Toyota of El Cajon v. Toyota of El Cajon c/o Cobalt Domains and The Cobalt Group, Inc.
Claim Number: FA0605000712323
Complainant is Toyota of El Cajon (“Complainant”), represented by Joshua M. Heinlein, of Luce, Forward, Hamilton & Scripps, 600 West Broadway, Suite 2600, San Diego, CA 92101. Respondent is Toyota of El Cajon c/o Cobalt Domains and The Cobalt Group, Inc. (“Respondent”), 2200 First Ave. S., Seattle, WA 98134.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <elcajontoyota.com>, registered with Emarkmonitor Inc. d/b/a Markmonitor.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 22, 2006; the National Arbitration Forum received a hard copy of the Complaint on May 25, 2006.
On May 23, 2006, Emarkmonitor Inc. d/b/a Markmonitor confirmed by e-mail to the National Arbitration Forum that the <elcajontoyota.com> domain name is registered with Emarkmonitor Inc. d/b/a Markmonitor and that Respondent is the current registrant of the name. Emarkmonitor Inc. d/b/a Markmonitor has verified that Respondent is bound by the Emarkmonitor Inc. d/b/a Markmonitor 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 June 1, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 21, 2006 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@elcajontoyota.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 26, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <elcajontoyota.com> domain name is confusingly similar to Complainant’s TOYOTA OF EL CAJON mark.
2. Respondent does not have any rights or legitimate interests in the <elcajontoyota.com> domain name.
3. Respondent registered and used the <elcajontoyota.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Toyota of El Cajon, has been a well-known automobile dealer, specializing in Toyota automobiles, in San Diego County, California for over thirty years. For the duration of its operations, Complainant has utilized the TOYOTA OF EL CAJON mark in connection with its business. Complainant uses TOYOTA OF EL CAJON on the exterior building signs at its automobile dealership, as well as in an extensive advertising campaign including television, radio and print advertisements. Complainant has used the <toyotaofelcajon.com> domain name for the last six years in connection with a website providing information about Complainant’s goods and services. Complainant originally held the registration of the disputed <elcajontoyota.com> domain name, but inadvertently allowed the registration to lapse approximately two years ago.
Respondent registered the <elcajontoyota.com> domain name approximately two years ago, shortly after Complainant inadvertently allowed its registration of the disputed domain name to lapse. The disputed domain name is currently inactive and does not resolve to any content.
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.
Complainant is not required to hold a trademark registration of its mark with a government authority to establish rights in the mark pursuant to Policy ¶ 4(a)(i). See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant has established common law rights in its TOYOTA OF EL CAJON mark through continuous and exclusive use of the mark in connection with its Toyota automobile dealership. Complainant’s use of the TOYOTA OF EL CAJON mark in an extensive advertising campaign including television, radio and print advertising, as well as in product literature and other marketing materials connected with its Toyota automobile dealership, has generated substantial public goodwill in its business. Therefore, the Panel finds that Complainant has established sufficient secondary meaning in the TOYOTA OF EL CAJON mark to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established); see also Keppel TatLee Bank v. Taylor, D2001-0168 (WIPO Mar. 28, 2001) (“[O]n account of long and substantial use of [KEPPEL BANK] in connection with its banking business, it has acquired rights under the common law.”).
Respondent’s <elcajontoyota.com> domain name is confusingly similar to Complainant’s TOYOTA OF EL CAJON mark. The disputed domain name incorporates the primary elements of Complainant’s mark, without the preposition “of,” and transposes the words “toyota” and “el cajon,” before adding the top-level domain “.com.” The Panel finds that such minor alterations are not sufficient to overcome the confusing similarity between the disputed domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”); see also Reed Elsevier Props. Inc. v. Weekly Publishers, FA 151536 (Nat. Arb. Forum May 5, 2003) (“Inverting or transposing words in a trademark is not sufficient to avoid confusing similarity because the two words create the same commercial impression and meaning.”); see also Saul Zaentz Co. v. Dodds, FA 233054 (Nat. Arb. Forum Mar. 16, 2004) (the domain name merely omitted the definite article “the” and the preposition “of” from the complainant’s mark and thus, failed to “sufficiently distinguish the domain name from the mark pursuant to Policy ¶ 4(a)(i)”); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(i).
Complainant alleges that Respondent lacks rights or
legitimate interests in the <elcajontoyota.com> domain name, thus
creating a prima facie case.
Once Complainant has made a prima facie case, the burden shifts
to Respondent to demonstrate that it does have rights or legitimate interests
in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel may view Respondent’s failure to
respond as evidence that Respondent lacks rights or legitimate interests in the
disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because
Complainant’s Submission constitutes a prima facie case under the
Policy, the burden effectively shifts to Respondent. Respondent’s failure to
respond means that Respondent has not presented any circumstances that would
promote its rights or legitimate interests in the subject domain name under
Policy ¶ 4(a)(ii).”); see also Am. Express Co. v.
Fang Suhendro, FA 129120 (Nat. Arb. Forum
Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed
that Respondent lacks all rights and legitimate interests in the disputed domain
name.”). The Panel will evaluate the
available evidence to determine whether or not Respondent has rights or
legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Respondent lacks rights or legitimate interests in the <elcajontoyota.com> domain name because Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). Currently, the <elcajontoyota.com> domain name is inactive and fails to resolve to a website containing any content. Further, the domain name has remained inactive for approximately two years and there is no evidence that Respondent is making any preparations to use the disputed domain name. The Panel finds that such passive holding, without any demonstrable preparations for use, is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interests can be found when the respondent fails to use disputed domain names in any way); see also Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”).
Additionally, it is not apparent from the available evidence that Respondent is commonly known by the <elcajontoyota.com> domain name. Complainant asserts that it has no relationship or agreement with Respondent that would justify Respondent’s use of Complainant’s mark. Further, while Respondent appears to be known as Toyota of El Cajon based on WHOIS information identifies Respondent as “Toyota of El Cajon,” there is no corroborating evidence suggesting that Respondent is actually commonly known by anything similar to the disputed domain name or Complainant’s TOYOTA OF EL CAJON mark. Thus, lacking evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain name, and does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also City News & Video v. Citynewsandvideo, FA 244789 (Nat. Arb. Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo,’ there is no evidence before the Panel to indicate that Respondent is, in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶ 4(c)(ii).”); see also Compagnie de Saint Gobain v. Com-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).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Respondent is not currently using the <elcajontoyota.com> domain name for any purpose. The disputed domain name does not resolve to a website containing any content. The Panel finds that passive holding of a disputed domain name for approximately two years is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that passive holding of a domain name permits an inference of registration and use in bad faith).
Further, Respondent registered the disputed domain name after Complainant inadvertently allowed its registration of the domain name to lapse. The Panel finds that such opportunistic registration can be evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See BAA plc v. Spektrum Media Inc., D2000-1179 (WIPO Oct. 17, 2000) (finding bad faith where the respondent took advantage of the complainant’s failure to renew a domain name); see also Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(iii)
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <elcajontoyota.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: July 6, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum