The Complainant is Toyota Motor Sales, U.S.A., Inc. of Plano, Texas, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States.
The Respondent is Santiago J Caceres of Naguabo, Puerto Rico, Unincorporated Territory of the United States of America, self-represented. 2. The Domain Name and Registrar
The disputed domain name is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 10, 2018. On February 12, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 13, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s 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 February 15, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 7, 2018. At the Respondent’s request and with the Complainant’s consent, the due date for Response was extended to March 21, 2018. The Response was filed with the Center on March 21, 2018.
The Center appointed Evan D. Brown as the sole panelist in this matter on April 20, 2018. 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 among the best-known automotive companies in the world, and began using the mark LEXUS in the United States in 1987, obtaining a United States trademark registration for the mark on January 2, 1990 (Reg. No. 1,574,718) for use in connection with automobiles and related goods and services. The Complainant obtained a registration for the mark in Puerto Rico in 1997.
Without authorization or license from the Complainant, and without having any relationship with the Complainant, the Respondent, located in Puerto Rico, registered the disputed domain name on July 20, 2001. The only evidence in the record concerning the Respondent’s use of the disputed domain name shows that it was used, at times, in connection with web pages displaying commercial pay-per-click links.
In late 2017, counsel for the Complainant contacted the Respondent in writing, asserting the Complainant’s legal rights in the disputed domain name and demanding its transfer to the Complainant. The Respondent replied to the Complainant’s counsel’s overtures by claiming an intention to use the disputed domain name as a “community site” and offered to transfer the disputed domain name to the Complainant in return for the payment of “$5,000”. The Parties continued to negotiate a transfer of the disputed domain name. The Complainant offered to pay “$500”, but the Respondent rejected this counter-offer. Unable to reach a resolution, the Complainant commenced this proceeding under the Policy. 5. Parties’ Contentions A. Complainant
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s registered trademarks; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith. B. Respondent
The Respondent filed a Response on March 21, 2018, asserting a number of arguments against the Complaint, the most salient being:
- The Complainant lacks trademark rights in “LEXUSPR”, and is trying to “extend and overreach” its rights in the LEXUS mark;
- The Complainant waited almost 17 years to object to the Respondent’s registration of the disputed domain name, and that the Complainant’s argument that it just recently found out about the disputed domain name is unconvincing, given that the Complainant registered a similar domain name, , in 2006.
- The offer of $5,000 was intended only to reimburse the Respondent for his costs of having maintained registration of the disputed domain name since 2001, and was not an attempt to “make money”;
- The Respondent registered the disputed domain name to create a community of fan clubs, customers, owners, etc. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the disputed domain name, the Complainant must prove each of the following, namely, that:
(i) The disputed 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 respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith. A. Laches
Though he does not use the word, the Respondent has made a laches argument, pointing out that the Complainant did not begin to take action against the disputed domain name some 17 years after its registration. The Panel does not find that the action should be barred on this basis. UDRP panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. UDRP panels have noted that the UDRP remedy is injunctive rather than compensatory, and that a principal concern is to halt ongoing or avoid future abuse or damage. See, generally, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.17. B. Identical or Confusingly Similar
The Complainant undoubtedly has rights in the mark LEXUS. The mark is associated with a very well-known automobile brand, having been in widespread use for many years prior to the registration of the disputed domain name. The disputed domain name is confusingly similar to this mark. It contains the mark in its entirety, accompanied only by the geographical designator (for Puerto Rico) “PR”. This additional material (along with the generic Top-Level Domain “.com”) does nothing to meaningfully distinguish the disputed domain name from the Complainant’s mark for purposes of the Policy. The Panel disagrees with the Respondent’s assertions that the Complainant seeks to “extend and overreach” the rights it has in the well-known LEXUS mark. Accordingly, the Panel finds in favor of the Complainant on this first element of the Policy. C. Rights or Legitimate Interests
The Complainant will be successful under this element of the UDRP if it makes a prima facie showing that the Respondent lacks rights or legitimate interests in the disputed domain name, and if that prima facie showing remains unrebutted by the Respondent. The Complainant asserts that the Respondent has not received any license or consent from the Complainant to use its LEXUS mark as a domain name or in any other manner. Nor has the Respondent been commonly known by the disputed domain name, and has not otherwise acquired any trademark rights related to the disputed domain name. These assertions establish the Complainant’s prima facie case.
