Toyota Motor Sales, U.S.A., Inc. v. Above.com Domain Privacy
Claim Number: FA1312001535107
Complainant is Toyota Motor Sales, U.S.A., Inc. (“Complainant”), represented by Christine L. Lofgren of Toyota Motor Sales, U.S.A., Inc., California, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toyotaofcolumbia.com>, registered with Above.com Pty Ltd.
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.
Ho Hyun Nahm as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 17, 2013; the National Arbitration Forum received payment on December 17, 2013.
On December 19, 2013, Above.com Pty Ltd confirmed by e-mail to the National Arbitration Forum that the <toyotaofcolumbia.com> domain name is registered with Above.com Pty Ltd and that Respondent is the current registrant of the name. Above.com Pty Ltd has verified that Respondent is bound by the Above.com Pty Ltd registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 20, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 9, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@toyotaofcolumbia.com. Also on December 20, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
i. Respondent is not, and has never been, commonly known by the name “TOYOTA of Columbia.”
ii. The disputed domain name is used for links related to vehicles, which links may generate advertising revenue for Respondent.
i. Respondent has registered or has acquired the disputed domain name primarily for the purpose of selling or transferring the domain name to Complainant or to another third party, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name.
ii. Respondent has prevented Complainant and its authorized dealers from registering the same domain name.
iii. Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location.
iv. Respondent was aware of the TOYOTA mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant established that it had rights in the mark contained in the disputed domain name.
Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
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."
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.
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.”).
Complainant contends that it is the exclusive importer and distributor of TOYOTA automobiles throughout the United States. Complainant argues that it is the owner of trademark registrations with the USPTO for the TOYOTA mark (e.g., Reg. No. 843,138, registered January 30, 1968). See Complainant’s Exhibit B. The Panel finds that although Respondent appears to reside and operate in Australia, Policy ¶ 4(a)(i) does not require that Complainant register its mark in the jurisdiction in which Respondent operates, so long as it can establish rights in the mark in some jurisdiction. See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Consequently, the Panel concludes that Complainant has adequately demonstrated rights in the TOYOTA mark under Policy ¶ 4(a)(i) through its registration with the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Complainant alleges that Respondent’s <toyotaofcolumbia.com> domain name consists of the TOYOTA mark in its entirety with the addition of the geographically descriptive phrase “of Columbia” and the gTLD “.com.” The Panel holds that Respondent’s inclusion of a geographic phrase does not distinguish the domain name from Complainant’s TOYOTA mark pursuant to Policy ¶ 4(a)(i). See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). The Panel also determines that Respondent’s addition of a gTLD is inconsequential to a Policy ¶ 4(a)(i) analysis. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (holding that attaching a gTLD is “unable to create a distinction capable of overcoming a finding of confusing similarity”). Thus, the Panel finds that Respondent’s <toyotaofcolumbia.com> domain name is confusingly similar to Complainant’s TOYOTA mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See 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 UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first 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 interests in the subject domain names.”).
Complainant asserts that Respondent is not, and has never been, commonly known by the name “TOYOTA of Columbia.” Complainant contends that the WHOIS record identifies Respondent as “Above.com Domain Privacy.” See Complainant’s Exhibit D. Complainant alleges that Respondent has no connection with Complainant or its parent company, and is not authorized to use Complainant’s trademark in connection with its business. Therefore, the Panel holds that Respondent is not commonly known by the <toyotaofcolumbia.com> domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant claims that Respondent’s <toyotaofcolumbia.com> domain name is used for links related to vehicles, which links may generate advertising revenue for Respondent. The Panel observes that Respondent’s disputed domain name resolves to a webpage featuring competing hyperlinks titled “Pre Owned Toyota,” “Toyota Dealerships,” “Used Cars,” and more. See Complainant’s Exhibit E. Complainant contends that Respondent is not entitled to use the TOYOTA mark in connection with advertising, and therefore, use of the TOYOTA mark in the disputed domain name is not a legitimate or fair use. In United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007), the panel found that “[t]he disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors. The Panel finds this to be neither a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).” Therefore, the Panel agrees that Respondent is not using the <toyotaofcolumbia.com> domain name for a Policy ¶ 4(c)(i) bona fide offering of goods or services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
Complainant argues that Respondent has registered or has acquired the <toyotaofcolumbia.com> domain name primarily for the purpose of selling or transferring the domain name to Complainant or to another third party, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the domain name. Complainant alleges that in this case, Bryan Bogue, a representative of Complainant’s distributor, was willing to reimburse Respondent’s registration fees/costs, yet Respondent’s representative stated “It will cost them $3k to get the name via UDRP, so if you prefer something cheaper, faster, and with a lot less work, send me an offer.” See Complainant’s Exhibit G. Previous panels have held that a respondent’s registration of a domain name for the purpose of selling it in excess of out-of-pocket costs demonstrates bad faith registration pursuant to Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs). Accordingly, the Panel concludes that Respondent registered the <toyotaofcolumbia.com> domain name in bad faith pursuant to Policy ¶ 4(b)(i).
Complainant asserts that by using the <toyotaofcolumbia.com> domain name in an attempt to sell it, and in connection with a placeholder web page with advertising links Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location. The Panel notes that Respondent’s disputed domain name links to a website that contains competing hyperlinks such as “Pre Owned Toyota,” “Toyota Dealerships,” “Used Cars,” and others. See Complainant’s Exhibit E. Thus, the Panel finds that Respondent has registered and is using the <toyotaofcolumbia.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant alleges that Respondent was aware of the TOYOTA mark prior to registering the <toyotaofcolumbia.com> domain name. Complainant contends that Respondent’s disputed domain name was likely registered because Respondent was aware of the TOYOTA mark, and the associated reputation of the vehicles and Complainant. Thus, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toyotaofcolumbia.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Panelist
Dated: January 29, 2014
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