National Arbitration Forum

 

DECISION

 

Toyota Motor Sales, U.S.A., Inc. v. Fleetrates.com a/k/a company, fleetrates a/k/a dealer.com

Claim Number: FA0509000568488

 

PARTIES

Complainant is Toyota Motor Sales, U.S.A., Inc. (“Complainant”), represented by Bernard R. Gans, of Jeffer, Mangels, Butler & Marmaro, LLP, 1900 Avenue of the Stars, Seventh Floor, Los Angeles, CA 90067.  Respondent is FleetRates.com a/k/a company, fleetrates a/k/a dealer.com (“Respondent”), represented by Tracy Doering, of FleetRates.com, 6240 West 3rd, Suite 202, Los Angeles, CA 90036.

 

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain names at issue are <lexusus.com> and <joelexus.com>, registered with Network Solutions, Inc.

 

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

 

The Honourable Neil Anthony Brown QC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on September 28, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 3, 2005.

 

On September 30, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <lexusus.com> and <joelexus.com> domain names are 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 October 11, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 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@lexusus.com and postmaster@joelexus.com by e-mail.

 

A timely Response was received and determined to be complete on October 31, 2005.

 

On November 7, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.

 

RELIEF SOUGHT

 

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

 

A.     Complainant

 

Complainant is the United States subsidiary of the Japanese Toyota Motor Corporation that owns the LEXUS trademark and makes the LEXUS range of automobiles.  Complainant imports and distributes the LEXUS range into the USA (except  Hawaii) and elsewhere, and it has a license to use the LEXUS trademark.  It contends that in breach of the Policy, Respondent has taken this mark and combined it with the letters “us” to make the domain name <lexusus.com> and with the word “joe” to make the domain name <joelexus.com>, both of which are confusingly similar to the trademark.  It also contends that Respondent has no rights or legitimate interests in the domain names and that Respondent registered and has been using them in bad faith by trading on Complainant’s name and standing in the automobile industry, creating confusion in the minds of potential internet customers and diverting them to the website of Respondent and its member dealers and, hence, to sellers of other and competing brands of automobile.  Accordingly, Complainant says that the remedy for these breaches of the Policy should be that the domain names be transferred from Respondent to Complainant.

 

B.     Respondent

 

Respondent contends that it did not intend to confuse internet users, and that its real intention in choosing the names was to help its dealer members promote their inventory of Lexus products.  It says that the way it operates is to have a network of affiliated dealerships throughout the United States and that the “us” in <lexusus.com> stands for US, as in the United States of America.  It operates a service to connect prospective car buyers with the affiliated Lexus franchise dealers so that they may then sell the customer a vehicle.  Thus it claims that its goal is “not to steer clients away from purchasing a Lexus, but rather towards purchasing a Lexus or Toyota Product.”

 

Originally, this process was operated directly through the two contentious domain names, but they were eventually merged with <fleetrates.com>, which now administers the process.  As to why it is continuing to use them, it says that both <lexusus.com> and <joelexus.com> had become so well known to their clients that, as a service to them, the domain names have been retained and are now pointed to the <fleetrates.com> website.

 

Respondent also says it has never intended to tarnish Complainant’s trademarks, to sell the domain names or prevent Complainant from using them or otherwise to disrupt Complainant’s business or confuse potential clients.

 

Respondent maintains that these points show that it has a legitimate right or interest in the domain name and that it did not register or use them in bad faith.

 

FINDINGS

 

1.      Complainant is the United States subsidiary of the Japanese Toyota Motor Corporation (TMC) that owns the LEXUS trademark and makes the LEXUS range of automobiles. Complainant is the exclusive importer and distributor of the LEXUS range into the USA (except the State of Hawaii) and certain other places on behalf of TMC and it has an exclusive license to use the LEXUS trademark in its territory.

