domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

In addition to the recent decision in Volvo Trademark Holding AB v. Auto Shivuk, Panels have expressly applied the Oki Data criteria in Ferrari S.P.A., Fila Sport S.P.A., v. Classic Jack, WIPO Case No.�D2003-0085 (April�15,�2003) among others; Experian Information Solutions, Inc. v. Credit Research, Inc., WIPO Case No.�D2002-0095 (May�7,�2002) among others; Dr.�Ing.�h.c. F. Porsche AG. v. Del Fabbro Laurent, WIPO Case No.�D2004-0481 (August�20,�2004) among others; and Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No.�D2002-0946 (February�13,�2003) ). Other decisions under the Policy antedating Oki Data or not citing that decision have used one or more of the same criteria to determine whether a retailer was making a bona fide offering of goods using a manufacturer’s mark in a domain name. See, e.g., Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), (respondent had no legitimate interest where its site offered both Toyota parts and parts from Toyota’s competitors); Nike, Inc. v. Ben Dias, FA0211000135016 (Nat. Arb. Forum, January�7,�2002) (diverting users to a site offering competitors’ products, as well as those of the mark holder, is not a bona fide offering of goods or services).

The Oki Data criteria are relevant to the spirit and the letter of the Policy. Moreover, this Panel agrees with the Panel in Volvo Trademark Holding AB v. Auto Shivuk that those criteria are appropriate not only in cases determining the rights or legitimate interests of authorized dealers or resellers but also in cases, such as this one, where the respondent is not an authorized dealer and otherwise has no contractual relationship with the mark holder.

Applying the Oki Data criteria to the current proceeding, the Panel finds that the Respondent’s use of the Complainant’s marks in the Domain Names is not associated with a bona fide offering of goods and services, because it fails the second test. The Respondent’s website offers not only the trademarked goods but those of the Complainant’s competitors. Thus, the result differs from that in Volvo Trademark Holding AB v. Auto Shivuk, where transfer was denied because the respondent’s website offered only the trademarked goods (as well as meeting the other Oki Data criteria).

Perhaps the Respondent, had it replied in this proceeding, could have demonstrated the absence of product interchangeability and “bait and switch” tactics, conceivably satisfying the concerns that underlie the second of the Oki Data criteria. But the Respondent did not do so, and the Panel must apply the criteria to the facts as presented, including an examination of the Respondent’s website to which the Domain Names resolve. Based on the uncontested facts, the Panel finds that the Respondent was not authorized to use the Complainant’s marks in the Domain Names and did not otherwise have rights or legitimate interests in so using the marks.

C. Registered and Used in Bad Faith

There are several grounds for concluding in this proceeding that the Respondent, which has not replied to the Complaint or otherwise contested the Complainant’s allegations, registered and used the Domain Names in bad faith.

Paragraph�4(b) of the Policy cites four non-exclusive circumstances that indicate bad faith in registering and using a domain name. The fourth is strikingly apposite here: using a domain name intentionally to attract Internet users to a site for commercial gain, by creating a likelihood of confusion with the complainant’s mark (Policy,�paragraph�4(b)(iv)). The Respondent confusingly employs the Complainant’s marks in the Domain Names to attract Internet users to the Respondent’s commercial site, where the Respondent attempts to sell Complainant’s parts, as well as those of its competitors, evidently for commercial gain. This constitutes bad faith under paragraph�4(b)(iv) of the Policy. See Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), (respondent “commercially benefits from this diversion by selling products and services to Internet users who are searching under Complainant’s mark”); Toyota Motor Sales U.S.A., Inc. v. Indian Springs Motor, FA0305000157289 (Nat. Arb. Forum, June�23,�2003), and (bad faith may be inferred where a respondent profits from its “diversionary use” of the complainant’s mark in a domain name that resolves to a commercial website and the respondent fails to respond with a plausible good-faith reason for using the mark).

