Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation v. Double Time Jazz a/k/a Jamey Aebersold
Claim Number: FA0205000113316
Complainant is Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation, Toyota Aichi, JAPAN (“Complainant”) represented by John F. Hornick, of Finnegan, Henderson, Farabow, Garrett & Dunner LLP. Respondent is Double Time Jazz a/k/a Jamey Aebersold, Floyds Knobs, IN, USA (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <TOYOTAF1.COM>, registered with Register.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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on May 10, 2002; the Forum received a hard copy of the Complaint on May 13, 2002.
On May 13, 2002, Register.com confirmed by e-mail to the Forum that the domain name <toyotaf1.com> is registered with Register.com and that the Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 13, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 3, 2002 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 firstname.lastname@example.org by e-mail.
A late Response was received and determined to be in noncompliance with ICANN Rule 5(b)(vii) on June 4, 2002. On June 4, 2002, a further e-mailed submission was received from Respondent, which did not substantively address Complainant’s claim. The Panel decides to consider all of Respondent’s submissions under the provisions of Rule 10(b) of the Rules for Uniform Domain Name Dispute Resolution Policy.
Complainant submitted a timely Additional Submission pursuant to Forum Supplemental Rule 7 on June 10, 2002.
On June 26, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation (TMC) has its principal office in Japan. TMC owns numerous subsidiaries, including Toyota Motorsports GmbH in Germany and Toyota Racing Development U.S.A., Inc. in the United States.
Traded on the New York Stock Exchange, TMC is a global leader in the development and manufacturing of passenger vehicles, work vehicles, racecars, and a wide variety of other products related to automobiles, including promotional goods such as clothing.
TMC’s motor vehicle products are currently sold by TMC directly and through TMC’s network of authorized partners in over 200 countries.
TMC showcases its award-winning products and services, including Formula One racing teams, at its <TOYOTA-F1.COM>, <TOYOTA.COM>, <TOYOTAMOTORSPORTS.COM>, and <TRDUSA.COM> websites.
Complainant has continuously used TOYOTA as a trade name, trademark, and service mark from at least 1958 to present. TMC owns registrations for the TOYOTA mark in almost 200 countries around the world, including the United States. Complainant owns a family of TOYOTA marks that consist of the word TOYOTA in association with other words.
Respondent had actual knowledge of the TOYOTA mark when he registered the Domain Name. On February 19, 2002, Complainant received an e-mail from Respondent advising Complainant that Respondent was owner of the Domain Name and inquiring whether Respondent could become an authorized dealer of TOYOTA branded clothes to promote TMC’s Formula One racing team. Respondent’s request was denied by TMC.
Respondent misappropriated Complainant’s goodwill when he purchased the previously registered domain name <TOYOTAF1.COM>, which is virtually identical to and confusingly similar to Complainant’s famous TOYOTA mark.
Without permission from TMC, Respondent launched an active website featuring the TOYOTA mark and falsely claiming that Respondent would soon be selling authorized TOYOTA branded goods relating to Formula One racing.
Respondent is not and has never been an authorized TOYOTA dealer.
Respondent’s registration and use of the Domain Name are likely to cause confusion and to deceive consumers into mistakenly believing that Respondent’s <TOYOTAF1.COM> website and associated products and services are offered, authorized or sponsored by Complainant.
Because Respondent’s registration and use of the Domain Name improperly trades on Complainant’s goodwill and infringes Complainant’s rights in its TOYOTA mark, Respondent is not using and cannot demonstrate an intent to use the Domain Name in connection with a bona fide offering of goods or services.
Respondent is not and has not been commonly known by the Domain Name.
Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Respondent registered and uses the Domain Name primarily for the purpose of disrupting Complainant’s business.
Respondent knew of Complainant’s trademark and its unauthorized use for commercial gain is evidence of bad faith.
Respondent is Jamey Aebersold of Floyds Knobs, Indiana, who registered <TOYOTAF1.COM> on November 30, 2001, under the name “Double-Time Jazz Jamey Aebersold.”
