The Complainant is Toyota Motor Sales, U.S.A. Inc., United States of America (“U.S”), represented by Phillips, Ryther & Winchester, United States of America.
The Respondent is Domain Administrator, Fundacion Privacy Services LTD, Panama. 2. The Domain Name(s) and Registrar(s)
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 24, 2019. On October 25, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 30, 2019, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint together with the amended 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 Respondent of the Complaint, and the proceedings commenced on November 5, 2019. In accordance with the Rules, paragraph 5, the due date for Response was November 25, 2019. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 26, 2019. The Center appointed Torsten Bettinger as the sole panelist in this matter on December 5, 2019. 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 Complainant is a wholly-owned subsidiary of Toyota Motor Corporation (“TMC”), a Japanese corporation, and is the exclusive importer and distributor of Toyota automobiles throughout the U.S. Complainant asserts, without contradiction, that it began using LEXUS in the U.S. in 1987 and obtained its first U.S. registration for LEXUS (Reg. No. 1,574,718) in 1990, for use in connection with automobiles and related goods and services and that its LEXUS vehicles are marketed in more than 70 countries and territories worldwide, including in the U.S. as of 2004. Respondent registered Complainant provided screenshots that shows that Respondent initially used the disputed domain name to host websites displaying search results for online searches such as “money order service near Seattle, WA” and “lexus” and to host websites displaying pay-per-click advertisements both related to LEXUS vehicles and completely unrelated. Complainant also provided evidence that in May 2017, Respondent was using the disputed domain name to resolve to the domain name Complainant states, without contradiction, that although Respondent’s name suggests that Respondent is a proxy or privacy service, Respondent is not a proxy service and has been the losing respondent in a number of UDRP proceedings involving well-known trademarks, including auto trademarks such as TOYOTA, FORD, and CHEVROLET. On August 28, 2019 Complainant’s counsel sent a demand letter to Respondent, demanding transfer of the disputed domain name. Respondent did not respond to this letter and a follow up email sent on September 4, 2019. 5. Parties’ Contentions A. Complainant With regard to the requirement of identity or confusing similarity between the trademark and the disputed domain name pursuant to paragraph 4(a)(i) of the Policy, the Complainant submits that numerous UDRP panels have recognized Complainant’s rights in LEXUS and the global renown of the mark and that the disputed domain name is confusingly similar to a trademark in which it has rights as the disputed domain name contains the Complainant’s trademark LEXUS in its entirety. Complainant argues that the combination of Complainant’s trademark LEXUS with the “geographic indicator “Gwinnett” leads consumers to believe that the disputed domain name refers to a website targeted toward consumers in Gwinnett County, Georgia. The Complainant refers to the panel decision in Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corp. v. Atma Estate,WIPO Case No. D2006-1231 which found that the “mere addition of the geographical term ‘Ukraine’ and a hyphen to the LEXUS mark does not grant distinctiveness to the domain name” as consumers are “likely to think that the contested domain name constitutes a variation of the trademark LEXUS owned by Complainant, which does business and has a base in Ukraine. With regard to Respondent having no rights or legitimate interests in the disputed domain name, Complainant submitted that: - Respondent is not known by the disputed domain name and has not been authorized by Complainant to use the LEXUS Marks in any way; - Respondent has no connection or affiliation with Complainant, and has never made any bona fide use of the disputed domain name; - neither Respondent’s use of the disputed domain name to resolve to websites displaying search results and pay-per-click advertisements nor the use to direct traffic to another auto manufacturer’s website or to a website providing sales leads to competing auto dealers is legitimate as such usages infringe and dilute Respondent’s exclusive trademark rights. Finally, with regard to the disputed domain name having been registered and being used in bad faith, Complainant argues that: - given the strength and fame of the LEXUS Marks, Respondent’s bad faith is established by the fact of registration alone; - the LEXUS mark falls within a select class of internationally strong marks that have become so famous that it is impossible for Respondent to claim that it was unaware of Complainant’s prior rights or has a legitimate interest in the domain nam that combine LEXUS with a geographic identifier like Gwinnett; - Respondent cannot possibly claim to have registered the disputed domain name without recognizing or intending to trade on the domain name’s trademark value; - Respondent’s use of the domain name to resolve to websites displaying advertisements related to Complainant’s trademark and to resolve directly to Complainant’s competitors’ official websites demonstrates bad faith pursuant to Policy 4(b)(iv); - Respondent is a notorious cyberpirate with a documented and long history of cyber infringement. B. Respondent Respondent did not reply to Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar As Complainant observes, numerous panel decisions under the Policy have recognized that Complainant has rights to the registered and famous 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), The disputed domain name is likely to be confused with the Complainant’s LEXUS marks. It is well established that the test of identity or confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the products for which the domain name is used or other marketing and use factors usually considered in trademark infringement cases. (See "WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 1.7.). In this case, the disputed domain name incorporates the Complainant’s trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety can be sufficient to establish identity or at least confusing similarity to a registered trademark. Moreover, it has been long established under the UDRP case law that the addition of geographic terms or elements such as “Gwinnett” will not generally distinguish a domain name from a complainant’s included trademark. Geographic terms are usually viewed as descriptive, potentially referring to locations where the Complainant’s goods or services may originate or be sold, and therefore such terms do not alter the overall impression created by the disputed domain name (see for example SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation,WIPO Case No. D2009-0308; Toyota Motor Sales, U.S.A., Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd.,WIPO Case No. D2017-2392). Furthermore, it is well accepted under the UDRP case law that the generic Top-Level Domain (“gTLD”) designation such as “.com”, “.net” “.org” is not to be taken into account when assessing the issue of identity and confusing similarity, except in certain cases where the applicable top-level suffix may itself form part of the relevant trademark (see "WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0") section 1.11. Accordingly, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i). B. Rights or Legitimate Interests A respondent may establish its rights or legitimate interests in the disputed domain name, among other circumstances, by showing any of the following elements: “(i) before any notice to you [ Respondent] of the dispute, your 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; or (ii) you [ Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you [ Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name because Respondent is not known by the disputed domain name, has not been authorized by Complainant to use the LEXUS mark in any way, has no connection or affiliation with Complainant, and has never made any bona fide use of the disputed domain name. Complainant provided evidence that the disputed domain name resolved to a pay-per-click website displaying pay-per-click advertisements both related to LEXUS vehicles and completely unrelated, as well as to an auto information and lead referral website, which provides consumers with information regarding new and used automobiles, and to websites of competitors of Complainant. These assertions are sufficient to establish a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent’s pay-per-click ads, whether targeting Complainant, Complainant’s competitors, or unrelated services, and redirection of the disputed domain name to websites of Complainant’s competitors are not legitimate usages. (See, e.g., Playboy Enterprises International Inc. v. Global Media Domain Trust,WIPO Case No. D2006-1543 (holding that the respondent has no rights or legitimate interests where the disputed domain name was used to display advertising to online sites offered by competitors of the complainant). Where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the disputed domain name. If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1. Respondent chose not to contest Complainant’s allegations and has failed to come forward with any evidence to refute the Complainant’s prima facie showing that Respondent lacks rights or legitimate interests. Respondent did not refute these allegations and also failed to provide any evidence of actual or contemplated good-faith use. Accordingly, in light of Complainant’s prima facie case, unrebutted by Respondent, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name concludes that Complainant has satisfied the second element of the Policy set forth by paragraph 4(a)(ii). C. Registered and Used in Bad Faith Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling, renting or otherwise transferring the disputed domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the disputed domain name; or (ii) The Respondent has registered the disputed domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or (iii) The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the disputed domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location. Complainant holds trademark registrations for LEXUS in the United States since at least 1990. Further Complainant’s trademark LEXUS is distinctive and was well-known prior to the registration of the disputed domain name. This and the fact that Respondent has used the domain name to host advertisements referring to Complainant makes it inconceivable that that Respondent coincidentally selected the disputed domain name without any knowledge of Complainant and its LEXUS trademarks. Additionally, there is strong evidence that Respondent has engaged in a massive pattern of cybersquatting. The Panel did not review all of the UDRP decisions identified by Complainant in which the Respondent was the respondent, but reviewed a sample sufficiently large to find that Respondent is indeed responsible for a pattern of cybersquatting. The Panel therefore concludes that Respondent registered the disputed domain name in bad faith. Complainant also provided evidence that Respondent used the disputed domain name to resolve to pay-per-click ads, targeting Complainant, Complainant’s competitors, or unrelated services. Such use of the disputed domain name was clearly an effort to gain commercially by using the Complainant’s mark. The Panel therefore concludes that Respondent, is using without permission Complainant’s trademark as part of the disputed domain name in order to redirect Internet users looking for Complainant’s goods to its website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. For the above, the Panel finds that Respondent’s registration and use is a clear-cut case of cybersquatting and that therefore Complainant has also satisfied its burden on 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 disputed domain name Torsten Bettinger
Sole Panelist
Date: December 19, 2019
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