Toyota Motor Sales U.S.A. Inc. v. The Car
Openers Inc.
Claim Number: FA0811001233077
PARTIES
Complainant is Toyota Motor Sales U.S.A. Inc. (“Complainant”), represented by Christine L Lofgren, of Toyota Motor Sales U.S.A. Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexuskeys.com>,
registered with GoDaddy.com, Inc.
PANEL
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.
James A. Carmody, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on November 7, 2008; the National Arbitration Forum received a
hard copy of the Complaint on November 14, 2008.
On November 7, 2008, GoDaddy.com, Inc. confirmed by e-mail to the
National Arbitration Forum that the <lexuskeys.com>
domain name is registered with GoDaddy.com, Inc. and that the Respondent is the
current registrant of the name.
GoDaddy.com, Inc. has verified that Respondent is bound by the
GoDaddy.com, Inc. 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 November 19, 2008, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of December 9, 2008 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@lexuskeys.com by e-mail.
A timely Response was received and determined to be complete on
December 9, 2008.
An Additional Submission was received from Complainant on December 12,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
An Additional Submission was received from Respondent on December 16,
2008, which was determined to be timely and complete under the National
Arbitration Forum’s Supplemental Rule 7.
On December 17, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant makes the following assertions:
1. Respondent’s <lexuskeys.com>, the domain name at issue, is identical or confusingly similar to Complainant’s LEXUS mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent makes the following assertions:
1. Respondent does not dispute that the domain name at issue is identical or confusingly similar to Complainant’s mark.
2. Respondent claims rights and legitimate interests in the domain name at issue.
3. Respondent asserts that it did not register or use the domain name at issue in bad faith.
C. Additional Submissions
Each of the parties submitted an Additional Submission which
essentially restated positions made in the initial pleading. The Panel considered them nonetheless.
FINDINGS
Complainant has the right to use
the name and mark LEXUS in the
(1) Registration No. 1,574,718 of the mark LEXUS for “automobiles,” which issued January 2, 1990;
(2) Registration No. 1,675,339 of the mark LEXUS for “repair and maintenance services and automotive vehicle leasing services,” which issued February 11, 1992;
(3) Registration No. 1,739,201 of the mark LEXUS for “financing the purchasing and leasing of automobiles,” which issued December 8, 1992;
(4) Registration No. 1,814,753 for LEXUS and Design for “cellular telephones,” which issued January 4, 1994; and
(5) Registration No. 1,834,147 for LEXUS and Design for “key rings, sunglasses, automatic units for storing and dialing phone numbers, binoculars, compact disc holders, clocks and world time clocks, ballpoint pens, umbrellas and attaché cases, non-metal key rings and key chains, drinking cups, jackets, sweat shirts, caps, sweaters, polo shirts, sport shirts, pullovers, windbreakers, visors, golf shirts, crewnecks, golf balls, golf bags, golf bag travel covers, head covers for golf clubs, and golf ball spotters,” which issued May 3, 1994, among other registrations.
Complainant has not licensed or otherwise authorized Respondent to use the LEXUS mark as a trademark or <lexuskeys.com> and Respondent is not commonly known by this domain. Owing to contacts between the parties prior to this proceeding, it appears that Respondent quoted US $49,000 as a charge to transfer the domain name at issue to Complainant.
Respondent defends on the grounds that it has been using the domain since February of 2004 and for a protracted period before receiving objections from Complainant. It further maintains that this use is not in bad faith and the web page associated with the domain provides assistance to the Lexus automobile-owning public. Finally, Respondent suggests that it was essentially tricked into asking US $49,000 for transfer of the domain.
DISCUSSION
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.
Complainant has rights in the LEXUS mark (Reg. No. 1,574,718 issued
January 2, 1990), which has been registered with the United States Patent and
Trademark Office (“USPTO”). This constitutes
sufficient evidence of Complainant’s rights in the mark under Policy ¶
4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT
mark through registration of the mark with the USPTO.”); see also Honeywell Int’l Inc.
v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s
numerous registrations for its HONEYWELL mark throughout the world are
sufficient to establish Complainant’s rights in the HONEYWELL mark under the
Policy ¶ 4(a)(i).”).
