Toyota Motor Sales, U.S.A., Inc. v. Lexuswatch / Jannet Smith
Claim Number: FA 1354384
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 Lexuswatch / Jannet Smith (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <lexuswatch.com>, registered with XIN NET TECHNOLOGY CORPORATION.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 25, 2010; the National Arbitration Forum received payment on October 26, 2010. The Complaint was submitted in both Chinese and English.
On October 25, 2010, XIN NET TECHNOLOGY CORPORATION confirmed by e-mail to the National Arbitration Forum that the <lexuswatch.com> domain name is registered with XIN NET TECHNOLOGY CORPORATION and that Respondent is the current registrant of the name. XIN NET TECHNOLOGY CORPORATION has verified that Respondent is bound by the XIN NET TECHNOLOGY CORPORATION 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 November 1, 2010, the Forum served the Chinese language Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of November 22, 2010 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@lexuswatch.com. Also on November 1, 2010, the Chinese language 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, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 29, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Chinese Language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <lexuswatch.com> domain name is confusingly similar to Complainant’s LEXUS mark.
2. Respondent does not have any rights or legitimate interests in the <lexuswatch.com> domain name.
3. Respondent registered and used the <lexuswatch.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Toyota Motor Sales, USA, Inc, is the wholly-owned subsidiary of Toyota Motor Corporation, which is the owner of the LEXUS mark. Complainant holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for its LEXUS mark (Reg. No. 1,574,718 issued January 2, 1990). Complainant is the importer and distributer of LEXUS automobiles throughout the United States.
Respondent, Lexuswatch/ Jannet Smith, registered the disputed domain name <lexuswatch.com> on August 24, 2008. The domain name resolves to a website titled “Fashion Star” that sells wrist watches.
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."
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.”).
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.
Complainant asserts, and sufficiently evidences, rights in the LEXUS mark. Complainant has supplied the mark’s USPTO registration (Reg. No. 1,574,718 issued January 2, 1990), and previous panels have held this to sufficiently evidence rights in a mark under Policy ¶ 4(a)(i). See Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the complainant had sufficiently established rights in the SKUNK WORKS mark through its registration of the mark with the USPTO); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO). The Panel agrees.
The Panel finds that the disputed domain name <lexuswatch.com> is confusingly similar to Complainant’s LEXUS mark. The disputed domain name fully incorporates the mark while otherwise failing to distinguish the mark by adding the generic word, “watch,” and a generic-top-level domain (“gTLD”), “.com.” In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), the panel found confusing similarity where the domain name in dispute contained the identical mark of the complainant combined with a generic word or term. Moreover, in Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007), the panel held that “[t]he mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.” The Panel finds the addition of the generic term “watch” and the addition of the gTLD fail to distinguish the domain name from Complainant’s mark. Therefore, pursuant to Policy ¶ 4(a)(i), the Panel finds that the domain name <lexuswatch.com> is confusingly similar to Complainant’s LEXUS mark.
The Panel finds ¶ 4(a)(i) has been met.
Complainant has alleged that Respondent does not have any rights or legitimate interests in the <lexuswatch.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). After reviewing the Complaint, the Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain name. Even so, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Law Soc’y of Hong Kong v. Domain Strategy, Inc., HK-0200015 (ADNDRC Feb. 12, 2003) (“A respondent is not obligated to participate in a domain name dispute . . . but the failure to participate leaves a respondent vulnerable to the inferences that flow naturally from the assertions of the complainant and the tribunal will accept as established assertions by the complainant that are not unreasonable.”).
Complainant has alleged that Respondent is not commonly known by the <lexuswatch.com> domain name. However, the disputed domain name’s WHOIS information identifies the domain name registrant as “Lexuswatch / Jannet Smith.” This information is not fatal to Complainant’s Policy ¶ 4(c)(ii) argument. Absent additional evidence, the Panel may still find that Respondent is not commonly known by the domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name). Based upon the lack of coordinating evidence, the Panel does indeed find that Respondent is not commonly known by the disputed domain name <lexuswatch.com>. This finding supports a lack of rights and legitimate interests pursuant to Policy ¶ 4(c)(ii).
Respondent uses the disputed domain name to redirect Internet users to a website that features wristwatches for sale. The Panel finds that Respondent’s use of a confusingly similar disputed domain name to sell goods unrelated to Complainant, for Respondent’s own benefit, is 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). See The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that ¶ 4(a)(ii) has been met.
Complainant asserts, and the Panel agrees, that Respondent is using the confusingly similar disputed domain name <lexuswatch.com> to attract Internet users to Respondent’s website for financial gain. As noted above, Respondent is using the famous LEXUS mark to attract Internet users to its site. Once users have arrived, there are displayed links for various wrist watch brands that Respondent is selling. The Panel presumes this display leads to at least some sales from which Respondent receives revenue. This attraction of Internet users using to a confusingly similar domain name is an indication of bad faith use and registration pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”); see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website). The Panel finds accordingly.
The Panel finds Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <lexuswatch.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: December 9, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page