Claim Number: FA0705000980697
Complainant is
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <lexusowners.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On May 21, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 11, 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@lexusowners.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <lexusowners.com> domain name is confusingly similar to Complainant’s LEXUS mark.
2. Respondent does not have any rights or legitimate interests in the <lexusowners.com> domain name.
3. Respondent registered and used the <lexusowners.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Toyota Motor
Sales U.S.A., Inc. is a wholly-owned subsidiary of Toyota Motor Corporation (a
Japanese corporation). Complainant’s
parent company has registered the LEXUS mark with the United States Patent and
Trademark Office (“USPTO”) (Reg. No. 1,574,718 issued January 2, 1990). Through an importer agreement, Complainant is
the exclusive
Respondent registered the <lexusowners.com>
domain name on
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.
The Panel finds that Toyota
Motor Corporation’s registration of the LEXUS mark with the USPTO
sufficiently establishes its rights in the mark pursuant to Policy ¶
4(a)(i). See The Hershey Co.,
Hershey Chocolate & Confectionery Corp. and Hershey Canada, Inc. v. Reaves,
FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that complainant established
rights in the KISSES mark by registering it with the United States Patent and
Trademark Office); see also Fossil, Inc. v. Vilyus, FA 969285 (Nat. Arb.
Forum
Prior panels have held that Complainant, a wholly-owned
subsidiary, has standing to enforce the trademark rights of its parent
corporation under the Policy. See
Toyota Motor Sales U.S.A., Inc. v. Mwangi, D2003-0623 (WIPO, Oct. 16, 2003) (“The
Panel is satisfied that Complainant has sufficient standing to assert a claim.”);
see also Toyota Motor Sales, U.S.A., Inc. v. Fleetrates.com, FA
568488 (Nat. Arb. Forum Nov. 21, 2005) (finding that although Complainant is not the owner
of the trademarks, which are owned by its parent, Complainant has standing to
bring the complaint).
Respondent’s <lexusowners.com> domain name is confusingly similar to Complainant’s LEXUS mark pursuant to Policy ¶ 4(a)(i) because the domain name contains the LEXUS mark in its entirety, adds the term “owners,” and adds the generic top-level domain “.com” which is not enough to distinguish the domain name from the registered mark. See Ferrari S.p.A. v. Am. Entm’t Group, Inc, D2004-0673 (WIPO Oct. 10, 2004) (“[T]he addition of the term ‘owner’ [to complainant’s FERRARI mark] is not deemed sufficient to prevent the risk of confusion.”); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent has no rights or legitimate interests in the <lexusowners.com> domain name. Complainant therefore has made a prima facie case in support of its allegations and the burden subsequently shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). Since Respondent failed to respond to the Complaint, the Panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion); 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.”). Nevertheless, the Panel will examine the record to determine if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent is using the <lexusowners.com> domain name to divert Internet users to a website containing a directory of links for competing auto manufacturers and auto sales and leasing businesses. Consequently, Respondent is not offering any goods or services on its website at the <lexusowners.com> domain name because it contains only links to third-party websites. Such use of the disputed domain name does not constitute a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i), or a legitmate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant asserts that
Respondent is not authorized to use Complainant’s LEXUS mark and that Respondent is in no way connected with
Complainant. Moreover, the information
in the record, including Respondent’s WHOIS information, does not suggest that
Respondent is commonly known by the <lexusowners.com>
domain name. Therefore, the Panel finds
that Respondent is not commonly known by the disputed domain name under Policy
¶ 4(c)(ii). See Williams-Sonoma, Inc. v.
Fees, FA 937704 (Nat. Arb. Forum Apr.
25, 2007) (“Respondent is not commonly
known by the <potterybarn.org> domain name, because the WHOIS information
lists ‘Kurt Fees’ as the registrant, and nothing else suggests that respondent
is commonly known by the domain name in dispute.”); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Respondent is using the <lexusowners.com>
domain name, which is confusingly similar to Complainant’s LEXUS mark, to
divert Internet users seeking Complainant’s automobile services to a website containing links to
competing automobile websites.
The Panel infers that Respondent earns click-through revenues for each
Internet user that is diverted to the third-party websites. Such
use of Complainant’s mark and its goodwill for Respondent’s own commercial gain
is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Sea
World, Inc. v. JMXTRADE.com, FA 872052 (Nat. Arb. Forum Feb. 12, 2007)
(finding that the respondent registered and used the <shamu.org> domain
name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was profiting
from the goodwill of the SHAMU mark by diverting Internet users to its own
commercial “links page” website).
Respondent is using a domain name, that displays
Complainant’s mark numerous times, to operate a commercial website featuring a
directory of links. Due the fame of
Complainant’s mark and its obvious connection to Complainant’s well-known automobiles,
the Panel finds such use of Complainant’s mark indicates opportunistic bad
faith under Policy ¶ 4(a)(iii). See
Harrods Ltd. v. Harrod’s Closet,
D2001-1027 (WIPO Sept. 28, 2001) (finding that where a mark is so “obviously
connected with well-known products,” its very use by someone with no connection
to these products can evidence opportunistic bad faith); see also Singapore
Airlines Ltd v. P & P Servicios de Communicacion S.L., D2000-0643 (WIPO Aug. 29, 2000) (“The domain name
‘<singaporeairlines.com>’ is so obviously connected with a well-known
airline that its very registration and use by someone with no connection to the
airline suggests opportunistic bad faith.
Indeed, it is hard to imagine a more blatant exercise in
‘cybersquatting.’”).
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 <lexusowners.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated:
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