The Complainant is Toyota Motor Sales, U.S.A., Inc. of Plano, Texas, United States of America (“United States” or “U.S.”), represented by Phillips Ryther & Winchester, United States.
The Respondent is James Olp of Miami, Florida, United States. 2. The Domain Names and Registrar
The disputed domain names and (the “Domain Names”) are registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 6, 2017. On July 6, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On July 7, 2017, the Registrar 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 13, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 2, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 3, 2017.
The Center appointed Ellen B Shankman as the sole panelist in this matter on August 7, 2017. 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 provided evidence of numerous registrations for its trademark TOYOTA, including inter alia,United States Trademark Registration No. 843,138 registered January 30, 1968, used in connection with the Complainant’s activities related to the automobiles. The Complainant also provided evidence of registrations for its trademark LEXUS, including inter alia,United States Trademark Registration No. 1,574,718 registered January 2, 1990, used in connection with the Complainant’s activities related to the automobiles.
The dates of the Domain Names registrations were confirmed by the Registrar to be respectively: February 22, 2011 for and March 13, 2014 for .
The Panel also conducted an independent search to determine that the Domain Names and resolve to webpages that contain the message “website under construction”.
The Complainant also provided evidence of sending a cease-and-desist letter before commencing the proceeding, to which the Respondent did not directly answer in writing, but which, by the contents of the letter refers to conversations held between the Parties. The Respondent did not respond to this Complaint.
Since the Respondent did not respond to this Complaint, the facts regarding the use and fame of the Complainant’s mark, as well as the contents of any phone calls and correspondence with the Respondent, are taken from the Complaint and are generally accepted as true in the circumstances of this case. 5. Parties’ Contentions A. Complainant
The Complainant Toyota Motor Sales, U.S.A., Inc. (“Toyota Motor Sales”) is a wholly owned subsidiary of Toyota Motor Corporation (“TMC”), a Japanese corporation, and is the exclusive importer and distributor of Toyota and Lexus automobiles throughout the U.S. (except the State of Hawaii), the Commonwealth of Puerto Rico, and the U.S. Virgin Islands. Toyota Motor Sales is the exclusive licensee of TMC’s trademarks in the distribution territory and contractually obligated to monitor the distribution territory for trademark infringements and abate any infringements found. In this Complaint, unless specified otherwise, “Complainant” and “Toyota” refer to Toyota Motor Sales and TMC in combination. The Complainant is the owner of the well-known Toyota and Lexus trademarks in the United States and throughout the world.
The Complainant alleges that the Respondent appropriated the Complainant’s TOYOTA and LEXUS trademarks in the Domain Names adding the geographic words “Doral” and “Asheville” respectively which does not avoid confusing similarity, and which does not detract from the immediate association with the Complainant aroused in the public mind by the trademark in question. Indeed, since the legitimate authorized distributors of the Complainant’s cars usually refer in their domain names and webpages to the trademarks together with the geographic location of the dealerships. The Complainant contends that the Respondent’s use of the Domain Names on a construction page or with an error page is not a legitimate use and is evidence of bad faith. The Complaint argues that the Respondent is in the business of competitive car sales and has registered other car brand domain names, and thus is aware of the brand strength in the Complainant’s trademarks and is attempting to benefit from that association by registering the Domain Names.
Further, the Respondent offered to sell the Domain Name for USD 10,000, in extreme excess of out-of-pocket costs, thus the Domain Name was registered and is being used in bad faith. The Complainant also provided evidence of sending a cease-and-desist letter to which the Respondent did not directly answer, but which summarizes the calls with the Respondent regarding the offer.
The Complaint also alleges that when it ran a “reverse WHOIS” search, the Complainant discovered the other Domain Name containing the Complainant’s well-known LEXUS mark also registered to the Respondent, thus showing a pattern of bad faith.
To summarize the Complaint, the Complainant is the owner of multiple registrations for the well-known trademark TOYOTA and LEXUS in respect of a wide range of goods and services related to automobiles. The Domain Names are confusingly similar to the trademarks owned by the Complainant. The addition of the geographic terms to the trademarks does not prevent a finding of confusing similarity. Therefore, the Domain Names could be considered confusingly similar to the Complainant’s trademarks. The Complainant contends that the Respondent has no rights or legitimate interests in respect of the Domain Names, that the Domain Names were registered and are being used in bad faith, and that continued use of the Domain Names would lead to a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the Respondent by the Complainant. Thus, the Complainant contends that the Respondent’s registration and use of the Domain Names constitutes bad faith registration and use under the Policy and requests transfer of the Domain Names. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the Domain Names registered by the Respondent are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(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 used in bad faith. A. Identical or Confusingly Similar
The Panel finds that the Complainant has satisfactorily proven that it has registered trademark rights for both TOYOTA and LEXUS, and that the Domain Names are both confusingly similar to the Complainant’s trademarks. Further, the Panel finds that the mere addition of the geographic terms to the Domain Names does not change the overall impression of the designation as being connected to the trademark of the Complainant. It does not prevent a finding of confusing similarity between the Domain Name and the Complainant’s trademark. See Yahoo! Inc. v. Y, Y, Y, Y and Benjamin Benhamou,WIPO Case No. D2001-1188. See also Dell Inc. v. Horoshiy, Inc.,WIPO Case No. D2004-0721 (accepting the complainant’s general submission that a domain name incorporating a mark in its entirety is confusingly similar to that mark despite the addition of other words).
