Claim Number: FA1001001303054
Complainant is Toyota Marin (“Complainant”), represented by Mike
Christian, of Toyota Marin,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toyotamarinsucks.com>, registered with Namesecure.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Carol M. Stoner, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 14, 2010; the National Arbitration Forum received a hard copy of the Complaint on January 14, 2010. The Complaint was amended on January 19, 2010, so as to consistently list the Complainant’s name in the header of the Complaint and the section for Complainant information; so as to name the Respondent as found in the Registrar’s Whois database and to linking variant Respondent names; and as to annex any trademark or service mark registration upon which the Complaint relies.
On January 15, 2010, Namesecure.Com confirmed by e-mail to the National Arbitration Forum that the <toyotamarinsucks.com> domain name is registered with Namesecure.com and that the Respondent is the current registrant of the name. Namesecure.com has verified that Respondent is bound by the Namesecure.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 January 26, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of February 16, 2010 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 email@example.com by e-mail.
A timely Response was received and determined to be complete on February 16, 2010.
Complainant’s Additional Submission was received in a timely fashion, on February 22, 2010 and was in compliance with Supplemental Rule 7.
On February 26, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Carol M. Stoner, Esq., as Panelist.
Complainant requests that the domain name <toyotamarinsucks.com> be transferred from Respondent to Complainant.
Complainant alleged as follows:
Toyota Marin is in the business of selling and servicing new and used vehicles. The company does business through its physical location as well as through its website at <toyotamarin.com>. Toyota Marin has been in business since March 22, 2004, doing business as Toyota Marin. The mark is not currently trademarked.
<Toyotamarinsucks.com> contains the d/b/a/ name, Toyota Marin, and as such, the names are similar.
Issue Click has no affiliation with Toyota Marin or any of its principals, and is not in the business of selling or servicing automobiles.
As supported by the attached e-mails, Frank Leahy’s intent was to use the url to injure the business of Toyota Marin and to tarnish the trademark, Toyota Marin.
There is no indication that the Respondent is intending to profit from the use of the domain name.
Respondent’s e-mails, attached to the Complaint, clearly show the intent to use the url in bad faith for the benefit of parties other than Toyota Marin. Frank Leahy registered the name for the sole purpose of damaging the reputation of Toyota Marin, whose company name he is infringing. In addition, he indicates his intention to publicly publish information from an issue which was settled and for which a confidentiality agreement was signed.
With regards to background
information, Frank Leahy is the friend of a Toyota Marin customer, Juliet
Neal-Boyd. Ms. Boyd had a warranty claim with her vehicle that ultimately ended
in Toyota Motor Sales buying her car back through
Respondent alleged as follows:
Frank Leahy is the founder and principal of The Issue Click Group and is the Registrant of IssueClick.
Respondent’s domain name <toyotamarinsucks.com>is neither identical nor confusingly similar to Complainant’s trademark or service mark. By the addition of the distinctive word “sucks” the domain is not identical to Toyota Marin or to Toyotamarin.com. Neither are consumers likely to be confused with the mark as coming from the same source, or thought to be affiliated with, or connected with or sponsored by the trademark owner.
The Respondent created a protest site by adding the classic protest word “sucks” to the end of the protested company name to communicate a message of legitimate dissatisfaction about Complainant’s business.
Respondent registered <toyotamarinsucks.com> on October 26, 2008, and since reactivating the site on January 03, 2010 has maintained a legitimate protest site directed towards the Complainant’s handling of its dispute with Ms. Boyd and its current overtures directed at Respondent.
Respondent is a social activist who is dedicated to providing information to the public with the hope of helping consumers make more responsible and informed choices. Toyota of Marin cannot use the UDRP as a vehicle to insulate itself from critical views and negative commentary no matter how distasteful it may find them.
At no point has Respondent attempted to profit from his use of the domain, nor has he intended to interfere with the legitimate negotiations between Ms. Boyd and Complainant, or tried to tarnish the business of Complainant, generally. All postings on the website are factual in nature or are constitutionally protected public opinion. The public has come to expect critical/protest sites under “sucks” domains, and Respondent’s creation and use of the domain are well within that expectation.
Respondent registered <toyotamarinsucks.com> in good faith, on October 26, 2008,
to help his friend, Ms. Boyd and has since used the site to provide an open forum for consumers to obtain information and share information and to record the development of the facts and communications surrounding his and Ms. Boyd’s own disputes with Toyota of Marin.
Respondent is not bound by the confidentiality agreement between Toyota of Marin and Ms. Boyd, and this agreement has no bearing upon Respondent’s rights under UDRP.
C. Additional Submissions
Complainant submitted a timely Additional Submission, in which Complainant alleged as follows:
It is well settled law that the addition of a common or generic term (that is “sucks”)
following a trademark, does not create a new or different mark in which the Respondent has rights. A long line of decisions have agreed with Complainant that adding the word “sucks” to a domain is confusingly similar.
Each case must be considered in light of the facts presented. In other words, each case must be tried on its own merits.
Although “sucks” could make an English speaker consider that the name does not promote the Complainant or its product, not every user of the internet is well versed in the English language.
Respondent cites a lien of Walmart cases in which the Court, in order to decide whether
a domain name and a trademark are confusingly similar, applied a multi-factored test, enumerating eight factors to be weighed on the question of a likelihood of confusion. The factors are: strength of the mark; proximity of the goods; similarity of the marks; evidence of actual confusion; marketing channels used; type of goods and degree of care likely to be exercised by the purchaser; defendant’s intent in selecting the mark; and likelihood of expansion of the product lines.
Complainant alleges that the
Complainant cites evidence of actual confusion, to be unknown at this time.
Complainant cites a line of cases for the proposition that the use of a domain name in connection with a site that makes a noncommercial or fair use of the mark does not necessarily mean that the domain name registrant lacked bad faith.
Complainant alleges that further evidence of Respondent’s bad faith consists of his use of a fake telephone number and omission of a street address, in violation of ICANN Rules.
It is clear from Respondent’s own statements that he registered the domain as part of a dispute and was willing to sell the domain based on the outcome of the negotiations with his friend. This is not good faith or a legitimate use. Respondent is a cybersquatter at best, and is using the domain name to assist a friend to get a better settlement.
In conclusion, the primary factor in determining whether a “sucks” domain should be allowed to be connected to a trademark depends on Respondent’s intent in registering the domain and his use, thereof. It is clear that Respondent has no real intention to create a complaint site and his characterization of free speech are mere covers for his true intentions – to negotiate a better deal and to sell the domain to Complainant.
Respondent’s domain name <toyotamarinsucks.com> is not identical or confusingly similar to a trademark or service mark in which the Complainant has rights. As a unanimous finding of all three elements is required, Panel has declined to analyze
¶4(a)(ii) and ¶4(a)(iii) of the Policy. Therefore, Respondent is not ordered to transfer the mark to Complainant.
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.
The threshold issue in section ¶4(a)(i) is to ascertain the identity of the trademarks in which Complainant has rights, and then to ascertain the nature of those rights. The trademark at issue is Toyota Marin. Complainant states that it has been using this mark since the inception of its business in 2004. However, Complainant has not secured trademark, nor service mark protection of this name.
Complainant is correct when it asserts that it nevertheless, has garnered some common law rights to the mark through its usage of same. However, these common law rights do not rise to the level of protectable trademark or service mark rights, without the inclusion of secondary meaning. Secondary meaning is that indicia of distinctiveness that arises when consumers so associate the mark with the originator, that they use the mark to call for the goods. Secondary meaning has to be proved by such as, consumer surveys, or inferred by such as, extensive advertising budgets. Here, the Complainant has not provided this Panel with any evidence from which to adduce or to ascribe a secondary meaning to the mark.
Even if a secondary meaning can be inferred to the mark Toyota Marin, Complainant must also prove that Respondent’s marks are either identical or confusingly similar to the protected marks, such that consumers are likely to be confused as to the source or affiliation of the marks. Here, Panel has not been persuaded that the marks are identical. Panel has been persuaded by Respondent’s arguments that the inclusion of the word “sucks” to the mark transforms the mark into a readily recognizable protest rallying cry, that is distinguishable from Complainant’s mark.
As to whether the marks are confusingly similar, Panel is appreciative of Complainant’s citation of the Sleekcraft criteria, as brite-lined by the Court of Appeals for the Ninth Circuit Court of Appeals. (See AMF Inc. v. Sleekcraft Boats, 599 F. 2d 341 (9th Cir. 1979). The Sleekcraft factors are directed as to whether there is a “likelihood of confusion” between the two marks. The test was developed initially to compare two trademarks, and has been used more recently to compare domain names to trademarks and domain names to domain names, and hence, is relevant here.
Respondent is persuasive in his arguments that the addition of the distinctive word “sucks” does not render the disputed domain name <toyotamarinsucks.com> confusingly similar to Complainant’s common law trademark mark of Toyota Marin. Panel is of the opinion that a common sense and a plain language reading of the domain name makes plain its function as a protest site.
Respondent’s contentions, that his intent in selecting the mark and his usage of the disputed mark in posts on his website have been to engage in free speech-albeit on behalf of one person, his friend, Ms. Boyd- are credulous.
The courts have been uneven in their treatment of the “suck” cases, grasping onto such creaky criteria as “Each case must be tried on its own merits.” See Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal. 1998). However, early treatment favored the Complainants charges, that the “suck” suffix so tarnished Complainant’s marks as to be an indicia of bad faith, practically in a per se fashion. The identical/confusingly similar test was then back-ended to treat “suck” as a generic term, which did not distinguish the disputed mark from the protected trademark. Courts have, as of late, begun to recognize the prevalence of these “suck” protest sites. As distasteful (and even possibly harmful)
as the “suck” sites are to the targeted businesses, their increasing prevalence has caused consumers to readily recognize them for what they are. That is, not as necessarily reliable sites, but at a minimum, as issue-informative sites. This prevalence of issue-oriented sites would have a natural tendency to negate consumer confusion as to the sponsorship and affiliation of said sites.
Even in its Additional Submission, Complainant, cites Evidence of Actual Confusion as “Unknown at this time.” Complainant has therefore, forfeited its opportunity to adduce such possible evidence as consumer surveys, which may have elicited at least a penumbra of consumer confusion.
Based upon the above evidence, the Panel therefore finds that Respondent’s <toyotamarinsucks.com> domain name is not identical or confusingly similar to Complainant’s TOYOTA MARIN mark. See KB Home v. Register Fly.com- Ref#9323034, FA506771 (Nat. Arb. Forum Aug. 30, 2005) (finding that the addition of the term “sucks” to the complainant’s KB HOME mark in the <kbhomesucks.com> domain name did not make the domain name confusingly similar to the mark because a reasonable person would not conclude that a person who registers a domain name containing the term “sucks” has any relation to the owner of the mark); see also Lockheed Martin Corp. v. Parisi, D2000-1015 (WIPO Jan 26, 2001) (finding that common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word “sucks” or other language clearly indicates that the domain name is not affiliated with the trademark owner and therefore <lockheedmartinsucks.com> and <lockheedsucks.com> cannot be considered confusingly similar to LOCKHEED MARTIN).
As the Panel has concluded that Complainant has not satisfied Policy ¶4(a)(i) because the disputed domain name is not identical or confusingly similar to the mark, the Panel declines to analyze the other two elements of the Policy. See Creative Curb v. Edgetec Int’l Pty. Ltd., FA 116765 (Nat. Arb. Forum Sept. 20, 2002) (finding that because the complainant must prove all three elements under the Policy, the complainant’s failure to prove one of the elements makes further inquiry into the remaining elements unnecessary); see also Hugo Daniel Barbaca Bejinhja v. Whois Guard Protected, FA 836538 (Nat.Arb Forum Dec. 28, 2006) (declining to inquire into the respondent’s rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirement of Policy ¶4(a)(i).
Having failed to establish all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <toyotamarinsucks.com> domain name
NOT BE TRANSFERRED from Respondent to Complainant.
Carol M. Stoner, Esq.,
Dated: March 12, 2010
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