WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd.
Case No. D2000-0802
1. The Parties
The complainant is Toyota Jidosha Kabushiki Kaishadoing business as Toyota Motor Corporationof 1, Toyota-cho, Toyota-shi, Aichi-ken, Japan. The respondent is S&S Enterprises Ltd of A 523 North Nazimabad, Karachi, Pakistan.
2. The Domain Names and Registrar
The disputed domain names are itoyota.com and itoyotas.com and the registrar in each case is Network Solutions Inc., of Herndon, Virginia, USA.
3. Procedural History
The complaint was received by the Center by email on July 17, 2000 and in hard copy on July 20, 2000. It was acknowledged on July 24, 2000, when registration details were sought from the registrar. On July 28, 2000 registration details were confirmed by the registrar. On July 31, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee; printed out copies of the disputed web pages and formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
The last day for a response was August 19, 2000. On August 2, 2000, by email, the respondent indicated a need for more time to file the response. The Center drew attention to Rule 5(d). After a further exchange of emails, in which the respondent was informed by the Center on August 7, 2000 that the Rules require either a showing by the respondent of exceptional circumstances warranting an extension of time or the consent of the complainant, the response was received by email on August 19, 2000, again by email on August 21, 2000, by fax on August 22, 2000 and in hard copy on August 28, 2000.
The respondent said the response was submitted under duress as all requests for additional time to allow competent counsel to review the complaint were denied. In its response, it requested additional time until Sept 30, when its Managing Director, Mr Shakeel Syed, will be back from travel, to respond in detail with its attorney along with requests for discovery and depositions from Toyota officials "to ascertain the extent of Toyota corporation's systematic attempt of restraint of trade and monopoly to sell used Toyota's over the Internet".
The response was acknowledged by the Center on August 21, 2000, when the Center sought from the complainant a curative filing to the complaint to comply with the mutual jurisdiction requirements under version 4.0 of the registrar’s Registration Agreement. This was filed by email on August 22, 2000 and in hard copy on August 23, 2000.
On August 23, 2000 the Center invited Alan L Limbury to serve as panelist. On August 24, 2000 Mr Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On August 29, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of September 11, 2000.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center’s assessment concerning the complaint’s compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; the response was filed within time and the administrative panel was properly constituted.
On September 5, 2000 the complainant sought to file a reply to the response.
4. Factual Background (uncontested facts)
The complainant has used the name and mark TOYOTA since at least 1958 throughout most of the world. Sales of TOYOTA automobiles, motor trucks and structural parts and accessories in the United States alone have exceeded Ninety Billion Dollars ($90,000,000,000) since 1958, and the complainant has spent substantial sums in advertising such goods during this extensive period of time.
The complainant is the owner of numerous United States registrations of the mark TOYOTA, covering a wide variety of goods and services, including the following:
(1) Registration No. 843,138 of the mark TOYOTA, for automobiles and motor trucks, which issued on January 30, 1968 and has been duly renewed;
(2) Registration No. 1,274,261 of the mark TOYOTA, for automobiles, motor trucks, forklift trucks, towing tractors, and structural parts for said goods, which issued on April 17, 1984 and has been duly renewed; and
(3) Registration No. 1,721,365 of the mark TOYOTA, for a wide variety of automotive structural parts, automotive accessories and other products, which issued on October 6, 1992 and has been duly renewed.
5. Parties’ Contentions
A. Complainant
Identity or confusing similarity
The domain names <itoyota.com> and <itoyotas.com> registered by the respondent are confusingly similar to the complainant’s mark TOYOTA, and are otherwise identical to the complainant’s mark TOYOTA except for the use of the generic letter "i" for Internet, and the letter "s" which is the plural form of the complainant’s mark TOYOTA.
Illegitimacy
The respondent has no rights or legitimate interests in respect of the domain names <itoyota.com> and <itoyotas.com>. The respondent is neither an authorized dealer or distributor of TOYOTA automobiles nor has it been licensed to use the mark TOYOTA by the complainant. Moreover, to the best of the complainant’s knowledge, the respondent has not made any demonstrable preparations to use the domain names <itoyota.com> and <itoyotas.com> or the marks ITOYOTA and ITOYOTAS other than registering the domain names.
The domain names <itoyota.com> and <itoyotas.com> do not resolve to active sites; accordingly, confused customers of the complainant are likely to be frustrated in their efforts to reach the complainant’s web site.
The respondent is not commonly known by the <itoyota.com> and <itoyotas.com> domain names and cannot claim that it is making a noncommercial or fair use of these domain names.
