national
arbitration forum
DECISION
Gulf States Toyota, Inc. and Toyota Motor Sales, U.S.A., Inc. v.
Randall Noe Auto Group
Claim Number: FA0708001061014
PARTIES
Complainant is Gulf States Toyota, Inc. and Toyota
Motor Sales, U.S.A., Inc. (collectively “Complainant”), represented by Christopher
L. Ashby, of Ashby Crinion, LLP, 909 Fannin, Suite 1450, Houston, TX
77010. Respondent is Randall Noe Auto Group (“Respondent”), 1608 W
Moore Ave, Terrell, TX 75160-2308.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <toyotaofrockwall.com>, registered
with Network Solutions, 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 August 13, 2007;
the National Arbitration Forum received a hard copy of the Complaint on August
13, 2007.
On August 13, 2007,
Network Solutions, Inc. confirmed by
e-mail to the National Arbitration Forum that the <toyotaofrockwall.com> domain name is registered with Network Solutions, Inc. and that Respondent is
the current registrant of the name. Network Solutions, Inc. has verified that
Respondent is bound by the Network Solutions,
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 August
17, 2007, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 6, 2007 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@toyotaofrockwall.com
by e-mail.
On September 6, 2007, Respondent requested a
thirty-day extension to respond to the Complaint pursuant to Supplemental Rule
6. On September 7, 2007, the Forum granted a ten-day
extension, and set a new deadline of September 17, 2007 by which Respondent could file a
response to the Complaint.
Having received no response from
Respondent, the National Arbitration Forum transmitted to the parties a
Notification of Respondent Default.
On September 24, 2007, 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."
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
<toyotaofrockwall.com>
domain name is confusingly similar to Complainant’s TOYOTA mark.
2. Respondent
does not have any rights or legitimate interests in the <toyotaofrockwall.com> domain name.
3. Respondent
registered and used the <toyotaofrockwall.com>
domain name in bad faith.
B.
Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Toyota Motor Sales, U.S.A., Inc., is a wholly-owned
subsidiary of Toyota Motor Corporation, and is the exclusive importer and
distributor of Toyota
automobiles throughout the United
States (except Hawaii).
Complainant Gulf States Toyota, Inc. is a privately owned, authorized
distributor of TOYOTA
brand automobiles in the southern part of the United States. Complainant Toyota Motor Sales, U.S.A., Inc.
and Complainant Gulf States Toyota, Inc. shall collectively be referred to as
“Complainant.” Complainant has
continuously used the TOYOTA
mark in commerce since 1969 to promote its automobiles and related products. Complainant’s parent company, Toyota Jidosha
Kabushiki Kaisha t/a Toyota Motor Corporation, holds a registered trademark
with the United States Patent and Trademark Office (“USPTO”) for the TOYOTA mark (Reg. No.
843,138 issued Jan. 30, 1968), and has authorized Complainant to use the mark
to promote its automobiles and related products.
Respondent, Randall Noe Auto Group, registered the <toyotaofrockwall.com> domain name on
July 13, 2002. Respondent is using the disputed domain name
to advertise the automobiles of Complainant’s competitors.
On June
29, 2005, Respondent applied for a Toyota dealership in the Rockwall area, which
is located in the southern United
States, but was denied by Complainant on July 26, 2006. Respondent therefore is not a licensed or
authorized dealer of Complainant’s automobiles and related products, and is not
associated with Complainant in any way.
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
Complainant’s
parent company, Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation,
holds a USPTO registered trademark for the TOYOTA mark.
Therefore, the Panel finds that Toyota Jidosha Kabushiki Kaisha t/a
Toyota Motor Corporation has successfully established rights to the TOYOTA mark pursuant to
Policy ¶ 4(a)(i). See Enter. Rent-a-Car Co. v.
BGSvetionik, FA 925273 (Nat. Arb. Forum Apr. 11, 2007) (“The Panel finds
that Complainant’s timely registration [with the USPTO] and subsequent use of
the ENTERPRISE mark for over 20 years sufficiently establishes its rights in
the mark pursuant to Policy ¶ 4(a)(i).”); see also Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007)
(“Complainant’s trademark registrations with the USPTO adequately demonstrate
its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”).
Complainant is a
wholly-owned subsidiary and authorized distributor of Toyota Jidosha Kabushiki
Kaisha t/a Toyota Motor Corporation. The
Panel notes that previous panels have held that Complainant has standing to
enforce the trademark rights of its parent company under the Policy. See
Toyota
Motors Sales U.S.A.,
Inc. v. Indian Springs Motor, FA 157289 (Nat. Arb. Forum, Jan. 11,
2005) (“Complainant has established that it has rights in the TOYOTA and LEXUS
marks through TMC’s registration with the USPTO and Complainant’s subsidiary
relationship with TMC.”); see also Toyota Motor Sales, U.S.A., Inc.
v. Fleetrates.com, FA 568488 (Nat. Arb. Forum Nov. 21, 2005) (finding that although the complainant
is not the owner of the trademarks, which are owned by its parent, the complainant
has standing to bring the complaint). Therefore,
the Panel finds that Complainant can enforce its parent company’s trademarks
rights to the TOYOTA
mark, and consequently has established rights to the mark pursuant to Policy ¶
4(a)(i).
Complainant has alleged that Respondent’s <toyotaofrockwall.com> domain name is
confusingly similar to Complainant’s TOYOTA
mark pursuant to Policy ¶ 4(a)(i). The
disputed domain name contains Complainant’s TOYOTA mark in its entirety as the dominant
portion of the disputed domain name. The
geographic indicator “of rockwall” and the generic top-level domain (gTLD)
“.com” do not sufficiently distinguish the disputed domain name from the
Complainant’s mark. Therefore, the Panel
concludes that Respondent’s <toyotaofrockwall.com>
domain name is confusingly similar to Complainant’s TOYOTA mark pursuant to Policy ¶
4(a)(i). See 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"); see also AXA China Region Ltd. v. KANNET Ltd.,
D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com>
domain name “is confusingly similar to the Complainant's trade mark ‘AXA’”
because “common geographic qualifiers or generic nouns can rarely be relied
upon to differentiate the mark if the other elements of the domain name
comprise a mark or marks in which another party has rights”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Rights or Legitimate Interests
Complainant has alleged that Respondent does not have rights
or legitimate interests in the <toyotaofrockwall.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden then shifts to Respondent to show it does have rights
or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has
established a prima facie case
pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA
780200 (Nat.
Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”);
see also 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 Policy ¶ 4(a)(ii) before
the burden shifts to the respondent to show that it does have rights or
legitimate interests in a domain name).
Since Respondent has not responded to the Complaint, the Panel will
examine the record to determine if Respondent has rights or legitimate
interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known
by the <toyotaofrockwall.com>
domain name. The WHOIS information
identifies Respondent as “Randall Noe Auto Group,” and Complainant has
established that Respondent is not licensed or authorized to use the TOYOTA mark. The Panel can find no other evidence in the
record indicating that Respondent is commonly known by the disputed domain
name. Therefore, the Panel concludes
that Respondent is not commonly known by the <toyotaofrockwall.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007)
(concluding that the respondent was not commonly known by the
<lilpunk.com> domain name as there was no evidence in the record showing
that the respondent was commonly known by that domain name, including the WHOIS
information as well as the complainant’s assertion that it did not authorize or
license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA
699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly
known by the disputed domain names where the WHOIS information, as well as all
other information in the record, gave no indication that the respondent was
commonly known by the disputed domain names, and the complainant had not
authorized the respondent to register a domain name containing its registered
mark).
Complainant notes that Respondent is using the <toyotaofrockwall.com> domain name to
advertise the automobiles of Complainant’s competitors. The Panel thus finds that Respondent is not
using the disputed domain name in connection with a bona fide offering of goods and services under Policy ¶ 4(c)(i) or
a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Am. Int’l Group, Inc. v. Benjamin, FA
944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a
confusingly similar domain name to advertise real estate services which
competed with the complainant’s business did not constitute a bona fide offering of goods or services
under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy
¶ 4(c)(iii)); see
also Gardens Alive, Inc. v. D&S
Linx, FA 203126 (Nat. Arb. Forum
Nov. 20, 2003) (finding that the respondent used a domain name for commercial
benefit by diverting Internet users to a website that sold goods and services
similar to those offered by the complainant and thus, was not using the name in
connection with a bona fide offering of goods or services nor a
legitimate noncommercial or fair use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
Respondent is using the <toyotaofrockwall.com>
domain name to advertise the automobiles of Complainant’s competitors. In Spark
Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006), the
panel held that the respondent’s registration of a domain name confusingly
similar to the complainant’s mark in order to operate a competing online dating
website supported a finding that the respondent registered and used the domain
name to disrupt the complainant’s business under Policy ¶ 4(b)(iii). Similarly, in S. Exposure v. Southern Exposure, Inc.,
FA 94864 (Nat. Arb. Forum July
18, 2000), the panel found that the respondent acted in bad faith
under Policy ¶ 4(b)(iii) by attracting Internet users to a website that
competed with the complainant’s business.
In this case, Respondent’s <toyotaofrockwall.com>
domain name advertises competing automobiles.
Therefore, Respondent’s use of the disputed domain name is likely to
disrupt Complainant’s business by diverting customers to Respondent’s competing
site. The Panel finds that Respondent
registered and is using the <toyotaofrockwall.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant also alleges that Respondent’s is using the <toyotaofrockwall.com> domain name, which is confusingly
similar to Complainant’s TOYOTA mark, to attract customers
to its site for Respondent’s own commercial gain. Complainant asserts that Respondent is
attempting to profit from the goodwill associated with Complainant’s TOYOTA mark, and the
Panel agrees. Respondent’s use of the
disputed domain name may mistakenly lead customers to believe that the
competing autombiles advertised on Respondent’s website that resolves from the
disputed domain name are somehow affiliated or endorsed by Complainant. Consequently, the Panel finds that
Complainant’s registration and use of the <toyotaofrockwall.com>
domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See
Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs.,
FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of
the disputed domain name to advertise car dealerships that competed with the
complainant’s business would likely lead to confusion among Internet users as
to the sponsorship or affiliation of those competing dealerships, and was
therefore evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv)); see also AOL LLC v. AIM Profiles, FA 964479 (Nat.
Arb. Forum May 20, 2007) (finding that the respondent registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was commercially gaining from the likelihood of confusion between
the complainant’s AIM mark and the competing instant messaging products and
services advertised on the respondent’s website which resolved from the
disputed domain name).
The Panel finds that Policy ¶ 4(b)(iv) 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 <toyotaofrockwall.com> domain name be
TRANSFERRED from Respondent to Complainant.
James
A. Carmody, Esq., Panelist
Dated: October 5, 2007
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