 

2.      Complainant is, thus, the licensee in the USA (except Hawaii) of two subsisting registrations with the United States Patent and Trademark Office (“USPTO”) for the mark LEXUS owned by TMC, as follows:

 

a.       Registration No. 1,574,718 for the trademark LEXUS, registered on January 2, 1990, for automobiles; and

 

b.      Registration No. 1,675,339 for the service mark LEXUS, registered on February 11, 1992, for repair and maintenance services for automotive vehicles and automotive vehicle leasing services.

 

3.      Complainant operates a website at <lexus.com> for the public to locate local dealerships and otherwise obtain information on the LEXUS range of automobiles.

 

4.      Respondent registered the domain name <lexusus.com> on June 1, 2003 and the domain name <joelexus.com> on April 25, 2003.

 

5.      Respondent operates a business in the United States through a network of automobile dealers who are authorised franchisees of various manufacturers and affiliated with Respondent.  Its essential element is to connect potential buyers of new and used motor vehicles with its affiliated dealers who have the vehicles in their inventory.  It charges the dealers a “start up fee” of $199 to become affiliated with the scheme and a monthly fee of $299 to remain affiliated and have business directed to them, and it requires customers to pay “an annual auto club membership fee,” which is presently $29.95 before they can buy a vehicle through the scheme.  Potential buyers use Respondent’s website at <fleetrates.com> to look at vehicles that are on offer and then, through Respondent, fix the price, contact the dealer, and finalise the purchase and delivery of the vehicle.  This process may be commenced by using either of the contentious domain names, which are diverted to <fleetrates.com>, or by going directly to <fleetrates.com>.  The range of new vehicles that is presently on offer includes the Lexus but also includes 23 other brands.  Examples of each vehicle are given on the website, together with their salient features and qualities and the prices for buying or leasing them.  The scheme also applies to pre-owned motor vehicles which are for sale by dealers, and it also enables customers to sell their own pre-owned vehicles through the scheme if they join the auto club and pay the membership fee.  The website also provides current information and reviews of motor vehicles, both Lexus and others.

 

6.      The services offered by Respondent on its website, therefore, include those covered by the goods and services specified in the registration of Complainant’s trademark and service mark.

 

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 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 names 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 names; and

(3)   the domain names have been registered and are being used in bad faith.

 

Identical and/or Confusingly Similar

 

The Panel finds that both of the domain names <lexusus.com> and <joelexus.com> are confusingly similar to both of the registered United States trademarks relied upon by Complainant and referred to above.

 

That is so because in each case the domain name incorporates the entirety of the trademarks, namely the word LEXUS.  Where a domain name incorporates the whole of a trademark and spells it the same way or such that it is pronounced the same, that is an important first step towards concluding that the domain name is similar to the trademark.

 

It is true that in the case of <lexusus.com> the letters “us” have been added to the trademarks to create the domain name and that in the case of <joelexus.com> the word “joe” has been added as a prefix, but in neither case does this detract from the similarity of the domain names to the trademark.  The substance of the domain names remains the same and neither addition detracts sufficiently from the trademark to give the domain names a different colour or thrust.  It has been held many times that it does not absolve a domain name registrant on this issue if, as in the present case, it takes the entirety of a trademark and then adds a descriptive or generic word that simply describes the business or trade of the trademark owner or its geographic location.  See Rada Mfg.Co. v. Press, D2004-1060 (WIPO Feb. 24, 2005); AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000).   For several other cases cited by Complainant where it was Complainant in previous UDRP proceedings, see Toyota France v. Computer-Brain, D2002-0002 (WIPO Mar. 22, 2002) (<toyota-occasions.com> held to be confusingly similar to TOYOTA trademark);  Toyota Motor Sales U.S.A., Inc. v. Hamid, D2001-0032 (WIPO, Mar. 28, 2001) (where the offending domain names included geographic locations and two of them were <usalexus.com> and <uslexus.com>); Toyota Motors Sales U.S.A., Inc. v. Indian Springs Motor, FA 157289 (Nat. Arb. Forum, Jan. 11, 2005) (<usedtoyotalexus.com>); Toyota Motor Sales U.S.A., Inc. v. Mwangi, D2003-0623 (WIPO, Oct. 16, 2003) (<lexusmail.com>, <mylexus.com>); Toyota Motor Sales U.S.A., Inc. v. Pick Pro Parts Inc., D2005-0562 (WIPO, July 20, 2005) (<lexus--parts.com>).