The Respondent’s argument that he registered the disputed domain name to create a community of fan clubs, customers, owners, etc. addresses this second element. Paragraph 4(c)(i) of the Policy offers relevant guidance. A respondent may seek to demonstrate rights or legitimate interests in a disputed domain name by pointing to, “before any notice to [the respondent] of the dispute, [its] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.”
The WIPO Overview 3.0 (at section 2.2.) elaborates on this method of showing prior use or demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services. Helpful evidence includes: (i) evidence of business formation-related due diligence or legal advice or correspondence, (ii) evidence of credible investment in website development or promotional materials such as advertising, letterhead, or business cards, (iii) proof of a genuine (i.e., not pretextual) business plan utilizing the domain name, and credible signs of pursuit of the business plan, (iv) bona fide registration and use of related domain names, and (v) other evidence generally pointing to a lack of indicia of cybersquatting intent.
In this case, the Respondent asserts that he intended the disputed domain name to be used for the development of an online community. Whether that intended use would give rise to rights and legitimate interests is not clear from the record. The Respondent has only provided conclusory assertions about his intended use, without the depth or kind of evidence that would persuade the Panel of the existence of prior use or demonstrable preparations in connection with a bona fide offering of goods or services.
Accordingly, the Panel finds the Complainant has satisfied this second element of the Policy. D. Registered and Used in Bad Faith
The Complainant puts forward several arguments as to how the Respondent registered and used the disputed domain name in bad faith, including:
- The fact of registration alone, given the strength and fame of the LEXUS mark, makes it impossible for the Respondent to claim he was unaware of or did not recognize the Complainant’s strong prior rights in the mark;
- The Respondent’s awareness of the LEXUS trademark prior to the registration of the disputed domain name may be inferred because of the registration of the mark in the United States Patent and Trademark Office and in Puerto Rico;
- The Respondent’s use of the disputed domain name to display pay-per-click advertisements;
- The Respondent’s passive holding of the disputed domain name for more than 16 years without using it for anything other than “bare-bones” pay-per-click advertising;
- The Respondent’s demand for payment of $5,000 – an amount that the Complainant characterizes as “in gross excess of his out-of-pocket domain name registration costs.”
Two of the Respondent’s arguments address this third UDRP element. The Respondent argues that his offer to sell the domain name for $5,000 was not a bad faith attempt to “make money”. He also asserts that when he registered the disputed domain name, he intended to set up an online community.
For the reasons discussed above, the Panel does not find persuasive the Respondent’s arguments about how he intended to use the disputed domain name. There is simply not credible evidence in the record to support his assertions.
The Panel declines to decide whether the offer of $5,000 was a sign of bad faith, as the Complainant’s other arguments are sufficient to carry this third element. The Panel notes that the language of the Policy instructs UDRP panels to look for “circumstances indicating that [the Respondent has] registered or [has] 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 [the Respondent’s] documented out-of-pocket costs directly related to the domain name.” The word “primarily” is key to this analysis. The Complainant has not provided evidence that the primary purpose for registering the disputed domain name was to make money off of the Complainant in this way. It could very well be that the Respondent did, as he claims, intend to start an online community. We just do not know, based on this record. Similarly, as to whether $5,000 is in excess of out-of-pocket costs, the Panel is unable to make that determination. The UDRP calls for a look at documented out-of-pocket costs. The Respondent only did some rough arithmetic based on some assumptions to substantiate the expenses for maintaining a domain name for 16 years.
Under these facts, it is clear, on balance, that the Respondent was aware of the Complainant’s LEXUS mark when it registered the disputed domain name, and that he did so with bad faith. The Complainant’s LEXUS mark was well-known in 2001 when the disputed domain name was registered. The Respondent likewise used the disputed domain name in bad faith by using it to redirect to pay-per-click websites. This use of the disputed domain name was clearly an effort to gain commercially by using the Complainant’s mark. For these reasons, the Complainant has satisfied this third element of the UDRP. 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 disputed domain name be transferred to the Complainant.
Evan D. Brown
Sole Panelist
Date: May 4, 2018
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