Respondent is a loyal fan of Toyota since 1983. Respondent has, since that time, purchased Toyota motor vehicles for the purpose of racing in the S.C.C.A. autocrossing events across the country. Respondent has won a number of racing events using Toyota vehicles.
When Respondent began racing in the Pro-Solo series he signed up with Toyota Motor Sport’s contingency program to be one of the contract drivers eligible for awards at each of the events. This permitted Respondent to purchase directly from TRD (Toyota Racing Development) their entire line of performance parts and apparel.
Respondent purchased the domain name, <TOYOTAF1.COM> from an individual who had registered it. The initial intent was to set up a public forum for discussion of data acquisition, Toyota’s entry into Formula 1, Autocrossing and many other forms of racing.
During the month of January 2002, Respondent thought it would be nice to offer Toyota F1 apparel on a website. Respondent contacted by e-mail various employees of Complainant submitting his request to be granted a license to distribute the Toyota line of apparel.
After a number of such messages, Complainant informed Respondent that “TMC will not be granting you or your company a license and that there will be no negotiations for such a license.”
Respondent assumed that having seen the domain name offered for sale for approximately 6 months time by an individual in Europe, that TMC had no interest in the name. The name was purchased on the open market via Afternic.com and it was an open bid action in which TMC could have participated if it had any interest in the domain name.
Three days after being informed by TMC that there would be no license granted, Respondent changed the website to reflect a public forum for discussion. There is nothing commercial about the website.
Respondent is making a noncommercial or fair use of the domain name. Respondent provides a link to the official Toyota F1 Racing site located at <Toyota-F1.com>.
C. Additional Submissions
Complainant in its Reply, contends that Respondent is not an authorized Toyota reseller, that even if he were a reseller, that would not give Respondent a legitimate interest in the domain name, that Complainant has no obligation to register all variations of its marks, and that Respondent had no intention of creating a public forum.
1. Complainant is a well-known organization that operates on a worldwide basis in the sale of motor vehicles and related products, including clothing. Complainant is involved in motor vehicle racing by its sale of vehicles suited for that purpose, components and clothing associated with Toyota racing.
2. Complainant has operated as TOYOTA for many years and owns trademark and service mark registrations in the United States and in a large number of countries for the mark, TOYOTA.
3. Complainant markets its products either directly or through authorized license agreements with third parties.
4. Complainant operates a website at <TOYOTA-F1.COM> to promote its racing interests.
5. Respondent is a racecar driver who elects to use Toyota motor vehicles in the racing events in which he competes.
6. Respondent purchased the domain name, <TOYOTAF1.COM> from another and on or about November 30, 2001, registered it in his name.
7. Respondent thereafter contacted Complainant with a request that Respondent be made an authorized seller of Complainant’s racing clothing which was to be sold through the <TOYOTAF1.COM> website.
8. After a number of e-mail correspondences between Respondent and employees of Complainant, Complainant rejected Respondent’s request for a license.
9. During this time, Respondent was operating the website at <TOYOTAF1.COM> with the information contained therein that Respondent was “currently in talks with Toyota Motor Sports to be a licensed distributor of their Toyota racir…click here if you would like to be notified by e-mail when these negotiations are finalized and we have Toyota F1 for sale…The official Toyota F1 Racing site is located here Toyota-F1.com.”
10. On March 15, 2002, Counsel for Complainant served Respondent with a cease and desist letter demanding a discontinuance of any and all use of the word Toyota and of <TOYOTAF1.COM> and to transfer the domain name to Complainant.
11. Respondent received the cease and desist letter and sent his answer to Complainant.
12. At some later time, Respondent changed the <TOYOTAF1.COM> to reflect that the website was a “public forum” operation.
13. The domain name is confusingly similar to the Complainant’s mark, TOYOTA.
14. Respondent has no rights or legitimate interests in the domain name, <TOYOTAF1.COM>.
15. Respondent registered and used the domain name in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 and/or Confusingly Similar
Complainant has rights in the mark, TOYOTA, by reason of the long use of the mark in commerce and the numerous trademark registrations of the mark in the United States and other countries.