Bad faith
That the respondent registered and is using the domain names <itoyota.com> and <itoyotas.com> in bad faith is evidenced by the respondent’s pattern of registering multiple domain names which are identical or confusingly similar to famous and/or well-known marks, many of which are those of automobile manufacturers. A Whois database search conducted on July 14, 2000 proves the respondent is accumulating, collecting and hoarding numerous domain names of well known marks 1.
The respondent’s registration and use of the domain names <itoyota.com> and <itoyotas.com> in bad faith is further evidenced by the respondent’s knowledge of the complainant’s rights in the mark TOYOTA and its preventing the complainant from using domain names that incorporate its famous and well-known mark TOYOTA with the generic prefix "i" and the plural "s." The respondent’s actions have therefore unduly interfered with and disrupted the complainant’s ability to promote its own products and services.
The respondent registered the domain names <itoyota.com> and <itoyotas.com> in bad faith in much the same manner as was recently determined in Seiko Epson Corporation and Epson America, Inc. v. Distribution Purchasing & Logistics Corp. (Forum File No. 0003000094219) decided April 5, 2000. In Seiko Epson Corporation, , the National Arbitration Forum held that the domain name <epsonstore.com> was registered and being used in bad faith because of the following:
(a) That Respondent registered the domain name long after Complainant’s mark had been in use and was incontestable;
(b) that Respondent made no use, legitimate or otherwise, of the domain name and sought to profit from its registration of said domain name by trading on the goodwill associated with Complainant’s mark;
(c) That Respondent intended to finance its Web strategy through venture capital financing and an IPO which evidence Respondent’s motive to profit from its registration of domain names 2; and
(d) That Respondent had engaged in a pattern of registering domain names that infringe upon other entities marks.
As noted above, the complainant has used the mark TOYOTA substantially and continuously for over 42 years on products and services throughout most of the world. The significant goodwill and value of the mark TOYOTA is understood by the respondent and undoubtedly is what prompted its registration of the domain name. Given the fame of the mark TOYOTA, it is clear that the respondent registered the domain names <itoyota.com> and <itoyotas.com> with full knowledge of the complainant’s rights in the trademark and service mark TOYOTA, either for the purpose of selling or otherwise transferring the domain name registration to the complainant for valuable consideration in excess of the respondent’s out-of-pocket costs directly related to the domain names or to intentionally trade off of the complainant’s significant good will and value in the mark TOYOTA to divert traffic intended for the complainant. The respondent’s conduct also prevents the complainant from promoting its own products and services. The result is that Internet traffic intended for the complainant will be diverted to the respondent. The respondent’s use of the domain names <itoyota.com> and <itoyotas.com> clearly creates a likelihood of confusion with the complainant’s mark. Since the respondent is not licensed to use the mark TOYOTA in this manner, the complainant is harmed because its valuable trademark and reputation is being placed into the hands of the respondent over which it has no control. The public is harmed because it is likely to be confused as to the source of the goods/services that are or will be offered at <itoyota.com> and <itoyotas.com>.
B. Respondent
We accept the trademark "Toyota" and we deny any attempt to do business as Toyota or the illegal use of the Toyota trademark. We are not as alleged "Cyber Squatters" we are Site builders and Internet Architects operating on the internet. As such we are required to have multiple domain names where our customers sites can be placed. A short list of sites that we have developed are DaltonBooks.Com, Dreamfast.com, LivingBook.com News-USA.Com.
www.itoyota.Com and itoyotas.com are both operational sites. They clearly provide a clear link to Toyota for the people looking for Toyota.com. Appendix A is our main page from itoyota.com.
Our mission at itoyota.com is to develop a multi-finger classified ad search and classified ad posting engine for purchasing and selling of used Toyotas. The search engine will allow the user a single point of entry for posting ads which will then be posted on various internet databases specifically yahoo.com, recycler.com and autotrader.com. Similarly we will allow user to do multi-site search with user's query being translated appropriately to the various used car databases on the internet. We are in the business of providing purchasers of used Toyota automobiles a simple way of buying and selling used Toyotas on the internet.
The law on trademark does not in any way prevent purchasers of Toyota automobiles to advertise the name Toyota in either their advertising links or their websites. In addition we intend to provide repair and review links for Toyota automobiles specifically recall info and or user complaints that Toyota itself may not point out. It is our belief that Toyota is attempting to cause this information to be removed from iToyota.com and also Toyota is practicing restraint of trade by preventing the advertising of Toyota.
We believe the name itoyota.com qualifies us for fair use as permitted in Trademark law for the purpose of selling Used Toyotas on the internet.
We noticed that there are other names with Toyota such as usedtoyotas.com and toyotarepair.com which are operational informational sites and various other sites none of which purport to be Toyota and in fact most provide links to the main Toyota.Com site.
We are also working with certain Toyota new car dealers to provide links to their sites for people who wish to purchase new Toyotas.
Toyota motor corporation already has an active website at the appropriately named Toyota.com. We are in no way preventing people from accessing Toyota.com.
iToyota.Com is an internet address just as 300 Toyota way is a street address. For Toyota to decide that a business facility is conflicting with Toyota trademarks merely because its address is 300 Toyota way is ludicrous. Toyota is also a city in Japan. Would Toyota object if the city put up a website with Toyota in it? It is an extreme extension of the trademark law and which is not supported by any legal grounds.
Similarly by merely posting at address iToyota.com does not come into conflict with Toyota trademark intrinsically. If for example the site was impersonating Toyota or providing the impression that it is connected with Toyota or providing false information then it is a different matter. Therefore I urge the arbitrator to look at the contents of the site and see if there are any trademark violations. As is clear in the first page the site makes a clear statement that it not affiliated with Toyota and even offers a link to Toyota.Com
Toyota is deliberately using this trumped up allegations to do restraint of trade. The site clearly and unambiguously states that it is not connected with Toyota and has information regarding purchasing used Toyotas which may be sold by anyone and does not have to be authorized by Toyota as would be the case for a new car.
6. Discussion and Findings
Procedural issues
The respondent’s request for additional time until September 30, 2000 to seek discovery and depositions is rejected as those processes are beyond the scope of this proceeding. The Panel notes the respondent managed to provide, within time, a robust response and did not put forward any exceptional circumstances to warrant an extension of time, as required under Rule 5(d).
As to the complainant’s request that its reply be taken into account, except where sought by the panel under Rule 12, no provision is made in the Policy, the Rules or the Supplementary Rules for further submissions after the response. In J.P.Morgan v. Resource Marketing(Case D2000-0035) the distinguished 3-member panel said:
"A number of panel decisions have considered a Reply or Rebuttal without comment. See, e.g., Cedar Trade Associates, Inc. v. Ricks, ICANN Case No. FA0002000093633; Aero-Turbine, Inc. v. Mcayman, Ltd., ICANN Case No. FA000200093675; Travel Services, Inc. v. Tour COOP of Puerto Rico, ICANN Case No. FA0001000092524; Heelquick!, Inc. v. Goldman, et al., ICANN Case No. FA0001000092527. Because the distinguished panelists in these cases did not discuss this issue, the Panel in the present case does not have the benefit of their reasoning. However, looking at the Rules and the decision in Easyjet Airline Co., Ltd. v. Steggles, ICANN Case No. D2000-0024, the Panel is persuaded that documents, whether designated "replies" or "rebuttals," are not called for in the Rules. Paragraph 12 of the Rules provides for additional submissions only at the Panel’s request, in its sole discretion. The Panel is persuaded by the reasoning of Easyjet, supra, that such unrequested submissions should not be considered. Id. at paragraph 5,I."
Easyjet refused to admit the material simply because there is no express provision in the Rules.
With respect to those learned panelists, this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel’s general powers conferred by Rule 10, particularly having regard to the panel’s duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case. If a respondent raises matter which the complainant could not have been expected to have addressed in its complaint, admission of an uninvited reply may be warranted in the interests of fairness. It would be an odd result if the panel may request a reply in such circumstances under Rule 12 but must refuse an uninvited reply on the same topic, simply because there is no express provision for such a reply in the Rules.
The Rules should not be so interpreted as to require the panel to refuse unsolicited material and then invite the submission of the same material under Rule 12 in order to achieve fairness.
Accordingly, it is appropriate to consider the circumstances of each case before deciding whether to admit unsolicited additional submissions.
In this case the panel does not admit the reply because it carries the complainant’s case no further than the complaint and fairness to the parties does not warrant its admission.
Substantive issues
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(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 domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
Each of the domain names itoyota.com and itoyotas.com is virtually identical to the complainant’s registered trade mark TOYOTA. See Minnesota Mining & Mfg. Co. v. Taylor, 21 F. Supp. 2d 1003, 1005 (D. Minn. 1998) (finding "post-it.com" and "Post-It" to be the same); Interstellar Starship Servs. Ltd. v. Epix, Inc., 983 F. Supp. 1331, 1335 (D. Or. 1997) ("In the context of Internet use, [‘epix.com’] is the same mark as [‘EPIX’]"); Planned Parenthood Federation of America, Inc. v. Bucci, 1997 U.S. Dist. LEXIS 3338, No. 97-0629 (S.D.N.Y. Mar. 24, 1997) (concluding that "planned-parenthood.com" and "Planned Parenthood" were essentially identical), aff’d, 152 F.3d 920 (2d Cir. 1998), cert. denied, 119 S. Ct. 90 (1998).
