Toyota Motor Sales, U.S.A. Inc. and
Toyota Motor Credit Corporation v. Wayne Craig d/b/a GMGL Marketing Services
Inc.
Claim Number: FA0508000550216
PARTIES
Complainants
are Toyota Motor Sales, U.S.A. Inc. and Toyota Motor Credit Corporation (collectively, “Complainant”),
represented by John F. Hornick, of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., 901 New York Ave NW, Washington, DC
20001. Respondent is Wayne Craig d/b/a GMGL Marketing
Services Inc. (“Respondent”), 12913 W. Windsor Ave., Avondale, AZ 85323.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <extendedwarrantiesfortoyota.com>, <extendedwarrantiesforlexus.com>, <lexusextendedwarranties.com> and <toyotaextendedwarranties.com>, registered with Wild West Domains.
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.
Darryl
C. Wilson as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum electronically on August
30, 2005; the National Arbitration Forum received a hard copy of the Complaint
on August 31, 2005.
On
August 30, 2005, Wild West Domains confirmed by e-mail to the National
Arbitration Forum that the <extendedwarrantiesfortoyota.com>, <extendedwarrantiesforlexus.com>, <lexusextendedwarranties.com> and <toyotaextendedwarranties.com> domain names are registered
with Wild West Domains and that the Respondent is the current registrant of the
names. Wild West Domains has verified
that Respondent is bound by the Wild West Domains 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
September 1, 2005, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of September 21, 2005 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@extendedwarrantiesfortoyota.com,
postmaster@extendedwarrantiesforlexus.com,
postmaster@lexusextendedwarranties.com and
postmaster@toyotaextendedwarranties.com by e-mail.
A
timely Response was received and determined to be complete on September 14,
2005.
On September 27, 2005, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the National Arbitration Forum
appointed Darryl C. Wilson as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
Complainant,
Toyota Motor Sales, USA, Inc. and Toyota Motor Credit Corporation (“Toyota”),
contends that it is the owner of the Toyota mark, having used the same in the U.S.
from at least 1958 to the present. Complainant
also contends that it owns the LEXUS mark having used the same from at least
1989 to the present. These marks and
other registered variations, are used by Complainant for automobiles and
related goods and services. Complainant
also asserts that it owns several domain names containing the Toyota and LEXUS
marks in conjunction with websites promoting Toyota and LEXUS branded products. Complainant contends that its marks have
become famous as it is a global leader in the development, manufacturing, and
marketing of various products related to automobiles, including extended
warranties for new and used vehicles.
Complainant asserts that Respondent has registered the confusingly
similar domain names, <extendedwarrantiesfortoyota.com>,
<extendedwarrantiesforlexus.com>,
<lexusextendedwarranties.com>,
and <toyotaextendedwarranties.com>,
to trade off the goodwill associated with its Toyota and LEXUS marks and otherwise improperly
derive commercial benefit from Complainant.
Complainant states that Respondent has no legitimate interests or rights
in the domains in dispute, as Respondent’s websites offer goods or services in
direct competition with Complainant and further contends that Respondent’s use
of the disputed domain names evidences bad faith by creating a likelihood of
confusion amongst consumers.
B.
Respondent
Respondent
contends that he is an independent broker of extended warranties on all types
of vehicles who cannot sell a warranty on a Toyota or LEXUS automobile without using
Complainant’s marks. Respondent states that he is merely referring to the
vehicle brand and “not using the marks.”
Respondent contends he has a legitimate interest in the marks that
arises from his need to inform prospective customers that his products are
available for their vehicles and that he did not register the disputed domain
names in bad faith. Respondent contends
further that no one would believe that his website was a Toyota or Lexus website.
Respondent states that he does not intend to disrupt Complainant’s business by
using the marks and that, to the contrary, his business will be disrupted if he
is not allowed to continue his present usage.
Respondent calls special attention to his business’ small size relative
to Complainant and also mentions his past and present willingness to sell the
domain names in dispute to Complainant.
FINDINGS
Complainant, Toyota, is a well-known
international corporation engaged in the development, manufacturing and
marketing of automobiles and related products, including extended warranties
for new and used vehicles. Complainant
is the owner of the marks, Toyota (see Reg. No. 843,138 issued January 30,
1968, renewed January 30, 1988) and LEXUS (see Reg. No. 1,574,718 issued
January 2, 1990), duly registered with the United States Patent and Trademark
Office (“USPTO”). Complainant owns
several other USPTO registered marks incorporating Toyota and LEXUS
and has secured several domain names that also include these marks. These websites include <toyota.com>,
<lexus.com>, <buyatoyota.com>, and <toyota-financial.com>,
and feature Complainant’s products and services, including the availability of
extended warranty services. Respondent
registered the domain names in dispute during January and April 2003, after
Complainant’s actions noted above, and established websites using the domains
in question, offering third-party, after-market extended warranties for Toyota and LEXUS
vehicles. The websites used
Complainant’s registered marks and related trade names and featured photographs
of Toyota
and LEXUS vehicles. Respondent was
contacted by Complainant regarding his unauthorized use of its marks, however,
the resulting discussions failed to yield a satisfactory conclusion to the
parties’ dispute.
