Toyota Sunnyvale v. Adfero Publishing Company
Claim Number: FA0702000921194
Complainant is Toyota Sunnyvale (“Complainant”), represented by Adam Simms, of Toyota Sunnyvale, 898 W. El Camino Real, Sunnyvale, CA 94087. Respondent is Adfero Publishing Company (“Respondent”), 1288 Columbus Avenue, #213, San Francisco, CA 94133-1302.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toyota-sunnyvale.com>, registered with Go Daddy Software, 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.
Mark McCormick as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 20, 2007; the National Arbitration Forum received a hard copy of the Complaint on February 20, 2007.
On February 23, 2007, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <toyota-sunnyvale.com> domain name is registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the name. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 6, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of March 26, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on March 20, 2007.
Complainant made an additional submission which was received on March 26, 2007 and was timely. Respondent made an additional submission which was received on April 3, 2007, and was timely.
On March 27, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mark McCormick as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the <toyota-sunnyvale.com> and <toyotasunnyvale.com> names are confusingly similar. A single hyphen is the only difference between the two domains. Complainant asserts that Adfero Publishing/On Ramp Media has no affiliation with Toyota Sunnyvale or any of its principals and has no legitimate basis for holding or using the domain name. Complainant contends Respondent is in bad faith because Respondent has refused to relinquish the domain name and has held it in an effort to extract money for the transfer of the domain to Complainant. The exchange of e-mails shows Respondent intends to use the domain name in bad faith for its own commercial gain.
Respondent admits that the domain names <toyota-sunnyvale.com> and <toyotasunnyvale.com> are confusingly similar. Respondent asserts that it has used the domain name legitimately in connection with an agreement to provide leads on car sales to Complainant. Respondent contends that its intended use of the domain is to attract Internet consumers and connect them with the products they are seeking, not to mislead or to divert customers. Respondent denies that it registered the domain in bad faith, asserting that the domain was registered in accordance with an agreement with Complainant to provide a valuable service for Complainant, which it did for merely a year before Complainant terminated the agreement. Respondent denies that it registered the domain name primarily for the purpose of disrupting the business of a competitor or for the purpose of disrupting the business of Toyota Sunnyvale. Respondent also denies attempting to attract for commercial gain Internet users to Respondent’s website by creating a likelihood of confusion.
C. Additional Submissions
Complainant in its Additional Submission contends that the business issues between the parties are not relevant to this case but also contends that Respondent registered the disputed domain name in Adfero’s name without request or approval by Complainant. Complainant contends that its only agreement with Respondent was to pay for leads to facilitate auto sales. Complainant contends that the termination of the business relationship does not give Respondent the right to use Complainant’s name.
In its Additional Submission, Respondent contends the parties had an oral agreement requiring Complainant to compensate it for building the relevance and development of the domain name and that this action by Complainant is an effort to obtain the domain name in violation of the parties’ agreement and without fairly compensating Respondent. Respondent obtained a default judgment against Complainant in an action for compensation and, even though Complainant seeks to have the judgment set aside, that has not yet occurred.
Complainant continuously and extensively used the TOYOTA SUNNYVALE mark in connection with its car dealership since June 2003, three years before Respondent registered the <toyota-sunnyvale.com> domain name on January 29, 2006. Respondent admits that the <toyota-sunnyvale.com> domain name is confusingly similar to Complainant’s TOYOTA SUNNYVALE mark. Respondent is not commonly known by the <toyota-sunnyvale.com> domain name, has no present affiliation with Complainant and seems to hold the domain name primarily as leverage to extract compensation from Complainant and out of dissatisfaction with the breakdown in its relationship with Complainant. The main purpose for Respondent continuing to hold the domain name is Respondent’s effort to obtain compensation for what Respondent contends is its commercial value. If Complainant does not buy the domain name from Respondent, Respondent speculates that it may use the domain name for commercial gain.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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;
(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.
Complainant’s mark has acquired secondary meaning sufficient for it to establish common law rights in the mark pursuant to Policy ¶ 4(a)(i). See Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005). As admitted by Respondent, the <toyota-sunnyvale.com> domain name is confusingly similar to Complainant’s TOYOTA SUNNYVALE mark.
Respondent has not shown that it is commonly known by the <toyota-sunnyvale.com> domain name within the meaning of Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007). It is clear that Respondent refuses to transfer the <toyota-sunnyvale.com> domain name because of its interest in commercial gain through its holding of the name, either seeking to extract compensation from Complainant or to find an alternative use which would also result in commercial gain. Respondent’s holding of the domain name does not constitute a bona fide offering of goods or services or a legitimate interest within the meaning of Policy ¶ 4(a)(ii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003).
Respondent holds the domain name hostage in an effort to extract money for the transfer of the disputed domain name to Complainant, threatening as an alternative to find a commercial use for the domain name. Even though Respondent contends it has proceeded in good faith, the fact is that Respondent is attempting to use its ownership of the domain as a substitute for or as leverage to support its civil claim against Complainant for alleged breach of contract. These circumstances demonstrate bad faith use of the domain name within Policy ¶ 4(a)(iii). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000). Respondent’s threat to use the domain name alternatively to obtain commercial gain by taking advantage of the confusing similarity of the domain names is also evidence of bad faith. See AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006). Respondent’s breach of contract claim is an independent issue for the civil courts.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toyota-sunnyvale.com> domain name be TRANSFERRED from Respondent to Complainant.
Mark McCormick, Panelist
Dated: April 10, 2007
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