WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Joseph Airport Toyota v. Private Registrations Aktien Gesellschaft Case No. D2010-1021 1. The Parties
The Complainant is Joseph Airport Toyota of Ohio, United States of America, represented by Blaugrund, Herbert, Kessler, Miller, Myers & Postalakis, Inc., United States of America.
The Respondent is Private Registrations Aktien Gesellschaft of Kingstown, Saint Vincent and the Grenadines. 2. The Domain Name and Registrar
The Disputed Domain Name is registered with Network Solutions, LLC. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2010. On June 22, 2010, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the Disputed Domain Name. On June 22, 2010, Network Solutions, LLC transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 July 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was July 21, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 22, 2010.
The Center appointed Dawn Osborne as the sole panelist in this matter on July 28, 2010. 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 is a Toyota motor vehicle dealership which has been an authorized dealer for Toyota since 1981 and has since that time with the authorisation of Toyota Motor Sales USA Inc (a wholly owned subsidiary of Toyota Motor Corporation who own the TOYOTA trade mark) used the Joseph Airport Toyota name. The Respondent registered the Disputed Domain Name in 2003 and has been using it to display links to third party businesses selling motor vehicles. 5. Parties' Contentions A. Complainant
The Complainant's submissions can be summarised as follows:
The Complainant is a Toyota motor vehicle dealership which has been an authorized dealer for Toyota since 1981 and has since that time with the authorisation of Toyota Motor Sales USA Inc (a wholly owned subsidiary of Toyota Motor Corporation who own the Toyota trade mark) used the Joseph Airport Toyota name. Sales under the name Joseph Airport Toyota amount to approximately fifty million United States dollars over the past three years and the Complainant has spent ten million dollars advertising the name over the last ten years.
The Respondent, based in St Vincent and the Grenadines, registered the Disputed Domain Name in 2003. The Complainant's counsel wrote to the Respondent demanding transfer and various attempts have been made to contact the Respondent with no response.
The Disputed Domain Name is identical to a business name which has been used by the Complainant for 28 years. The Complainant has established common law rights to this name and also derives rights from its standing as a licensee of the Toyota trademark. The Complainant's extensive sales, marketing and usage means that is has established secondary meaning in the name Joseph Airport Toyota.
The Respondent operates a pay per click site using the Disputed Domain Name incorporating links to competitors of the Complainant selling vehicles of both Toyota and non Toyota manufacture. The Respondent is not a licensee of the Toyota mark and is not authorised to use the TOYOTA mark in commerce. The Respondent's site attracts a lot of traffic due to the Complainant's reputation as the Respondent is benefiting from a misrepresentation in the Disputed Domain Name that it is affiliated to the Complainant B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
- The Domain Name is identical or confusingly similar to a trade mark 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 has been registered and is being used in bad faith. A. Identical or Confusingly Similar
The Domain Name consists of the name of the Complainant's business (and the generic top level domain “.com” which is disregarded for the purposes of the Policy). The name JOSEPH AIRPORT TOYOTA has attained secondary meaning through use and the Complainant is authorised to use this business name and the TOYOTA trade mark incorporated therein by the owner of the registered trade mark TOYOTA. As such the Domain Name is identical to a trade mark in which the Complainant has rights for the purpose of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response, does not appear to have any trade marks associated with Joseph Airport Toyota, is not commonly known by this name and does not have any consent from the Complainant or its licensor to use this name. Accordingly, the Panel finds that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith including circumstances where, by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location. It does appear that the Respondent has attempted to attract and cause confusion amongst Internet users between the Complainant's service and the services offered on the site attached to the Disputed Domain Name for commercial gain.
Accordingly, the Panel finds that the Domain Name has been registered and used 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 Name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: July 30, 2010
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