Claim Number: FA0811001233396
Complainant is Toyota Motor Sales, U.S.A., Inc., represented by Christine
Lofgren, of Toyota Motor Sales, U.S.A., Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <toyotaofauburn.com>, registered with Lead Networks Domains Pvt. Ltd.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 14, 2008.
On November 18, 2008, Lead Networks Domains Pvt. Ltd. confirmed by e-mail to the National Arbitration Forum that the <toyotaofauburn.com> domain name is registered with Lead Networks Domains Pvt. Ltd. and that Respondent is the current registrant of the name. Lead Networks Domains Pvt. Ltd. has verified that Respondent is bound by the Lead Networks Domains Pvt. Ltd. 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 21, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 11, 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@toyotaofauburn.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 15, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
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
<toyotaofauburn.com> domain
name is confusingly similar to Complainant’s
2. Respondent does not have any rights or legitimate interests in the <toyotaofauburn.com> domain name.
3. Respondent registered and used the <toyotaofauburn.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant,
Respondent registered the <toyotaofauburn.com> domain name on January 4,
2007. Respondent’s disputed domain name
resolves to a website displaying links to third-party websites in competition
with Complainant. Prior to Respondent
initiating WHOIS protection of its registration information, Respondent offered
the disputed domain name to Complainant for $1,200.00.
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.
The Panel finds that Complainant has established rights in
the
Complainant alleges that Respondent’s <toyotaofauburn.com> domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name contains Complainant’s mark in its entirety, adds the generic term “of,” adds the geographic location “auburn,” and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that a disputed domain name that contains a complainant’s registered mark, and adds a generic term and a geographic term fails to create a distinguishing characteristic for the disputed domain name and establishes a confusing similarity between the two. See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); see also Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar").). In addition, the Panel finds that the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant initially bears the burden of demonstrating that Respondent lacks rights or legitimate interests with respect to the disputed domain name. However, once Complainant sufficiently demonstrates a prima facie case, the burden shifts to Respondent to establish that it has rights or legitimate interests in connection with the disputed domain name under Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also 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.”). The Panel finds that Complainant has demonstrated a prima facie case and in the absence of a Response from Respondent, will evaluate the evidence on record to determine whether Respondent has any rights or legitimate interests with respect to the disputed domain name under Policy ¶ 4(c).
The evidence on record fails to demonstrate that Respondent
is commonly known by the <toyotaofauburn.com>
domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not authorized to use the
Complainant contends that Respondent is using the disputed domain name to display links to third-party websites offering automobile products in competition with Complainant. The Panel finds that such use of the disputed domain name is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to intentionally divert Internet users to the associated website, which displays third-party links to competing websites are displayed. In cases such as this, the Panel may assume that Respondent is collecting click-through fees and attempting to profit by creating a likelihood of confusion between Complainant’s mark and the disputed domain name. The Panel finds that Respondent’s use of the disputed domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).
In addition, the Panel finds that Respondent’s use of the disputed domain name to
disrupt the business of Complainant by offering links to competitors is further
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Travant Solutions, Inc. v. Cole, FA 203177 (Nat. Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”); see
also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov.
11, 2003) (“Respondent registered a domain name confusingly similar to
Complainant's mark to divert Internet users to a competitor's website. It is a
reasonable inference that Respondent's purpose of registration and use was to
either disrupt or create confusion for Complainant's business in bad faith
pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Lastly, Complainant presents
evidence that Respondent offered to sell the <toyotaofauburn.com> domain name for $1,200, which is more than the
out-of-pocket expenses that Respondent paid to register the disputed domain
name. The
Panel finds that this offer to sell is further evidence of bad faith
registration and use pursuant to 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 Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent's general offer of the disputed domain name registration for sale
establishes that the domain name was registered in bad faith under Policy ¶
4(b)(i).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toyotaofauburn.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 29, 2008
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