national arbitration forum

 

DECISION

 

Toyota Motor Credit Corp. v. Mel Light

Claim Number: FA1111001416446

 

PARTIES

Complainant is Toyota Motor Credit Corp. (“Complainant”), represented by Eric T. Fingerhut of Dykema Gossett PLLC, Washington, D.C., USA.  Respondent is Mel Light (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <lexusextendedwarranty.org>, registered with GoDaddy.com, Inc. (R91-LROR).

 

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 18, 2011; the National Arbitration Forum received payment on November 21, 2011.

 

On November 21, 2011, GoDaddy.com, Inc. (R91-LROR) confirmed by e-mail to the National Arbitration Forum that the <lexusextendedwarranty.org> domain name is registered with GoDaddy.com, Inc. (R91-LROR) and that Respondent is the current registrant of the name.  GoDaddy.com, Inc. (R91-LROR) has verified that Respondent is bound by the GoDaddy.com, Inc. (R91-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 22, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 12, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@lexusextendedwarranty.org.  Also on November 22, 2011, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.

 

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

 

On December 21, 2011, 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.

 

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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.    Respondent’s <lexusextendedwarranty.org> domain name is confusingly similar to Complainant’s LEXUS mark.

 

2.    Respondent does not have any rights or legitimate interests in the <lexusextendedwarranty.org> domain name.

 

3.    Respondent registered and used the <lexusextendedwarranty.org> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Toyota Motor Credit Corp., owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its LEXUS mark (e.g., Reg. No. 1,675,339 registered February 11, 1992).  Complainant uses its LEXUS mark in connection with automobile sales and financial and insurance services. 

 

Respondent, Mel Light, registered the <lexusextendedwarranty.org> domain name on June 18, 2010.  The disputed domain name resolves to a website offering warranty services that directly compete with the warranty services offered by Complainant.

 

Respondent was a respondent in a previous UDRP proceeding in which the disputed domain name, <toyotaexendedwarranty.us>, was transferred to Complainant.  See Toyota Motor Credit Corp. v. Mel Light, FA 1393651 (Nat. Arb. Forum July 28, 2011).

 

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."

 

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.

 

Identical and/or Confusingly Similar

 

As Complainant owns a trademark registration with the USPTO for its LEXUS mark (e.g., Reg. No. 1,675,339 registered February 11, 1992), the Panel concludes that Complainant sufficiently establishes its rights in the LEXUS mark for the purposes of Policy ¶ 4(a)(i).  See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).

 

Respondent’s <lexusextendedwarranty.org> domain name contains Complainant’s entire LEXUS mark in addition to the descriptive terms “extended” and “warranty” and the generic top-level domain (“gTLD”) “.org.”  As the Panel determines that these additions fail to adequately distinguish the disputed domain name from Complainant’s mark, the Panel holds that Respondent’s <lexusextendedwarranty.org> domain name is confusingly similar to Complainant’s LEXUS mark pursuant to Policy ¶ 4(a)(i).  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).

 

The Panel finds Policy ¶ 4(a)(i) is satisfied.

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <lexusextendedwarranty.org> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <lexusextendedwarranty.org> domain name.  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).

 

Respondent did not respond to this case and therefore makes no contention that it is commonly known by the <lexusextendedwarranty.org> domain name.  As Complainant did not authorize Respondent to use Complainant’s LEXUS mark and the WHOIS information lists “Mel Light” as the registrant of the disputed domain name, the Panel determines that Respondent is not commonly known by the <lexusextendedwarranty.org> domain name under Policy ¶ 4(c)(ii).  See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).

 

Respondent’s <lexusextendedwarranty.org> domain name resolves to a website that offers extended warranty services that compete with Complainant’s identical services.  Respondent’s resolving website prominently uses Complainant’s LEXUS mark and pictures of Complainant’s vehicles.  Based on Respondent’s competing use of the disputed domain name, the Panel finds that Respondent does not make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <lexusextendedwarranty.org> domain name under Policy ¶ 4(c)(iii).  See Diners Club Int’l Ltd. v. Car in Won Australia pty Ltd, FA 338427 (Nat. Arb. Forum Nov. 10, 2004) (“Since Complainant and Respondent both offer credit card accounts for sale, the Panel finds that Respondent is using the domain names to offer strictly competing services with Complainant, which would be legitimate had Respondent not incorporated Complainant’s mark in a confusingly similar domain name to accomplish this end.”); see also Am. Tool & Machining, Inc. v. EZ Hitch Inc., FA 113961 (Nat. Arb. Forum July 16, 2002) (holding that Respondent lacks rights and legitimate interests in the domain name because “Respondent is competing in the same industry as Complainant, selling a product that is arguably identical to Complainant's product and under the same name”).

 

The Panel finds Policy ¶ 4(a)(ii) is satisfied.

 

Registration and Use in Bad Faith

 

Respondent was a respondent in a previous UDRP proceeding in which the disputed domain name, <toyotaexendedwarranty.us>, was transferred to Complainant.  See Toyota Motor Credit Corp. v. Mel Light, FA 1393651 (Nat. Arb. Forum July 28, 2011).  Based on this previous case involving both Complainant and Respondent and the case at hand, the Panel determines that there is sufficient evidence that Respondent registered and uses the <lexusextendedwarranty.org> domain name in an attempt to prevent Complainant’s use of its LEXUS mark in a domain name, constituting Policy ¶ 4(b)(ii) bad faith registration and use.  See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”); see also Sport Supply Group, Inc. v. Lang, D2004-0829 (WIPO Dec. 10, 2004) (“[Respondent] registered the <usgames.com> domain name in order to prevent [Complainant] from reflecting its U.S. GAMES Mark in a corresponding domain name [pursuant to Policy ¶ 4(b)(ii)].  The pattern of such conduct is established, inter alia, by the public decisions of two different UDRP proceedings [against] Respondent.”).

 

Complainant argues, and the Panel infers, that Respondent’s registration and use of the <lexusextendedwarranty.org> domain name to offer competing extended warranty services disrupts Complainant’s business by facilitating competition with Complainant.  Thus, the Panel concludes that Respondent registered and uses the <lexusextendedwarranty.org> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).  See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) (finding that, given the competitive relationship between the complainant and the respondent, the respondent likely registered the contested domain name with the intent to disrupt the complainant's business and create user confusion); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business.  The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).

 

Complainant also claims, and the Panel presumes, that Respondent commercially benefits from the sale of extended warranty services on the resolving website.  As Respondent registered the confusingly similar <lexusextendedwarranty.org> domain name, uses the domain name to host a website offering competing extended warranty services identical to Complainant’s services, and uses Complainant’s LEXUS mark and pictures of Complainant’s vehicles, the Panel determines that Respondent is attempting to create confusion as to Complainant’s affiliation with the disputed domain name.  Therefore, the Panel holds that Respondent registered and uses the <lexusextendedwarranty.org> domain name in bad faith under Policy ¶ 4(b)(iv).  See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market).

 

The Panel finds Policy ¶ 4(a)(iii) is 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 <lexusextendedwarranty.org> domain name be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  December 22, 2011

 

 

 

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