national arbitration forum

 

DECISION

 

Toyota Motor Sales, U.S.A., Inc. v. Traverito Traverito

Claim Number: FA0711001112557

 

PARTIES

Complainant is Toyota Motor Sales, U.S.A. (“Complainant”), represented by Victor K. Sapphire of Connolly Bove Lodge & Hutz LLP, 333 S. Grand Avenue, Suite 2300, Los Angeles, CA, 90071.  Respondent is Traverito Traverito (“Respondent”), Crcega 329 4 planta, Barcelona, AL, 08037 ES.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toyotaracing.com>, registered with Moniker Online Services, Inc.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically November 21, 2007; the National Arbitration Forum received a hard copy of the Complaint November 26, 2007.

 

On November 27, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <toyotaracing.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name.  Moniker Online Services, Inc. verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 28, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 18, 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@toyotaracing.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <toyotaracing.com>, is confusingly similar to Complainant’s TOYOTA mark.

 

2.      Respondent has no rights to or legitimate interests in the <toyotaracing.com> domain name.

 

3.      Respondent registered and used the <toyotaracing.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Toyota Motor Sales, U.S.A., Inc. is the exclusive importer and distributor of Toyota automobiles throughout the United States.  Complainant is granted rights to use the TOYOTA mark from Toyota Motor Corporation.  Along with the rights to use the mark, Complainant is also obligated to monitor the distribution territory for any trademark infringement.  The TOYOTA mark was registered with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 843,138 issued January 30, 1968).

 

Respondent registered the <toyotaracing.com> domain name May 1, 2002.  The disputed domain name previously resolved to a website displaying third-party links attempting to directly compete with Complainant.  Currently the <toyotaracing.com> domain name redirects to a website that is disabled and displays the message, “Blocked by Advertiser.”

 

DISCUSSION

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."

 

Given 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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

By showing proof of registering the TOYOTA mark with the USPTO, Complainant met its burden under Policy ¶ 4(a)(i) to establish rights in the mark.  See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). 

 

The disputed domain name that Respondent registered, <toyotaracing.com>, is confusingly similar to Complainant’s mark, because it incorporates Complainant’s entire TOYOTA mark along with the descriptive term “racing,” and then adds the generic top-level domain (“gTLD”) “.com.”  The Panel finds these additions are not sufficent to differentiate the disputed domain name from Complainant’s mark under Policy ¶ 4(a)(i).  See L.L. Bean, Inc. v. ShopStarNetwork, FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic word “shop” with the complainant’s registered mark “llbean” does not circumvent the complainant’s rights in the mark nor avoid the confusing similarity aspect of the ICANN Policy); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is…without legal significance since use of a gTLD is required of domain name registrants….").

 

The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name.  This shifts the burden to Respondent to show rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent.  In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also 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”).

 

Respondent did not respond to the Complaint, which permits the Panel to presume that Respondent lacks rights and legitimate interests in the <toyotaracing.com> domain name.  See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint.”); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding it appropriate for the panel to draw adverse inferences from the respondent’s failure to reply to the complaint).

 

However, this Panel examines the evidence as well to determine if  the record suggests that Respondent has rights or legitimate interests under Policy ¶ 4(c). The evidence contains nothing to suggest that Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).  The WHOIS information contains no evidence that Respondent is commonly known by the <toyotaracing.com> domain name.  Respondent is not licensed or authorized to use the TOYOTA mark.  The Panel finds that Respondent has no rights or legitimate interests to the disputed domain name under 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 Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).

 

The <toyotaracing.com> domain name previously resolved to a website having third-party links offering products that sought to compete in the marketplace with Complainant.  The Panel finds that such use 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to redirect Internet users to a financial services website, which competed with the complainant, was not a bona fide offering of goods or services).  

 

The disputed domain name is not currently in active use, displaying a website that is disabled and displays the message: “Blocked by Advertiser.”  Because no evidence suggests that Respondent is using the disputed domain name, the Panel finds that Respondent has not made a bona fide offering of goods or services under Policy ¶ 4(c)(i) and has not made a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way).

 

The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent’s non-active use of the disputed domain name implies bad faith registration and use under Policy ¶ 4(a)(iii).  See Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that non-active use of a domain name permits an inference of registration and use in bad faith); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).

 

Respondent previously used the <toyotaracing.com> domain name to resolve to a website with third-party links offering products that sought to compete directly with Complainant.  The Panel finds this use of the disputed domain name is likely to disrupt Complainant’s business by diverting customers to Complainant’s competitors.  Therefore, the Panel finds that Respondent’s registration and use of the <toyotaracing.com> domain name supports findings of bad faith pursuant to Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Svcs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) when the disputed domain name resolved to a website that displayed commercial links to the websites of the complainant’s competitors); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because the respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Complainant also contends that Respondent used the <toyotaracing.com> domain name for financial gain by advertising links to competing services, and by commercially benefiting from the similarity between Complainant’s mark and the disputed domain name.  The Panel finds that the similarity between the disputed domain name, the corresponding website, and the TOYOTA mark is likely to create confusion as to Complainant’s source, sponsorship, affiliation, or endorsement of the website that resolves from the disputed domain name.  Such conduct supports findings that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).  See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat. Arb. Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”).

 

The Panel finds that Complainant satisfied ICANN Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <toyotaracing.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: January 2, 2008.

 

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