The <lexuskeys.com>
domain name is confusingly similar to Complainant’s LEXUS mark, despite the
additions of the descriptive term “keys” and the generic top-level domain
“.com.” Complainant asserts that the
word “keys” describes the implements distributed by Complainant for use with the
purchase of a LEXUS vehicle. The
additions of the word “keys” and the gTLD is insufficient to render the
disputed domain name meaningfully distinct, and it is therefore confusingly
similar to Complainant’s mark under Policy ¶ 4(a)(i). See
Isleworth Land Co. v. Lost in Space,
SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established
principle that generic top-level domains are irrelevant when conducting a
Policy ¶ 4(a)(i) analysis.”); see also
Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006)
(finding that the addition of the generic term “finance,” which described the
complainant’s financial services business, as well as a gTLD, did not
sufficiently distinguish the respondent’s disputed domain name from the
complainant’s mark under Policy ¶ 4(a)(i)).
While
Respondent contends that the disputed domain name is comprised of common, descriptive terms and as such
cannot be found to be confusingly similar to Complainant’s mark, such a
determination is not necessary under Policy ¶ 4(a)(i) as this portion of the
Policy considers only whether Complainant has rights in the mark and whether
the disputed domain name is identical or confusingly similar to Complainant’s
mark. See Vance Int’l, Inc. v. Abend, FA 970871
(Nat. Arb. Forum June 7, 2007) (finding that because the complainant had
received a trademark registration for its VANCE mark, the respondent’s argument
that the term was generic failed under Policy ¶ 4(a)(i)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA
915206 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s argument that each
individual word in the mark is unprotectable and therefore the overall mark is
unprotectable is at odds with the anti-dissection principle of trademark
law.”).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Complainant must first make a prima
facie case that Respondent lacks rights and legitimate interests in the
disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to
Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum
Aug. 18, 2006) (holding that the complainant must first make a prima facie
case that the respondent lacks rights and legitimate interests in the disputed
domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to
show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA
780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima
facie showing that Respondent does not have rights or legitimate interest in
the subject domain names, which burden is light. If Complainant satisfies its burden, then the
burden shifts to Respondent to show that it does have rights or legitimate
interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the disputed domain name, and that it has never authorized or otherwise permitted Complainant to use the LEXUS mark in any form. There does not appear to be any evidence to the contrary. The WHOIS domain name registration information lists the registrant of the disputed domain name as “The Car Openers Inc.,” which does not resemble the disputed domain name. Accordingly, Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent’s disputed domain name resolves
to a website that purports to sell “genuine and unlicensed keys” to vehicles
sold under Complainant’s LEXUS mark.
Complainant also asserts in its Additional Submission that the lack of
evidence of actual Internet user confusion regarding the disputed domain name
is not necessarily required, especially since Respondent’s business is
relatively small. The Panel finds an
unauthorized commercial intent for Respondent’s activities, and thus Respondent
has not made a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v.
Mahony, FA 112559 (Nat. Arb. Forum June 12, 2002) (finding the respondent’s
use of the disputed domain name to solicit pharmaceutical orders without a
license or authorization from the complainant does not constitute a bona
fide offering of goods or services under Policy ¶ 4(c)(i)); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum
Sept. 19, 2002) (finding that because the respondent is using the infringing
domain name to sell prescription drugs, the panel could infer that the
respondent is using the complainant’s mark to attract Internet users to its
website for commercial benefit).
While Respondent asserts that it has utilized numerous disclaimers, the Panel finds that Respondent has not mitigated confusion, and that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The Panel finds Complainant’s
assertion that Respondent offered to sell the disputed domain name to
Complainant for US $49,000 is true and that Respondent engaged in bad faith
registration and use under Policy ¶ 4(b)(i).
See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the
respondent’s offer to sell the domain name for $2,000 sufficient evidence of
bad faith registration and use under Policy ¶ 4(b)(i)); see also Campmor, Inc. v.
GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent
registered the disputed domain name and offered to sell it to Complainant for
$10,600. This demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(i).”).
Respondent uses the disputed domain name to sell “aftermarket [and] non-licensed keys for LEXUS vehicles” on the resolving website. The Panel finds that Respondent has intentionally created a likelihood of confusion as to Complainant’s affiliation and endorsement of the disputed domain name for commercial gain and also finds that Respondent engaged in bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
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 <lexuskeys.com>
domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: December 31, 2008
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum