The Complainant is Toyota Motor Sales, U.S.A., Inc., United States of America, represented by HOWREY LLP, United States of America.
The Respondent is RD Labs, United States of America.
2. The Domain Name and Registrar
The disputed domain name <toyota-usa.com> is registered with Wild West Domains, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 26, 2005. On October 28, 2005, the Center transmitted by email to Wild West Domains, Inc. a request for registrar verification in connection with the domain name at issue. On October 28, 2005, Wild West Domains, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 November 1, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was November 21, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 22, 2005.
The Center appointed Professor Justin Hughes as the sole panelist in this matter on December 5, 2005. 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 trademark TOYOTA has been used continuously in the United States since 1958, by the Complainant and/or its parent company, the Toyota Motor Corporation (TMC) of Japan. (Complaint paragraph 2) At present, TMC owns at least ten U.S. trademark registrations for TOYOTA for automobiles, trucks, engine oils and coolants, maintenance services for motor vehicles, various radio equipment related to motor vehicles, and Internet sales of vehicles [TOYOTA.COM]. The earliest of these trademark registrations dates from 1968. (Complaint paragraph 5 and Appendix D) There can be no serious doubt that TOYOTA is a famous trademark in the United States and has been for many decades.
Complainant is presently the exclusive importer and distributor of vehicles bearing the TOYOTA trademark in the continental United States, is licensed by TMC to use the TOYOTA trademarks in its distribution territory, and has a contractual obligation with TMC to act against infringements of the TOYOTA trademarks in its distribution territory (Complaint Paragraph 2-4 and Appendix C).
On March 9, 1999, Respondent registered the domain name <toyota-usa.com> (Complaint Appendix A). At present, the domain name <toyota-usa.com> resolves to the website at “www.islamicity.com”. (Complaint paragraph 11 and verified by the Panel, December 12, 2005). In the spring of 1999, Respondent also registered a number of domain names that include the trademarked names of other automobile brands, such as <isuzu-usa.com>, <mercedes-us.com>, and <ilexus.com> (Complaint Appendix H).
5. Parties’ Contentions
A. Complainant
The Complainant’s contentions, as they bear on resolution of this dispute, are discussed individually under section 6. A-C below.
B. Respondent
The Respondent did not reply to the Complainant’s contentions. Therefore, for purposes of this decision, the Panel accepts the Complainant’s contentions when supported by evidence, as shown above and below.
6. Discussion and Findings
To prevail in a UDRP action, Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:
(i) The domain name at issue is identical or confusingly similar to the trademark or service mark in which the complainant has rights; and
(ii) The Respondent has no right or legitimate interest in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
Because this dispute is between two parties who are United States citizens and would otherwise be subject to jurisdiction before American courts to resolve any disagreement regarding the trademark(s) and domain name in question, the Panel concludes that pursuant to the Rules, Paragraph 15(a), it is appropriate to apply rules and principles of American trademark law between the parties.
A. Identical or Confusingly Similar
While Complainant holds a family of federally registered trademarks for TOYOTA, Complainant does not contend that it has any registered trademark for TOYOTA-USA. Nonetheless, Respondent’s <toyota-usa.com> domain name is confusingly similar to the TOYOTA trademarks.
The addition of “-usa” in the domain name does not substantially help Respondent. UDRP panels have observed a wide range of prefixes and suffixes which, when added to a trademarked word, do not alter a finding of confusing similarity to the trademark. These include communication devices such as “800” or “www”. See, e.g. Multi-Local Media Corp. v. 800 Yellow Book, Inc., 813 F. Supp 199 (E.D.N.Y. 1993) (determining that “800” in 800-Y-E-L-L-O-W-B-O-O-K was a generic term for toll-free calling and did not change confusing similarity to YELLOW BOOK trademark); CSC Holdings, Inc. v. Elbridge Gagne,
WIPO Case No. D2003-0273 (July 15, 2000) (<wwwamctv.com> confusingly similar to the trademark AMC TV). These prefixes and suffixes can also include the names of competitor or other well-known trademarks that might create the confusing impression of a joint venture, cooperative project, or merger. See, e.g. Yellow Corporation v. MIC, WIPO Case No. D2003-0748 (December 6, 2003)(<yellowroadway.com> confusing to YELLOW trademark where “Roadway” was another major company in same freight transportation sector).
The addition of geographic prefixes and suffixes similarly should not alter a finding of confusing similarity with a trademark, particularly where the trademark owner operates in a variety of geographic areas and especially particularly where the prefix or suffix is a geographic designation in which the trademark holder is known to operate. See, e.g., PepsiCo, Inc. v. Kieran McGarry,
WIPO Case No. D2005-0629 (August 5, 2005) (domain name <pepsiusa.com> confusingly similar to trademark PEPSI); C. & A. Veltins GmbH & Co. KG v. Heller Highwater Inc.,
WIPO Case No. D2004-0466 (domain name <veltins-usa.com> confusingly similar to trademark VELTINS); Inter-IKEA Systems B.V. v. Evezon Co. Ltd., WIPO Case No. D2000-0437 (August 11, 2000) (domain name <ikea-korea.com> confusingly similar to IKEA trademark). This is because consumers commonly know that companies often operate through geographically designated subsidiaries, distributors, or franchisees. See, Ferrari S.p.A. v. ASDAQ.com,
WIPO Case No. D2004-0342 (June 25, 2004) (domain name<ferrari-usa.com> is confusingly similar [because] [t]he domain name suggests a connection with a US subsidiary or distributor of Ferrari”).
Accordingly, the first requirement of the Policy is met.
B. Rights or Legitimate Interests
According to the Complainant, Respondent is neither an authorized distributor of TOYOTA products nor licensed in any other way to use the TOYOTA trademark. (Complaint paragraph 10). Nor is Respondent commonly known by the domain name at issue. (Complaint paragraph 12)
The domain name <toyota-usa.com> currently directs Internet users to the website at “www.islamicity.com” (Complaint paragraph 11 and verified by the Panel, December 12, 2005). This is not a bona fide offering of goods or services under the UDRP. The Complaint spends a great deal of time establishing that “www.islamicity.com” has a “revenue-generating function” (Complaint paragraph 11), but this misunderstands what constitutes “a legitimate noncommercial or fair use of the domain name” under The Policy Paragraph 4(c)(iii). Redirection of <toyota-usa.com> to a website concerning a subject matter wholly different and unrelated to Toyota or the commercial sectors in which Toyota operates and without any reference, discussion, or criticism of Toyota does not constitute a legitimate “interest” in the domain name.
Accordingly, the second requirement of the Policy is met.
C. Registered and Used in Bad Faith
The third element that must be established under the UDRP is that the Respondent “registered and used” the domain name in “bad faith.” There is sufficient evidence of bad faith for the Complainant to have met its burden in this dispute.
First, registration of multiple domain names that are confusingly similar to established trademarks is evidence of bad faith. This is true under both American trademark law, see 15 U.S.C. §1125 (d)(B)(i)(VIII) (registration “of multiple domain names which the person knows are identical or confusingly similar to marks of others” is indicia of bad faith), and under the UDRP. Several UDRP panels have found that ownership of multiple domain names which comprise marks of unaffiliated, well known business entities suggests registration and use of those domain names in bad faith. Stella D’oro Biscuit Co., Inc. v. Swildens Inc.. WIPO Case No. D2000-0012 (February 17, 2000) (Respondent held more than 100 domain names confusingly similar to well-known trademarks). Respondent has registered multiple domain names for trademarks of unaffiliated, well-known business entities. (Complaint Appendix H).
While this is apparently not a case in which the Respondent has attempted to sell the domain name <toyota-usa.com> at a profit, Paragraph 4(b)(iv) states that there is bad faith if the Respondent has attempted “to attract, for commercial gain, internet users to [his/her] 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 [his/her] website or of a product or service on [his/her] website or location.” The Respondent has not provided any reason for having the <toyota-usa.com> domain name and, in the absence of such a reason, the Panel concludes that registration of the domain name was an intentional effort to gain Internet traffic from consumers who are initially, if only momentarily, confused into believing that <toyota-usa.com> will resolve to an official Toyota side.
Ample UDRP decisions establish that registration of multiple domain names confusingly similar to well-known trademarks and then use of those domain names to attract network traffic to a website completely unrelated to the trademarks constitutes bad faith. See Claire’s Stores, Inc., Claire’s Boutiques, Inc., CBI Distributing Corp. v. LaPorte Holdings,
WIPO Case No. D2005-0589(July 29, 2005) (bad faith established by multiple domain names based on well-known trademarks, all resolving to a search engine that provides sponsored links for businesses); LDLC.COM v. LaPorteHoldings,
WIPO Case No. D2005-0687 (August 8, 2005) (same); Media West-GSI, Inc., Gannett Satellite Information Network, Inc., and Gannett Co., Inc. v. Cupcake City and null John Zuccarini a/k/a John Zuccarini, WIPO Case No. D2001-0235 (April 17, 2001) (“Respondents registered confusingly similar domain names in order to attract the Complainants’ customers or interested parties to the Respondents’ websites at the disputed domain names in order to have them view the advertising the Respondent sells”)
The Panel concludes that the third requirement of the Policy is established.
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 <toyota-usa.com> be transferred to the Complainant.
____________________________________
Justin Hughes
Sole Panelist
Dated: December 13, 2005
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