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.
The Panel finds that Complainant has
established rights in the Toyota and LEXUS marks through its numerous
registrations with the USPTO. See Innomed Techs., Inc. v. DRP Servs., FA
221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark
with the USPTO establishes Complainant’s rights in the mark.”); see also
Vivendi Universal Games v. XBNet
Ventures, Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant’s
federal trademark registrations establish Complainant’s rights in the Blizzard
mark.”) The Panel also finds that
Respondent’s domain names, <extendendwarrantiesfortoyota.com>,
<extendedwarrantiesforlexus.com>,
<lexusextendedwarranties.com>,
and <toyotaextendedwarranties.com>,
are confusingly similar to Complainants Toyota and LEXUS marks. Respondent’s domains incorporate
Complainant’s marks in their entirety and merely add generic terms after or
before the marks. The addition of such
generic wording is not enough to overcome a finding of confusing similarity
pursuant to Policy ¶4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. V. Healy/BOSTH, D2001-0026
(WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term). Furthermore Respondent’s
additions of the generic top-level domain “.com” is insufficient to distinguish
the domain names. See Nev. State Bank v. Modern
Ltd.—Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has
been established that the addition of a generic top-level domain is irrelevant
when considering whether a domain name is identical or confusingly similar
under the Policy.”) The Panel finds
Respondent’s assertions that he is merely referring to the brand of the vehicle
and that there is no other way to make reference to his services except by
using Complainant’s marks in his business’ domain names to be
unpersuasive. The Panel finds that
Complainant has met the requirements pursuant to Policy ¶4(a)(i).
The Panel finds, pursuant to Policy
¶4(a)(ii), that Respondent does not have any rights or legitimate interests in
the disputed domain names. Respondent
is offering extended warranties for vehicles manufactured by Complainant in direct
competition with Complainant’s own extended warranty offerings. The Panel finds that such a competing use is
neither a use in connection with a bona fide offering of goods pursuant
to ¶4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy
¶4(c)(iii). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s
appropriation of [Complainant’s] SAFLOK mark to market products that compete
with Complainant’s goods does not constitute a bona fide offering of goods and
services”). Furthermore, Respondent
indicates that he is an individual doing business as GMGL Marketing Services,
Inc., and has offered nothing to show that he was commonly known by the domain
names in dispute. See Compagnie de Saint Cobain v. Con-union Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interest where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name); see also Tercent Inc., v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003)
(stating nothing in Respondent’s WHOIS information implies that Respondent is
“commonly known by the disputed domain” as one factor in determining that
Policy ¶4(c)(ii) does not apply).
The Panel finds, pursuant to Policy
¶4(a)(iii), that Respondent’s registration and use of the domain names in
dispute was in bad faith. Respondent
registered the disputed domains with actual or constructive knowledge of
Complainant’s rights in the TOYOTA and LEXUS marks. Complainant’s marks are well-known domestically and abroad and
were duly registered with the USPTO. See Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”)
Furthermore, prior to the registration of the domain names in dispute,
Complainant had already developed an Internet presence through the
establishment of several websites incorporating its TOYOTA and LEXUS marks,
including sites that offered extended warranty products and services. The Panel finds that Respondent is using the
disputed domain names to attract Internet users to its commercial website by
creating a likelihood of confusion with Complainant’s mark as to the source,
sponsorship, affiliation or endorsement of Respondent’s website. The Panel finds that such use is in bad
faith pursuant to Policy ¶4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶4(b)(iv) because the Respondent was using the confusingly similar domain name
to attract Internet users to its commercial website.); see also Identigene, Inc. v. Genetest Labs.,
D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent’s use
of the domain name at issue resolves to a website where similar services are
offered to Internet users likely to confuse the user into believing that the
complainant is the source of or is sponsoring the services offered at the
site.).
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 <extendedwarrantiesfortoyota.com>,
<extendedwarrantiesforlexus.com>, <lexusextendedwarranties.com>
and <toyotaextendedwarranties.com> domain names be TRANSFERRED
from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 10, 2005
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