 

In the present case, the addition of the letters “us” to the well-known LEXUS brand of motor vehicle could only be interpreted by the average consumer to mean the American website of the LEXUS motor vehicle.  The use of the word “joe” as a prefix to “Lexus” could only be interpreted by the average consumer to mean a website about the LEXUS motor vehicle for the average person or “the average Joe.”[1] Accordingly, in each case, the addition simply describes one aspect of the business of the trademark owner, in the former case that the domain name leads to the United States website of Lexus and, in the latter case, that it will lead to information about Lexus for the average person.

 

More importantly, neither addition differentiates the domain name sufficiently from the trademark to negate the operation of ¶ 4(a)(i) of the Policy.

 

Not only are the two domain names similar to each of the two trademarks, but they are confusingly so.  This is so because the word Lexus is so dominant in each of the domain names that the average consumer would inevitably assume that they both refer to the well-known motor vehicle whose name is embodied in the trademark.  Indeed, Respondent seems to assert this rather than deny it.

 

However, Respondent argues that it never intended to confuse consumers, and that its real intention in choosing the names was to help its dealer members promote their inventory of LEXUS products.  Respondent’s intention will become relevant at a later stage; at this stage it is not relevant, for it has long been held that in deciding the issue of confusing similarity, the Panel should simply make a strict comparison of the wording of the domain name and the trademark and do so from an objective point of view, which the Panel has done in the present case.

 

The fact that the domain names also include the generic top-level domain suffix “.com” does not detract from the conclusion that the domain names are confusingly similar to the trademarks.  This has been decided on many occasions.  See, e.g., Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000).

 

Clearly, the trademarks relied on are trademarks in which Complainant has rights, for it has been held many times that registration with trademark authorities such as USPTO is sufficient to establish rights in the mark for the purposes of Policy ¶ 4(a)(i).  See, e.g., Innomed Techs. Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum, Feb. 18, 2004); Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003).  Although Complainant is not the owner of the trademarks, which are owned by its parent company, it has a license to use them in the United States and the other parts of its territory and is required under its licensing agreement to abate any infringements of the mark in its territory.  It therefore has standing to bring this Complaint.

 

Moreover, Complainant has already been held to have rights in the LEXUS mark for the purposes of UDRP proceedings.  See Toyota Motor Sales U.S.A., Inc. v. Hamid, D2001-0032 (WIPO, Mar. 28, 2001); Toyota Motors Sales U.S.A., Inc. v. Indian Springs Motor, FA 157289 (Nat. Arb. Forum, Jan. 11, 2005); Toyota Motor Sales U.S.A., Inc. v. Mwangi, D2003-0623 (WIPO, October 16, 2003); and Toyota Motor Sales U.S.A., Inc. v. Pick Pro Parts Inc., D2005-0562 (WIPO, July 20, 2005).

 

In the light of all of these findings, Complainant has made out its case under ¶ 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

 

If a complainant can make out a prima facie case that a respondent has no rights or legitimate interests in the domain name, the onus shifts to the respondent to prove on the balance of probabilities that it does have such rights or legitimate interests. See Compagnie General des Matieres Nucleaires v. Greenpeace Int’l., D2001-0376 (WIPO, May 14, 2001); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO, Aug. 21, 2000).