Complainant contends that the domain name <TOYOTAF1.COM> is confusingly similar to Complainant’s valuable and famous federally registered trademark TOYOTA. Respondent’s addition, it is contended, of the generic term “F1”(which stands for “Formula One” racing) to the disputed Domain Name does not provide a basis for distinguishing it from Complainant’s TOYOTA mark. Respondent fails to dispute the confusing similarity of the mark and domain name. Respondent admits that he purchased the domain name for the specific purpose that it be associated with Complainant’s products and services. Respondent states “Our initial intent when we bought the domain name, <TOYOTAF1.COM>, was to set up a public forum for discussion of data acquisition, Toyota’s entry into Formula 1, Autocrossing and many other forms of racing.” Respondent stated in a letter to Complainant’s counsel as follows. “Back in June of 2001 I found out that Toyota would be entering into the Formula 1 racing scene in 2002 …I was thrilled with the idea that Toyota would be entering Formula 1…I immediately went out to <TOYOTAF1.COM>, being the logical name the team would have for their website, and to my surprise I see a nice flash animation with the words ToyotaF1 and a note that this domain name was for sale. I then did a search for Toyota and F1 and found the TMC site to be located at Toyota-F1.com.” Respondent chose <TOYOTAF1.COM> to be identical or confusingly similar to Complainant’s mark. Respondent was correct in his choice. The domain name fully incorporates the entire mark of Complainant and the term “F1” which has a direct connection to Complainant’s business. That constitutes confusing similarity at the least. see Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000). see also Brown & Bigelow, Inc. v. Rodela, FA96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name was confusingly similar to Complainant’s Hoyle mark, and that the addition of “casino”, a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
Complainant prevails on this issue.
Rights or Legitimate Interests
Complainant shows that it has not authorized Respondent to use the TOYOTA mark. No contention is made by either Complainant or Respondent that Respondent is the owner of any trade or service mark that is identical to the domain name. Neither party contends that Respondent has ever been known as TOYOTA or TOYOTAF1.COM. Complainant shows that it has exclusive right to use the mark TOYOTA. As result of Complainant’s showing, and Respondent’s apparent lack of rights and legitimate interests in the domain name, the burden must shift to Respondent to demonstrate rights and legitimate interests in the domain name. see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000).
Respondent may demonstrate his rights and legitimate interests by any of the methods set out in Paragraph 4(c) of the Policy.
Paragraph 4(c)(i) of the Policy permits a Respondent to show that before any notice of the dispute, his 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 and services was made. In this case it seems clear that Respondent registered the disputed domain name for the purpose of selling Complainant’s products under license to do so that Respondent hoped to receive after registration. A number of e-mails and letters are included in the pleadings illustrating Respondent’s attempts to get a license to sell Complainant’s clothing relating to Formula 1 racing and his ultimate failure to acquire the desired license from Complainant. Even an actual licensee to sell products has no claim to the right to register a domain name consisting of the licensor’s trademark. see Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001). “That is especially true if the domain name suggests a broader relationship than in fact is the case.” see R.T. Quaife Engineering, Ltd. v. Luton, D2000-1201 (WIPO Nov. 14, 2000).
A Respondent cannot use Complainant’s trademark in a domain name when the Respondent, even though selling Complainant’s goods, has no permission to use the trademark as the domain name. see Avon Products, Inc. v. Lee, D2001-0272 (WIPO Apr. 12, 2001). The use of the domain name under such circumstances is not in connection with a bona fide offering of goods or services. see Caterpillar Inc. v. off Road Equipment Parts, FA95497 (Nat. Arb. Forum Oct. 10, 2000).
Respondent has never been commonly known by the domain name so the elements of Paragraph 4(c)(ii) are of no significance in this dispute.
