Toyota Motor Corporation v. huade wang
Claim Number: FA2210002016628
Complainant is Toyota Motor Corporation (“Complainant”), USA, represented by Paddy Tam of CSC Digital Brand Services AB, Sweden. Respondent is huade wang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toyotafinancialacademy.com>, registered with Sav.com, LLC.
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, Esq. as Panelist.
Complainant submitted a Complaint to Forum electronically on October 19, 2022; Forum received payment on October 19, 2022.
On October 19, 2022, Sav.com, LLC confirmed by e-mail to Forum that the <toyotafinancialacademy.com> domain name is registered with Sav.com, LLC and that Respondent is the current registrant of the name. Sav.com, LLC has verified that Respondent is bound by the Sav.com, LLC 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 October 21, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 10, 2022 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@toyotafinancialacademy.com. Also on October 21, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Ho-Hyun Nahm, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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) Complainant, in its over 80 years of history, has grown substantially to become a leader in the design, manufacture, assembly and sale of various vehicles as well as financial services related to the automotive industry. Complainant claims rights in the TOYOTA mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 843,138 registered January 30, 1968). Complainant also claims rights in the TOYOTA FINANCIAL SERVICES mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,762,080 registered September 9, 2003). The disputed domain name is confusingly similar to Complainant’s TOYOTA and TOYOTA FINANCIAL SERVICES marks, as it incorporates the marks in its entirety, merely adding the generic terms “financial” and/or “academy” and the “.com” gTLD.
ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its TOYOTA and TOYOTA FINANCIAL SERVICES marks in the disputed domain name. Respondent does not use the domain name in connection with any bona fide offering of goods or services, nor a legitimate non-commercial or fair use. Respondent fully incorporates Complainant’s TOYOTA and TOYOTA FINANCIAL SERVICES marks in the disputed domain name in order to divert Internet users seeking Complainant to Respondent’s own webpage, which hosts generic hyperlinks related to Complainant’s business that redirect Internet users to third-party websites.
iii) Respondent registered and uses the disputed domain name in bad faith. The disputed domain name’s resolving website hosts generic hyperlinks related to Complainant’s business that redirect Internet users to third-party websites. Respondent had actual knowledge of Complainant and its TOYOTA and TOYOTA FINANCIAL SERVICES marks before registering the disputed domain name. Respondent is engaging in a pattern of cybersquatting/typosquatting. Respondent, at the time of initial filing of the Complaint, had employed a privacy service to hide its identity. Respondent has ignored Complainant’s attempts to resolve this dispute outside of this administrative proceeding.
B. Respondent
Respondent did not submit a Response in this proceeding.
1. The disputed domain name was registered on February 23, 2022.
2. Complainant has established rights in the TOYOTA mark through its registration of the mark with the USPTO (e.g., Reg. No. 843,138 registered January 30, 1968).
3. Complainant has established rights in the TOYOTA FINANCIAL SERVICES mark through its registration of the mark with the USPTO (e.g., Reg. No. 2,762,080 registered September 9, 2003).
4. The disputed domain name resolves to a website, which hosts generic hyperlinks related to Complainant’s business that redirect Internet users to third-party websites.
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(f), 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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the TOYOTA and TOYOTA FINANCIAL SERVICES marks through its registration of the marks with the USPTO (e.g., Reg. No. 843,138 registered January 30, 1968; Reg. No. 2,762,080 registered September 9, 2003). Registration with the USPTO is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Ecolab USA Inc. v. (name redacted), FA 2003001888902 (Forum Apr. 20, 2020) (“Complainant’s ownership of a USPTO registration for ECOLAB is sufficient to demonstrate its rights in a mark for the purposes of Policy ¶ 4(a)(i).”). Complainant provides evidence of the trademark registrations with the USPTO. Therefore, the Panel finds Complainant has rights in the TOYOTA and TOYOTA FINANCIAL SERVICES marks under Policy ¶ 4(a)(i).
Complainant contends that the disputed domain name <toyotafinancialacademy.com> is confusingly similar to Complainant’s TOYOTA and TOYOTA FINANCIAL SERVICES marks, as it incorporates the marks in its entirety, only adding the generic term “academy” and the “.com” gTLD. The mere addition of a generic term and gTLD is not enough to differentiate a disputed domain name from a mark. See MTD Products Inc v J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). The Panel therefore finds the disputed domain name is confusingly similar to Complainant’s TOYOTA and TOYOTA FINANCIAL SERVICES marks.
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), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends that Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed to Respondent any rights in the TOYOTA and TOYOTA FINANCIAL SERVICES marks. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name was initially privacy protected, but the registrant has recently been revealed as “huade wang.” Additionally, there is no evidence to suggest that Respondent was authorized to use Complainant’s TOYOTA and TOYOTA FINANCIAL SERVICES marks in the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate non-commercial or fair use. Complainant specifically points out that Respondent fully incorporates Complainant’s TOYOTA and TOYOTA FINANCIAL SERVICES marks in the disputed domain name in order to divert Internet users seeking Complainant to Respondent’s own webpage, which hosts generic hyperlinks related to Complainant’s business that redirect Internet users to third-party websites. The Panel agrees and finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use within the meaning of Policy ¶¶ 4(c)(i) and (iii).
The Panel finds that Complainant has made out a prima facie case that arises from the considerations above. All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant contends that Respondent registered and uses the disputed domain name in bad faith. The disputed domain name’s resolving website hosts generic hyperlinks related to Complainant’s business that redirect Internet users to third-party websites. The Panel is of the view that using a disputed domain name to host third-party links and advertisements can demonstrate bad faith per Policy ¶ 4(b)(iv). See Dovetail Ventures, LLC v. Klayton Thorpe, FA1506001625786 (Forum Aug. 2, 2015) (holding that the respondent had acted in bad faith under Policy ¶ 4(b)(iv), where it used the disputed domain name to host a variety of hyperlinks, unrelated to the complainant’s business, through which the respondent presumably commercially gained); see also 3M Company v. Nguyen Hoang Son / Bussiness and Marketing, FA1408001575815 (Forum Sept. 18, 2014) (finding that the respondent’s use of the disputed domain name to host sponsored advertisements for Amazon, through which the respondent presumably profited, indicated that the respondent had used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv)). The Panel recalls Complainant provides screenshots showing the disputed domain name resolves to a website hosting third-party links. The Panel therefore finds Respondent registered and uses the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Complainant additionally contends that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the TOYOTA and TOYOTA FINANCIAL SERVICES marks. While constructive notice is not sufficient for a finding of bad faith, under Policy ¶ 4(a)(iii), actual knowledge is enough in demonstrating bad faith, and may be established through incorporation of a well-known/registered mark into a domain name. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."); see also iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum January 1, 2018) (“Respondent’s prior knowledge is evident from the notoriety of Complainant’s BITFINEX trademark as well as from Respondent’s use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant”). The Panel infers, due to the notoriety of Complainant’s marks and the manner of use of the disputed domain name that Respondent had knowledge of Complainant’s rights in the TOYOTA and TOYOTA FINANCIAL SERVICES marks prior to the registration of the disputed domain name, which supports a finding of bad faith registration under 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 <toyotafinancialacademy.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho-Hyun Nahm, Esq., Panelist
Dated: November 23, 2022
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