The Panel finds that the addition of the geographic terms in the respective Domain Names not only does not prevent a finding of confusing similarity – if anything, it enhances it. This finding is consistent with numerous UDRP panels that have found that the Complainant has rights in the both trademarks and the addition of other descriptive and/or geographic terms does not prevent the finding of confusing similarity. See, e.g., Toyota Motor Sales, U.S.A. Inc., Gulf States Toyota, Inc. and Price Leblanc, Inc. d/b/a Price Leblanc Toyota v. Gulf South Limited, WIPO Case No. D2001-0698 (ordering transfer of and ) and Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc, WIPO Case No. D2005-0562 (ordering transfer of , and finding “numerous panel decisions under the Policy have recognized that the Complainant has rights to the registered and famous TOYOTA and LEXUS marks.”).
Accordingly, the Panel finds that the Complainant has satisfied the first requirement that the Domain Names are identical or confusingly similar to the Complainant’s registered trademark, under paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy in turn identifies three means through which a respondent may establish rights or legitimate interests in a domain name. Although the complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, UDRP panels have recognized that this could result in the often-impossible task of proving a negative, requiring information that is primarily, if not exclusively, within the knowledge of the respondent. Thus, the consensus view is that paragraph 4(c) shifts the burden of production to the respondent to come forward with evidence of rights or legitimate interests in the disputed domain name, once the complainant has made a prima facie showing. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270.
The Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Names and that it is not related to or affiliated in any way with the Complainant, nor has the Complainant authorized the Respondent to use its trademarks.
Based on the available record, the Panel finds that the Complainant has established a prima facie case, which was not refuted, and that the Respondent lacks rights or legitimate interests in the Domain Names.
The Panel finds that the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Domain Names, under paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Given the distinctiveness of the Complainant’s trademark and reputation, and given the evidence that the Respondent has other automobile related domain names, the Panel agrees with the Complainant’s claims that the Respondent has registered the Domain Names with full knowledge of the Complainant’s famous trademarks TOYOTA and LEXUS together with relevant geographic terms.
The Panel finds that the fact that the Respondent’s offer to sell one of the Domain Names to the Complainant for USD 10,000 and then reiteration of the counter-offer price of “between $5000-10,000” clearly indicates that the Domain Names were registered for the purpose of selling or otherwise transferring the Domain Names registrations to the Complainant for commercial gain in excess of the Respondent’s reasonable “out-of-pocket” costs directly related to the Domain Names – and thus constitutes bad faith.
The Panel is particularly prepared to utilize the Respondent’s default as relevant evidence to prongs two and three, because the offers of sale of the Domain Name by the Respondent to the Complainant in response to the Complainant’s cease-and-desist letter shows that the Respondent was on actual notice of the Complainant’s claims, and chose not to respond to the Complaint in the timely fashion.
This finding is consistent with numerous UDRP panels that have found that domain names containing the Complainant’s well-known trademarks registered and used in bad faith. In addition to the cases cited supra, see, e.g., Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.,WIPO Case No. D2000-0802, Toyota Motor Credit Corp. v. World Funding Group, Inc., WIPO Case No. D2001-0674, and Toyota France and Toyota Motor Corporation v. Computer-Brain,WIPO Case No. D2002-0002.
Given the evidence of the Complainant’s prior rights in the trademarks, the timing of the registration of the Domain Names with apparent full knowledge of the Complainant’s mark, the Respondent’s reply to the Complainant’s request for voluntary transfer of the Domain Names by an offer to sell in excess of reasonable fees, and the Domain Names resolving to construction pages the Panel finds that the Complainant has satisfied the third requirement that the Respondent has registered and is using the Domain Names in bad faith, under paragraph 4(a)(iii) of the Policy. 7. Decision
For 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.
Ellen B Shankman
Sole Panelist
Date: August 14, 2017
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