 

In the present case, Complainant has made out a prima facie case by showing that Respondent is using Complainant’s trademark LEXUS without its permission in two confusingly similar domain names, <lexusus.com> and <joelexus.com>, and that it is using the domain names and the website to which they resolve, <fleetrates.com>, to divert potential customers away from the official internet promotion of Lexus vehicles at <lexus.com> to Respondent’s site, where they would expect to find the same information about Lexus as at <lexus.com>, but where in fact they find information about both Lexus and also several rival brands of motor vehicles.  If that prima facie case is established, it means that Respondent's conduct is misleading and that it has been making an improper and unfair use of the domain names by trading on Complainant’s trademark to generate potential business for itself and Complainant’s rivals and competitors.

 

In reply to this prima facie case, Respondent says that it has a legitimate right and interest in the domain names, as it uses them “not to steer clients away from purchasing a Lexus, but rather towards purchasing a Lexus or Toyota product.”  Indeed, it says that its very purpose is “to promote Lexus product for our affiliated franchise dealerships nationwide” and “to connect franchised dealerships with potential car buyers” and that it would be counter-productive for it to tarnish the trade or service mark of LEXUS or TOYOTA.

 

The question for the Panel, then, is whether Respondent’s case justifies the conclusion that it has, within the meaning of Policy ¶ 4(a)(ii), a right or legitimate interest in respect of the domain names.  Policy ¶ 4(c) sets out three criteria, any one of which a respondent may use to establish a right or legitimate interest in the domain name. They are as follows: 

 

(i) Before any notice to the respondent of the dispute, it used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

 

(ii) The respondent has been commonly known by the domain name, even if it acquired no trademark or service mark rights; or

 

(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

Respondent may also rely on any other evidence in addition to that enumerated in Policy ¶ 4(c) that shows such a right or legitimate interest.

 

There is no evidence to suggest, for the purposes of Policy ¶ 4(c)(ii), that Respondent has been commonly known by either of the domain names, so that sub-paragraph need not be considered any further.

 

Sub-paragraphs (i) and (iii), however, raise more substantial questions and show the fundamental issue between the parties.  Complainant says that Respondent’s offering of goods and services via its domain name is not bona fide and that its use of the domain name is not legitimate because it has been trading on Complainant’s trademark LEXUS and attracting consumers to the its website by misleading them into believing that they were using Complainant's domain name and entering an official LEXUS website.

 

Respondent’s justification for using the domain names and the corresponding website is that its method of doing business amounts to a bona fide offering of goods and services within the meaning of sub-paragraph (i) and a legitimate fair use of the domain name within the meaning of sub-paragraph (iii).  In effect, Respondent is saying that it has a legitimate interest in using the domain names to promote its own business, which is bringing potential buyers and sellers of Lexus vehicles together, even if it is not authorized by Toyota to use the LEXUS mark in the domain names.

 

This controversial issue has developed from the equally controversial issue of whether an authorized reseller of branded goods can be making a bona fide offering of trademarked goods and services when he has not been authorized to use the trademark in his domain name.  In the present case, Respondent is not actually selling the goods, but is acting as agent between buyer and seller and endeavouring to bring them together to effect a sale, so the situation is analogous.

 

The Oki Data principle

 

The subject was recently discussed in Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc, D2005-0562 (WIPO July 20, 2005), where the issue was whether the owner of the domain name <lexus--parts.com>, an unauthorized dealer in Lexus parts, was making a bona fide offering of goods when it directed the domain name to its website <pickproparts.com>, where Lexus parts could be bought, but alongside parts for more than thirty other brands.  The Panel relied on the decision in Oki Data Ams., Inc, v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) which had held, as was summarized in the Toyota case, “that the use of a manufacturer’s trademark as a domain name by a dealer or reseller (an authorized dealer in that case) should be regarded as a bona fide offering of goods or services within the meaning of paragraph 4(c)(iii) of the Policy.”

 

In the Toyota case, however, that position was taken even further than it had been in Oki Data, for it decided that not only was it bona fide for an authorised dealer or reseller to use a trademark to promote its wares, and not only did that give him a legitimate interest in the domain name, but the same principle applied “in cases, such as this one, where the respondent is not an authorized dealer and otherwise has no contractual relationship with the mark holder.”

