Toyo Tire & Rubber Co., Ltd. V. SecureWhois, Inc.
Claim Number: FA0710001105006
Complainant is Toyo Tire & Rubber Co., Ltd. (“Complainant”), represented by Carla
Calcagno, of Holland & Knight LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <toyotire.com>, registered with Innerwise, Inc. d/b/a Itsyourdomain.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On November 14, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 4, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@toyotire.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <toyotire.com> domain name is confusingly similar to Complainant’s TOYO mark.
2. Respondent does not have any rights or legitimate interests in the <toyotire.com> domain name.
3. Respondent registered and used the <toyotire.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Toyo Tire & Rubber Co., Ltd, is a leading
tire company with more than 175 distributors in the
Respondent registered the disputed domain name, <toyotire.com>, on
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant registered the TOYO mark in
Complainant contends that the disputed domain name is
confusingly similar to Complainant’s TOYO mark.
Complainant contends that the disputed domain name, <toyotire.com>, includes the entirety of Complainant’s mark,
merely adding the generic term “tire,” which directly relates to Complainant’s
business, and the generic top-level domain (“gTLD”) “.com.” The Panel finds these alterations to an
otherwise unchanged mark to be minor and insufficient to distinguish the
disputed domain name from Complainant’s mark in any meaningful way for the
purposes of Policy ¶ 4(a)(i). See
Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum
Dec. 15, 2003) (finding that the addition of the term “assurance,” to the
complainant’s AIG mark failed to sufficiently differentiate the name from the
mark under Policy ¶ 4(a)(i) because the appended term related directly to the
complainant’s business); see also Space Imaging LLC v. Brownell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the
respondent’s domain name combines the complainant’s mark with a generic term
that has an obvious relationship to the complainant’s business); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Where Complainant makes a prima facie case under
Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete
evidence that it does possess rights to or legitimate interests in the disputed
domain name. The Panel finds that Complainant has established a prima facie case in the matter at
hand. See Do The Hustle, LLC v.
Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the
complainant has asserted that the respondent has no rights or legitimate
interests with respect to the domain name, it is incumbent on the respondent to
come forward with concrete evidence rebutting this assertion because this
information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent has no right or legitimate interest is sufficient to shift the
burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent has failed to submit a response to the
Complaint. Therefore, the Panel is
entitled to presume that Respondent lacks all rights and legitimate interests
in the disputed domain name. See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond
means that Respondent has not presented any circumstances that would promote
its rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
The disputed domain name, <toyotire.com>,
currently resolves to a website that contains links to Complainant’s goods and
the goods of Complainant’s competitors.
The Panel finds this to be neither a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633
(WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s
entire mark in domain names makes it difficult to infer a legitimate use); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also TM Acquisition Corp. v. Sign Guards, FA
132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s
diversionary use of the complainant’s marks to send Internet users to a website
which displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services).
Complainant contends that Respondent is not commonly known
by the <toyotire.com> domain
name and is not authorized to use Complainant’s TOYO mark in any way.
Nowhere in Respondent’s WHOIS information or elsewhere in the record does it
indicate that Respondent is or ever was commonly known by the <toyotire.com> domain name. Absent evidence suggesting otherwise, the
Panel finds that Respondent has not established rights to or legitimate
interests in the disputed domain name in accordance with Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that
Respondent is ‘commonly known by’ the disputed domain name” as one factor in
determining that Policy ¶ 4(c)(ii) does not apply); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no
rights or legitimate interests where (1) the respondent is not a licensee of
the complainant; (2) the complainant’s prior rights in the domain name precede
the respondent’s registration; (3) the respondent is not commonly known by the
domain name in question).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Respondent currently utilizes the disputed domain name, <toyotire.com>, to resolve to a website that
provides links to Complainant’s goods and the goods of Complainant’s competitors. The Panel finds such use to establish that
Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt.
Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use
of a confusingly similar domain name to attract Internet users to a website
containing commercial links to the websites of the complainant’s competitors
represented bad faith registration and use under Policy ¶ 4(b)(iii)); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum
Moreover, Complainant alleges that Respondent is benefiting from click-through fees associated with the links to Complainant and Complainant’s competitors. Internet users searching for Complainant’s TOYO mark may easily be confused by the disputed domain name, which results in additional traffic to Respondent’s websites. The Panel finds such confusion for commercial gain to be further evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See H-D Michigan, Inc. v. Petersons Auto., FA 135608 (Nat. Arb. Forum Jan. 8, 2003) (finding that the disputed domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv) through the respondent’s registration and use of the infringing domain name to intentionally attempt to attract Internet users to its fraudulent website by using the complainant’s famous marks and likeness); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting from click-through fees).
Complainant contends that Respondent’s registration of a
domain name incorporating its famous mark is further evidence of bad
faith. The Panel finds that the evidence in the record suggests that Respondent
has registered the disputed domain name with full knowledge of Complainant's
business and trademarks. The Panel finds
this conduct to be further evidence of bad faith registration and use pursuant
to Policy ¶ 4(a)(iii). See Ty Inc. v. Parvin, D2000-0688 (WIPO Nov.
9, 2000) (finding that the respondent’s registration and use of an identical
and/or confusingly similar domain name was in bad faith where the complainant’s
BEANIE BABIES mark was famous and the respondent should have been aware of it); see also Paws, Inc. v. Odie, FA 96206 (Nat. Arb.
Forum Jan. 8, 2001) (“Given the uniqueness and the extreme international
popularity of the [ODIE] mark, Respondent knew or should have known that
registering the domain name in question would infringe upon the Complainant's goodwill.”).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toyotire.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: December 11, 2007
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