In this respect, the trademark disclaimers displayed on the Respondent’s website actually hurt its case. They support the inference of bad faith that can normally be drawn simply from the use of famous and registered marks in domain names. The disclaimers themselves indicate that the Respondent was both aware of the Complainant’s marks and of the fact that Internet users might be attracted to the site under the mistaken impression that the site was associated with the Complainant. See Toyota Motor Sales U.S.A., Inc. v. Tony Mwangi, WIPO Case No.�D2003-0623 (October�16,�2003), and (disclaimers confirm that the respondent was aware of the potential for initial confusion with the holders of established marks). Bad faith under paragraph�4(b)(iv) of the Policy is concerned with illegitimately “attracting” Internet users to a respondent’s website for commercial gain. Site visitors may or may not decide to examine the site further and deal with its operator after seeing a disclaimer of affiliation with the mark holder (assuming that they do read the disclaimer). But paragraph�4(b)(iv) treats the intentional diversion of Internet users from the mark holder’s website in the first instance, accomplished by displaying the mark in the domain name itself, as an instance of bad faith. The Panel concludes that such deliberate initial interest confusion occurs here and is evidence of bad faith in the registration and use of the Domain Names.

The Complainant argues that the Policy’s third illustration of bad faith also applies to this case. It is bad faith to register domain names “primarily for the purpose of disrupting the business of a competitor” (Policy, paragraph�4(b)(iii)), and deliberately diverting Internet users to a competitor’s website may be evidence of such bad faith. See Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), . It is likely that the Respondent’s sale of “aftermarket” parts competes at some level with the Complainant’s distribution of its original parts through authorized dealers. But there is nothing in the record explaining this competitive relationship between original and aftermarket parts suppliers and providing a sufficient basis for inferring that the disruption of the Complainant’s business was the Respondent’s primary purpose in registering the Domain Names. The Panel relies, therefore, on other grounds for finding bad faith.

The four instances of bad faith cited in paragraph�4(b) of the Policy are expressly non-exclusive; they are listed “in particular but without limitation” as circumstances of bad faith. UDRP panels have also found bad faith simply in a respondent’s use of a complainant’s marks with actual or constructive knowledge of the complainant’s trademark rights. See, e.g., Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), , and cases cited therein. Here, the marks to which the Complainant has rights in the United States are long-established, widely known, and registered. Indeed, the disclaimers on the Respondent’s website confirm the Respondent’s actual knowledge of the marks. See Toyota Motor Sales U.S.A., Inc. v. Tony Mwangi, WIPO Case No.�D2003-0623 (October�16,�2003), and . Therefore, the Respondent’s use of the entire marks in the Domain Names, along with the relevant generic word “parts”, warrants an inference of bad faith if there is no plausible evidence in the record of a good-faith purpose in using the marks. See Toyota Motor Sales, U.S.A., Inc. v. Rafi Hamid d/b/a ABC Automobile Buyer, WIPO Case No.�D2001-0032 (March�28,�2001), among others; Toyota Motor Sales U.S.A., Inc. v. I.E. Mann d/b/a Everything Internet, FA0411000370902 (Nat. Arb. Forum, January�11,�2005), , and cases cited therein.

As discussed above concerning the Respondent’s possible “rights or legitimate interests” in the Domain Names under paragraph�4(c)(i) of the Policy, the Respondent might be considered to have a legitimate interest in using the marks in the Domain Names as a reseller of the trademarked goods, if it met the Oki Data criteria for a reseller’s bona fide offering of goods or services. In that event, the Respondent would have a good-faith purpose for the registration and use of the Domain Names, which could negate the inference of bad faith under paragraph�4(a)(iii). See Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No.�D2005-0447 (June�8,�2005) . In this case, however, the Respondent does not satisfy the second Oki Data test, because its commercial website is not limited to the promotion and sale of the Complainant’s trademarked goods. Thus, there is no evidence here of a good-faith reason for registering and using the Domain Names.

Finally, the Respondent’s failure to respond to the Complainant’s efforts to make contact concerning alleged trademark infringement provides “strong support for a determination of ‘bad faith’ registration and use”. Toyota Motor Sales, U.S.A., Inc. v. Rafi Hamid d/b/a ABC Automobile Buyer, WIPO Case No.�D2001-0032 (March�28,�2001), among others, quoting Encyclopaedia Britannica v. John Zuccarini and The Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No.�D2000-0330 (June�7,�2000), among others.

The Panel concludes, therefore, that the Respondent registered and used the Domain Names in bad faith.

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 names and be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist

Dated: July�20,�2005

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