Toyota Motor Sales, U.S.A., Inc. v. Chad Strohm / ALL UNION HOSTING
Claim Number: FA1603001664546
Complainant is Toyota Motor Sales, U.S.A., Inc. (“Complainant”), represented by Eric T. Fingerhut of Dykema Gossett PLLC, Washington D.C., USA. Respondent is Chad Strohm / ALL UNION HOSTING (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com>, registered with eNom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 8, 2016; the Forum received payment on March 8, 2016.
On March 9, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, Inc. 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 March 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 29, 2016 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@toyotaofmarysville.com, postmaster@toyotamarysville.com, postmaster@marysvilletoyota.com. Also on March 9, 2016, 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.
A timely Response was received and determined to be complete on March 25, 2016.
Complainant submitted a timely Additional Submission, which was received by the Forum on March 29, 2016.
Respondent submitted a timely Additional Submission, which was received by the Forum on March 30, 2016.
On April 1, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
In its Complainant and Additional Submission Complainant has alleged, among other things, the following:
Complainant is the exclusive importer and distributor of TOYOTA automobiles throughout the United States.
Complainant holds a registration for the TOYOTA trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) mark (Registry No. 2,115,623, registered November 25, 1997).
Respondent registered each of the domain names <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com> on March 5, 2009.
The domain names are confusingly similar to Complainant’s TOYOTA mark.
Respondent has never been commonly known by any of the domain names.
Respondent has not been authorized by Complainant to make any use of the TOYOTA mark.
Each of the domain names resolves to an inactive webpage.
The domain names are part of Respondent’s pattern of registering domain names containing well-known automobile brands, including KINGSACURA.COM, KINGSHYUNDAI.COM, and KINGSMERCEDES.COM.
Respondent has no rights to or legitimate interests in respect of any of the domain names.
Respondent registered the domain names primarily for the purpose of selling them to Complainant for valuable consideration in excess of its out-of-pocket costs directly related to acquiring them.
Respondent’s registration and inactive use of the domain names has prevented Complainant and its authorized dealers from registering the same domains.
Respondent was aware of Complainant and its rights in the TOYOTA mark when it registered the domain names.
Each of the domain names was registered and is being used by Respondent in bad faith.
B. Respondent
In its Response and Additional submission, Respondent has asserted, inter alia, the following:
The domain names <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com> are not identical to Complainant’s TOYOTA mark.
Each of the domain names consists of the word “Toy” and the acronym “O.T.A.” which stands for “Older Than Average.”
Respondent intends to use the domain names in connection with the operation of a planned toys, collectables, and comic books store and related website.
While still employed, Respondent worked as an information technology manager for a large automotive group, and one of his functions in that capacity was to register domain names for his employer.
Respondent is currently unemployed and has therefore placed the development of the website and store on hold until funds become available.
This lack of capital has necessitated that Respondent delay registration of the planned business with the appropriate government authorities.
Respondent has paid a total of $418.95 out of pocket to register and hold the domain names for seven (7) years.
Complainant should pay Respondent $4,637.12 for the domain names.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain names; and
(3) the same domain names were registered and are being used by Respondent 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 names should be cancelled or transferred:
i. the domain names registered by Respondent are identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain names; and
iii. the domain names have been registered and is being used in bad faith.
Complainant has rights in the TOYOTA trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, 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 UDRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
From a review of the record, we conclude that each of the domain names <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com> is confusingly similar to Complainant’s TOYOTA trademark. Each of the domain names contains the mark in its entirety, with the addition of the geographically descriptive expression “of Marysville” or “Marysville” and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Skype Ltd. & Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004):
[I]t 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.
See also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (finding, under Policy ¶ 4(a)(i), that attaching a gTLD to the mark of another in creating a domain name is “unable to create a distinction capable of overcoming a finding of confusing similarity”).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. However, Respondent opposes the Complaint. We will therefore examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is a basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant asserts that Respondent has not been commonly known by any of the domain names <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com>, and that Respondent has not been authorized by Complainant to use the TOYOTA mark. Respondent does not deny this. Moreover, the WHOIS record for each of the domain names identifies the registrant only as “CHAD STROHM / ALL UNION HOSTING,” which does not resemble any of the domain names. On this record, we conclude that Respondent has not been commonly known by the <toyotaofmarysville.com>, <toyotamarysville.com> or <marysvilletoyota.com> domain names so as to have acquired rights to or legitimate interests in any of them within the purview of Policy ¶ 4(c)(ii). See, for example, Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a UDRP respondent was not commonly known by the <coppertown.com> domain name, and so failed to show that it had rights to or legitimate interests in it as provided in Policy ¶ 4(c)(ii), where there was no evidence in the record, including the relevant WHOIS information, suggesting that that respondent was commonly known by that domain name).
We next observe that Complainant asserts that Respondent has failed to make any active use of the domain names since registering them seven (7) years ago. In addition, there is in the record no evidence of any bona fide offering of goods or services by means of, or any legitimate noncommercial or fair use of, any of the domain names since they were registered. Such an extended period of inactive use cannot support a conclusion of either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) so as to confirm in Respondent rights to or legitimate interests in any of the contested domain names under those provisions. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a respondent’s non-use of disputed domain names demonstrated that that respondent was not using them for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). Therefore, this Panel may hold that Respondent has not demonstrated any bona fide offering of goods or services under Policy ¶ 4(c)(i) or any legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
We therefore find that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Complainant contends that Respondent has shown bad faith in its registration and use of the disputed domain names by demanding that it be paid for them a sum greater that its costs of acquisition. We agree. Respondent admits that it paid a total of $418.95 out of pocket to register and hold the domain names for the past seven (7) years. Yet Respondent demands that Complainant pay it $4,637.12 for the domain names. Under Policy ¶ 4(b)(i), for Respondent to demand a price more than ten (10) times its costs of acquisition and maintenance is strong evidence of its bad faith. See EMVCO, LLC v. Corey Grottola, FA15649199 (Nat. Arb. Forum Dec. 22, 2015):
Respondent offered to sell the disputed domain names for … an amount well in excess of Respondent’s actual out-of-pocket costs to register each domain…. A respondent’s attempt to sell a disputed domain name for an amount in excess of the out-of-pocket cost to acquire the domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(i).
We are also persuaded that Respondent’s holding of the disputed domain names for seven (7) years without making any active use of them further demonstrates its bad faith in registering and so using them. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a UDRP respondent’s failure to make an active use of a contested domain name satisfies the bad faith requirement of ¶ 4(a)(iii) of the Policy). We also conclude that, especially given Respondent’s admitted connections to the automotive industry and its current holding of three other domain names containing familiar marks in that industry, its attempt to constrive a rationale for its use of the TOYOTA mark for purposes of this case too greatly strains credulity.
For the reasons just noted, it is likewise evident that Respondent knew of Complainant and its rights in the TOYOTA mark when it registered the <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com> domain names. Under Policy ¶ 4(a)(iii), this too is evidence of Respondent’s bad faith in registering the domain names. See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where a respondent was "well-aware of the complainant's … mark at the time of [its domain name] registration.").
We thus find that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <toyotaofmarysville.com>, <toyotamarysville.com> and <marysvilletoyota.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 4, 2016
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page