Paragraph 4(c)(iii) permits Respondent to show a 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, as proof of legitimate rights and interests. Respondent attempts to prove the elements of this Paragraph by his statement that when he registered the domain name, he intended it as a “public forum” site. It was only later, Respondent contends, that he decided the site should be used as a site for commercial gain selling Complainant’s goods. No proof of this intention is offered except the bare allegation of Respondent. No web page is offered in evidence to support this contention. No affidavit is offered. The only evidence is offered by Complainant in the form of a copy of a web page dated after the cease and desist letter showing that the web site was intended for the sale of Complainant’s products after the license was obtained from Complainant allowing the sales. A second copy of the web page at <TOYOTAF1.COM> dated some weeks after the cease and desist letter was received by Respondent is attached as an exhibit to the Complaint. It illustrated Respondent’s intention to convert the site to a “public forum” site, presumably for noncommercial purposes. When a Respondent means to prove his rights and legitimate interests in a disputed domain name he should present “concrete evidence.” “Concrete evidence constitutes more than mere personal assertions. Just as a Panel should require a complainant to establish by means other than mere bald assertions that it is the owner of registered marks, so should the Panel require that a respondent come forward with concrete evidence that the assertions made in the response are true. Evidence in the form of documents or third party declarations should be furnished in support of such assertions.” see Do The Hustle, LLC. v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000). Compare this case with Twentieth Century Fox Film Corp. v. Bernstein, FA102962 (Nat. Arb. Forum Feb. 27, 2002) which found that Respondent’s assertion that she registered the domain name for a specific purpose, without evidentiary support, was insufficient to establish that she had rights or legitimate interests in respect to the domain name at issue.
Nothing in the evidence presented shows that Respondent has rights and legitimate interests in the domain name, <TOYOTAF1.COM>.
Registration and Use in Bad Faith
Respondent freely admits that he had knowledge of Complainant’s marks at the time of registration of the disputed domain name. He says he sought out the domain name because it was the obvious domain name to fit Complainant’s Formula 1 products and interests. Registering and using the disputed domain name despite knowledge of another’s rights in the mark evidences bad faith under Policy Paragraph 4(a)(iii). see Samsonite Corp. v. Colony Holding, FA94313 (Nat. Arb. Forum Apr. 17, 2000). See also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) that held that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith. see also Victoria’s Secret v. Hardin, FA96694 (Nat. Arb. Forum Mar. 31, 2001). This Panel finds that intentionally registering a domain name that infringes upon a legitimate trademark of another, without the permission of the trademark holder, in the hope that the trademark holder will thereafter somehow accept the registration as acceptable, is registration in bad faith. That is what Respondent did in this case.
The evidence leads to the conclusion that the domain name was initially registered with an intention to produce commercial gain. It was thereafter used in that attempted purpose until the Complainant made it clear by its refusal to grant a license to Respondent that the purpose was impossible. The cease and desist letter demanding that Respondent discontinue use of the Complainant’s mark concluded Complainant’s rejection of Respondent’s purpose. To permit Respondent to thereafter convert the web site to a “public forum” web site presumably operated on a noncommercial basis would frustrate the purpose of the Policy and Rules. A Respondent cannot be permitted, after committing acts in violation of the provisions of the Policy and Rules, to convert the use of the disputed domain name, after the fact, to a different purpose and evade the earlier improper conduct. The Panel finds that the conversion of the disputed domain name web site to a “public forum” does not erase the earlier bad faith registration and use, under the facts and circumstances of this case, so that Respondent can retain the disputed domain name which infringes on the trademark of the Complainant.
IT IS DECIDED THAT THE DOMAIN NAME, <TOYOTAF1.COM>, NOW REGISTERED TO RESPONDENT, DOUBLE TIME JAZZ AKA JAMEY AEBERSOLD, BE TRANSFERRED TO THE COMPLAINANT, TOYOTA JIDOSHA KABUSHIKI KAISHA T/A TOYOTA MOTOR CORPORATION.
Tyrus R. Atkinson, Jr., Panelist
Dated: July 10, 2002
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