 

The Panel is not convinced that either the Oki Data principle or its extension in the Toyota case is correct, for they both seem inconsistent with the nature of a trademark and the rights that go with it.  Nevertheless, both positions have enlisted some support.  Thus, in the Toyota case, a number of decisions are cited where the Oki Data criteria have been applied, including another recent case, Volvo Trademark Holding AB v. Auto Shivuk, D2005-0447 (WIPO June 8, 2005).  In the Volvo case, the panelist observed the following:

 

The factors developed by the Oki Data Panel have been adopted by a number of UDRP panels . . . and have also been applied in cases where there was no contractual relationship between the complainant and the respondent. (See Dr. Ing. h.c. F. Porsche AG. v. Del Fabbro Laurent case, WIPO Case No. D2004-0481 - <porsche-buy.com>; Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946 – <discount-marlboro-cigarettes.com>).

 

The Panel in the Volvo case decided to follow “the majority view put forward in the Oki Data case that a reseller or other sales agent can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if the use fits the above identified requirements.”

 

Moreover, like the Toyota case, the Volvo case added that “the Oki Data criteria are appropriate to be applied in cases, as the present case, where Complainant has not authorized Respondent to act as its distributor or and there is no contractual relationship between the complainant and the respondent.”

 

Those cases go a long way, but they also agree that the “majority view” will not apply at all unless the facts of any given case meet the Oki Data criteria.  In Oki Data itself, there was a bona fide offering of goods and services because the website promoted only Oki Data parts and prominently disclosed that it was merely a repair center and not Oki Data itself.  Likewise, in the Volvo case, there was a bona fide offering because the website offered only trademarked Volvo parts.  But in the Toyota case there was no bona fide offering: the website offered Toyota parts, but it also offered parts from 30 other competitors to Lexus.

 

The criteria to be applied

 

The question, then, is whether the facts in the present case measure up to the Oki Data criteria.  The criteria as set out in Oki Data itself are as follows:

 

- Respondent must actually be offering the goods or services at issue . . . .

 

-  Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.  Nikon, Inc. v. Technilab, D2000-1774 (WIPO Feb. 26, 2001) (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Kanao v. J.W. Roberts Co., 0109 (CPR July 25, 2001) (bait and switch is not legitimate).

 

- The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.  E.g., Houghton Mifflin Co. v. Weatherman, Inc., D2001-0211 (WIPO April 25, 2001); . . . . R.T. Quaife Eng’g v. Luton, D2000-1201 (WIPO Nov. 14, 2000) (no bona fide offering because domain name <quaifeusa.com> improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; . . . .); Easy Heat, Inc. v. Shelter Prods., D2001-0344 (WIPO June 14, 2001) . . . .

 

- The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name . . . .

 

Applying the criteria to the facts of the present case

 

Coming now to the facts of the present case, it is clear that they do not meet the criteria.

 

On the evidence, Respondent’s conduct fails to meet one and probably two of these factors.  Respondent argues that its purpose is actually to “steer” potential buyers to buy a Lexus, “to promote Lexus product,” “to promote the inventory of our affiliated franchised Lexus dealerships nationwide,” and that it has “benefited” Toyota by “directing” clients to Lexus.  The problem with these stated objectives is that they are not an accurate reflection of the facts.  An examination of the website <fleetrates.com> makes it clear that Respondent is not using the site solely to sell only Lexus trademarked goods.  Moreover, there is nothing on the website to suggest that Respondent is steering potential buyers to a Lexus and there is a lot to suggest that, if they came to the website via <lexusus.com> or <joelexus.com>, they are being steered away from the Lexus.

 

First, when consumers arrive at the website, they are presented with a rolling “vehicle slideshow” which proceeds to display not only Lexus motor vehicles but 24 separate makes of luxury vehicles including the Lexus.  This fact alone puts Respondent outside the Oki Data criteria, for it is using the LEXUS trademark in its domain names to sell 23 brands of vehicle other than and in addition to Lexus.  This clearly is not promoting Lexus or steering or directing buyers towards the Lexus.

 

Secondly, the slideshow display is in alphabetical order.  Having attracted the potential buyer through the “Lexus” domain names, the first group of vehicles presented for his consideration is not the Lexus, but the Acura, followed by Aston Martin and Audi as well as other brands in alphabetical order, including Lexus and down to Volvo.  The Panel draws the conclusion from this structure that the site is certainly not there to “promote” Lexus and that at least some consumers who may have come to the site in search of Lexus or indeed any other brand would linger over the slideshow and be tempted to consider the attractions of a different brand from the one they were originally seeking.  The index to the range certainly enables the consumer to select Lexus and go straight to it, and Lexus is certainly one of ten brands on a selection bar further down the page and spoken highly of, but the predominant notion promoted on the site is that there is a wide array of offerings not confined to Lexus and of which Lexus in only a small part.  Thus, of the 928 motor vehicles displayed on the slideshow, 409 are Nissan, 218 are Infiniti, and 33 are Lexus.  On the first page of “New Vehicles,” the only brand specifically promoted is the Mercedes Benz.  So the thrust of the site is not merely to promote brands of automobile in addition to Lexus, but to promote them as the predominant offerings on the website.

 

Thirdly, not only is the site not promoting the trademarked goods exclusively or predominantly, but there is a very real danger that it could be used for a “bait and switch” exercise, to lure potential Lexus buyers to the site and then encourage them to buy a different brand.  That is neither bona fide nor legitimate on any test.  Thus, potential buyers enter the site because the domain names appear to lead to Lexus sites, and, if the buyers reject the initial blandishments of rival brands and go to specific Lexus vehicles for sale, even then the site does not “promote” the Lexus or steer the buyer to the Lexus.  If the potential buyer insists, for instance, on seeing the details of the 2006 Lexus GS 300 that is currently for sale, its details are brought up, but with them come an offering of five “Other Similar Vehicles.” a Mercedes, three Jaguars, and a Lexus.  If one seeks the 2006 Lexus GX 470 that is for sale and brings up its details, one is presented with five “Other Similar Vehicles,” a Lexus, a Land Rover, 2 Porsches, and a Mercedes.  Indeed, this seems to be the basis of the modus operandi of the website, for the first instruction given to buyers is “select a vehicle make.”  This is a potential “bait and switch” operation, where the consumer has been baited by a “Lexus” domain name and is then sought to be switched at least to consider buying a rival brand.  Such a use of the domain name is neither bona fide or legitimate.

 

The facts also show that another of the Oki Data criteria has probably not been met, namely that the site should accurately disclose the registrant’s relationship with the trademark owner and, if necessary, carry a disclaimer to correct any misconceptions.  In the present case, Respondent attracts its users by using “Lexus” domain names, and one of them implies that it is the Lexus United States site.  This situation is analogous to the situation in R.T. Quaife Eng’g v. Luton, D2000-1201 (WIPO Nov. 14, 2000), where the Panel said that the domain name <quaifeusa.com> suggested that the associated site “is the U.S. presence for Quaife, and the place where U.S. consumers can go to get all their questions about Quaife products answered.”  The other domain name suggests that is a Lexus site for everyman.  Both of these inferences were incorrect and the suggestion that they were Lexus sites was compounded by the further assertion on the website that it dealt with a “Factory Authorized Certified Dealer Network.”  The inference that the site had some official standing could well have been corrected by a statement of the relationship with Lexus and the other manufacturers, a disclaimer or at least a statement on how a “Lexus” domain name led to a website promoting 23 other brands as well.  Their absence tends to tilt the scales against the use of the “Lexus” domain names being seen as bona fide or legitimate.