Neither the generic prefix "i" (for "internet") nor the suffix ".com" nor (in the case of the name itoyotas.com) the plural suffix "s"detract from the overall impression of the dominant part of the name in each case, namely the well known trade mark TOYOTA, instantly recognizable around the world as denoting the goods of the complainant.
Virtual or essential identity is sufficient for the purposes of paragraph 4(a)(i) of the Policy. The panel finds the complainant has established both sufficient identity and confusing similarity.
Illegitimacy
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights or legitimate interests to the disputed domain name. The respondent does not raise any circumstances envisaged in sub-pararaphs (ii) or (iii). In relation to the domain name itoyota.com, the respondent points to its current web page as showing use of the domain name in connection with a marketplace for the supply of used (and possibly new) Toyota vehicles over the Internet.
Sub-paragraph 4(c)(i) provides that one circumstance demonstrating legitimacy is:
"before any notice to you 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;"
Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Marketing Group, Inc., AF-0104; Lumena s-ka so.o. v. Express Ventures Ltd., FA00030000094375 and Royal Bank of Canada v. Xross, AF-0133.
At the time of the complaint, neither domain name resolved into an active web site. The Center’s attempt to print out the two web pages on July 31, 2000 produced the same result. The response to the complaint included a web page for itoyota.com printed out on August 19, 2000. No attempt was made by the respondent to produce a web page print out for itoyotas.com.
The panel’s attempts on September 1, 2000 to print out the two web pages produced the same web page for itoyota.com as was contained in the response and, as happened to the complainant and to the Center, did not produce an active web page for itoyotas.com.
The panel is not satisfied either domain name was in use before notice to the respondent of the dispute, nor that the respondent has demonstrated preparations, before notice of the dispute, to use either name in connection with a bona fide offering of goods or services. It follows that the respondent’s explanation of its business plans for and current use of the site itoyota.com may be treated as having been devised after notice of this dispute in an endeavour to resist the complaint.
Nevertheless, the complainant has the onus of proof on all issues.
There is no evidence of the date of registration of the disputed domain names. That/those date/s must have been decades after the first use by the complainant of the trade mark TOYOTA. It is inconceivable that the respondent was not fully aware of the fame of the mark TOYOTA when registering the disputed domain names, especially having regard to the other famous automobile trade marks also registered by the respondent as domain names with similar prefixes and suffixes. The respondent does not dispute the complainant’s claim to fame.
None of the other automobile-related domain names registered by the respondent resolve to active web sites. The panel on September 8, 2000 found the following domain names registered by the respondent did not resolve to an active web site:- icaddilac.com; ivolkswagen.com; ihonda.com; ihondas.com; isubaru.com; idodge.com; iaudi.com; ibuick.com; imercedes.com; iplymouth.com; ijeeps.com; ichrysler.com; inissan.com and imazda.com.
itoyotas.com likewise did not resolve to an active web site. It thus appears the respondent has accumulated numerous similar domain names incorporating the famous trade marks of the makers of automobiles, including those here in dispute, but has made no active use of any of them prior to receiving notice of this dispute.
Under these circumstances, the panel finds the complainant to have established that the respondent has no rights or legitimate interests in either of the disputed domain names.
Bad faith
It is true that trade mark law does not prevent the use in advertising of another’s trade mark in connection with an offering to supply genuine goods of that trade mark owner. But trade mark infringement is not required to be shown under the Policy. Registration of a domain name goes further than merely correctly using in an advertisement the trade mark of another in connection with that other’s goods or services: it prevents the trade mark owner from reflecting that mark in a corresponding domain name. Registering a domain name for such a purpose shall be evidence of both bad faith registration and use (Policy, para. 4(b)(ii)) provided there has been a pattern of such conduct.
Here there is a clear pattern of registering famous trade marks in the automobile field, preceded by the generic "i" and, in some cases, succeeded by the plural "s". Prior to notice of this dispute no use has been made of any of them. Under these circumstances it is open to the panel to infer that they were all registered for the purpose of preventing the trade mark owners from reflecting their marks in corresponding domain names.
On the evidence, the respondent activated the itoyota.com web site only after receiving notice of this dispute (that being the only one of all those mentioned to be presently active) and has offered no explanation at all as to the name itoyotas.com. The response gives the impression that the itoyota.com site has been active for some time but the searches by the complainant and the Center show that this was not so. Such conduct enables the inference to be drawn more readily that the purpose of the respondent in registering the disputed domain names was to prevent the complainant from reflecting its marks in corresponding domain names, and that this was also the respondent’s purpose when registering the other domain names that have been mentioned.
The panel draws that inference and finds, pursuant to Policy para. 4 (b)(ii) that the complainant has proved that the respondent registered and has used the disputed domain names in bad faith.
7. Decision
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the domain names itoyota.com and itoyotas.com to be transferred to the complainant.
