Toyo Tire Holdings of Americas Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf
Claim Number: FA2306002050018
Complainant is Toyo Tire Holdings of Americas Inc. ("Complainant"), represented by Jabari A. Shaw of Vorys, Sater, Seymour and Pease LLC, Ohio, USA. Respondent is Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf ("Respondent"), Iceland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toyotires.us.com>, registered with NameCheap, Inc.
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.
David E. Sorkin as Panelist.
Complainant participated in the mandatory CentralNic Mediation, and the mediation process has terminated.
Complainant submitted a Complaint to Forum electronically on June 21, 2023; Forum received payment on June 21, 2023.
On June 22, 2023, NameCheap, Inc. confirmed by email to Forum that the <toyotires.us.com> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the CentralNic Dispute Resolution Policy (the "CDRP Policy").
On June 26, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 17, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@toyotires.us.com. Also on June 26, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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 July 24, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin 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 the CDRP Dispute Resolution Policy ("Rules"). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the CDRP Policy, CDRP 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
Complainant has used the TOYO TIRES mark in connection with tires and related products and services since 1963. Since that date, Complainant has expanded its business and its use of the mark to more than 97 countries, and asserts that the mark has become famous. Complainant owns longstanding United States trademark registrations for TOYO TIRES in both standard character and stylized form.
The disputed domain name <toyotires.us.com> was registered in December 2022. The domain name is registered in the name of Respondent, a privacy registration service that is holding the registration to shield the identity of the beneficial owner. The domain name is being used for a website that prominently displays Complainant's TOYO TIRES mark in the same stylized form used by Complainant, and that sells or purports to sell Complainant's products. Complainant's trademarks and copyrighted product images appear throughout the website in a manner that Complainant alleges is intended to make the site appear to be affiliated with Complainant. Complainant states that Respondent is not commonly known by the domain name, is not authorized to sell Complainant's products, and is not authorized to use Complainant's mark.
Complainant contends on the above grounds that the disputed domain name <toyotires.us.com> is identical or confusingly similar to its TOYO TIRES mark; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used 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 or is being used in bad faith.
The CDRP also requires that Complainant have participated in a CentralNic Mediation, and that the mediation have terminated prior to the consideration of the Complaint.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy ("UDRP") and the CDRP Policy, the Panel will draw upon UDRP principles as applicable in rendering its decision.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Management, Inc. v. Webnet-Marketing, Inc., FA 95095 (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.").
The disputed domain name <toyotires.us.com> incorporates Complainant's registered TOYO TIRES trademark, omitting the space and appending the ".us" second-level domain and the ".com" top-level domain. Such alterations are normally disregarded for purposes of assessing identicality or confusing similarity under paragraph 4(a)(i) of the CDRP Policy. See, e.g., Dollar Tree Stores, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, FA 2000018 (Forum July 20, 2022) (finding <dollartree.us.com> identical to DOLLAR TREE); Mattress Firm, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, FA 1989499 (Forum Apr. 22, 2022) (finding <mattressfirm.us.com> identical or confusingly similar to MATTRESS FIRM). The Panel considers the disputed domain name to be confusingly similar to a mark in which Complainant has rights.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Productions, Inc. v. Entertainment Commentaries, FA 741828 (Forum Aug. 18, 2006).
The disputed domain name incorporates Complainant's registered mark without authorization, and it is being used for a website that attempts to pass off as affiliated with Complainant and promotes unauthorized or counterfeit products that compete with those offered by Complainant. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Shimano, Inc. v. Sbdch Omdk, FA 2047288 (Forum July 10, 2023) (finding lack of rights or interests in similar circumstances); Dollar Tree Stores, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, supra (same); Mattress Firm, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, supra (same).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered or is being used in bad faith. Under paragraph 4(b)(iii) of the Policy, bad faith may be shown by evidence that Respondent registered the disputed domain name "primarily for the purpose of disrupting the business of a competitor." Under paragraph 4(b)(iv), bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent used a privacy registration service to register a domain name incorporating Complainant's registered mark without authorization, and is using the domain name for a website that attempts to pass off as Complainant and offers for sale unauthorized or counterfeit versions of Complainant's products. Such circumstances are indicative of bad faith registration and use under the Policy. See, e.g., Shimano, Inc. v. Sbdch Omdk, supra (finding bad faith registration and use in similar circumstances); Dollar Tree Stores, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, supra (same); Mattress Firm, Inc. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, supra (same). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the CDRP Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toyotires.us.com> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: July 25, 2023
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