 

Accordingly the Panel is unable to accept Respondent’s argument that it has a right or legitimate interest in the domain names that comes from its role in allegedly promoting the Lexus motor vehicle or steering or directing potential buyers towards one because it is not doing so.  It is using the LEXUS trademark, without permission, to promote 24 brands of vehicle, only one of which is the Lexus; and it is doing so contrary to warnings against doing so in letters from Complainant’s attorneys.

 

In coming to the conclusion that Respondent has no right or legitimate interest in the domain name, the Panel is also influenced as follows by the facts:

 

(i)                  the domain name <lexusus.com> was registered on June 1, 2003 and <joelexus.com> was registered on April 25, 2003, both being long after the trademark was first registered (1990) and first used (1989);

 

(ii)                the domain names are clearly being used to divert internet traffic to Respondent’s commercial site.  Toyota Motor Sales U.S.A., Inc. v. Indian Springs Motor, FA 157289 (Nat. Arb. Forum, Jan. 11, 2005);

 

(iii)               Respondent is not related to or licensed by Complainant to use its trademark as it is doing, or at all.  Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000).

 

These matters reinforce the conclusion that there was not in this case a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).  Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003).

 

Complainant has therefore made out its case on the second element that must be established.

 

Registration and Use in Bad Faith

 

Policy ¶ 4(b) lists four criteria, the proof of any one of which will satisfy the requirements of Policy ¶ 4(a)(iii), i.e. that the domain name has been registered and is being used in bad faith. Other factors may also be relied on to show bad faith.

 

The Panel is not satisfied that a case has been made out under Policy ¶ 4(b)(i) - (iii), as there is insufficient evidence to justify such findings.

 

However, the Panel has come to the conclusion that Respondent’s conduct comes within the provisions of Policy ¶ 4(b)(iv).

 

Within the words of Policy ¶ 4(b)(iv), Respondent has clearly used the domain names to attract users to its website <fleetrates.com>, and the whole project is clearly part of a business that is being undertaken for commercial gain, for buyers must pay an “annual auto club membership fee of only $29.95” and sellers must pay a start up fee of $199 and a monthly fee of $299.  The only remaining issue is whether Respondent has attempted to attract internet users by creating a likelihood of confusion with Complainant’s mark as to its association with Respondent’s site or the products being offered on it.

 

It will be seen from the earlier discussion that the Panel’s view is that this is exactly what has been done in this case.  Respondent took Complainant’s trademark, which had become progressively well known since 1989, and used it in two domain names to give the impression that the websites to which they led were, in one form or another, Lexus sites; one actually being the Lexus site for the USA and that they were sourced from, sponsored by, affiliated with and conceivably endorsed by Lexus itself.  The confusion thus created was compounded when it became apparent, as inevitably it must have, that the website carried such a small proportion of Lexus vehicles that it could not in any sense be honestly or accurately described as the Lexus site for the USA, or even a Lexus site of any sort, without doing considerable violence to the language. 

Such activity has regularly been held by UDRP panels to constitute both bad faith registration and use under Policy ¶ 4(b)(iv).  See, e.g., Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum, Aug. 29, 2000); Samsonite Corp. v. Colony Holdings, FA 94313 (Nat. Arb. Forum, Apr. 17, 2000); Black and Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002); WeddingChannel.com v. Vasiliev, FA 156716 (Nat. Arb. Forum, June 12, 2003).  On the specific point that it is bad faith for a registrant to hold himself out as being a foreign company’s representative in the USA when he is not, see R.T. Quaife Eng’g  v. Luton, D2000-1201 (WIPO Nov. 14, 2000).

 

Accordingly, as one of the criteria set out in Policy ¶ 4(b) has been made out, Complainant succeeds on this element.

 

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 <lexusus.com> and <joelexus.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

 

The Honorable Neil Anthony Brown QC

Panelist

Dated: November 21, 2005