Toyota Motor Credit Corp. v. Mel Light
Claim Number: FA1106001393651
Complainant is Toyota Motor Credit Corp. (“Complainant”), represented by Eric T. Fingerhut of Dykema Gossett PLLC, Washington D.C., USA. Respondent is Mel Light (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toyotaextendedwarranty.us>, registered with GoDaddy.com, Inc.
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 15, 2011; the Forum received a hard copy of the Complaint on June 15, 2011.
On June 17, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <toyotaextendedwarranty.us> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 23, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of July 13, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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 usTLD Policy, usTLD 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <toyotaextendedwarranty.us> domain name is confusingly similar to Complainant’s TOYOTA mark.
2. Respondent does not have any rights or legitimate interests in the <toyotaextendedwarranty.us> domain name.
3. Respondent registered and used the <toyotaextendedwarranty.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Toyota Motor Credit Corp., is a wholly-owned subsidiary of the Toyota Motor Corporation, which owns the TOYOTA mark. Complainant has been given the right to use the TOYOTA mark in the United States by its parent corporation. For the purposes of this proceeding, Toyota Motor Credit Corp. and its parent corporation will be referred to collectively as “Complainant.” Complainant has used the TOYOTA mark in the United States since 1958 in connection with the sale of automobiles and maintenance services and well as providing related financial and insurance services. Complainant holds a numerous trademark registrations for the TOYOTA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 843,138 registered January 30, 1968).
Respondent, Mel Light, registered the <toyotaextendedwarranty.us> domain name on June 18, 2010. The domain name resolves to Respondent’s website which offers the same warranty services that Complainant sells.
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.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant asserts that its rights in the TOYOTA mark have been demonstrated through its numerous trademark registrations. Previous panels have found that a complainant can establish right in a mark by registering with a trademark authority. See Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under UDRP ¶ 4(a)(i)): see also Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority). Here, Complainant has multiple trademark registrations for its TOYOTA mark with the USPTO (e.g., Reg. No. 843,138 registered January 30, 1968). The Panel concludes that Complainant has demonstrated its rights in the TOYOTA mark through its trademark registration with a federal authority, according to Policy ¶ 4(a)(i).
Complainant also claims that Respondent’s <toyotaextendedwarranty.us> domain name is confusingly similar to its TOYOTA mark. The disputed domain name entirely incorporates Complainant’s mark and changes it only by adding the descriptive phrase “extended warranty” and the country-code top-level domain (“ccTLD”) “.us.” The Panel finds that the addition of descriptive words, which relate to Complainant’s provision of insurance and warranty services, does not remove the disputed domain name from the realm of confusing similarity. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to UDRP ¶ 4(a)(i).”). Also, the Panel finds that the affixation of a ccTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the Policy”). Therefore, the Panel finds that Respondent’s <toyotaextendedwarranty.us> domain name is confusingly similar to Complainant’s TOYOTA mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant argues that Respondent lacks rights and legitimate interests in the disputed domain name. In Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006), the panel held that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name. Here, Complainant has made a prima facie showing in support of its claims. Respondent failed to submit a response to the Complaint, which the Panel may interpret as an admission by Respondent that it has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel elects to look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
In looking at the record, there is no evidence indicating that Respondent owns any service mark or trademarks displayed in the <toyotaextendedwarranty.us> domain name. Accordingly, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that Respondent is not commonly known by the <toyotaextendedwarranty.us> domain name. The WHOIS information identifies the domain name registrant as “Mel Light,” which is not similar to the disputed domain name. Moreover, Complainant claims that Respondent is not an authorized dealer or distributor of TOYOTA products and services and has not been licensed or given permission to use the TOYOTA mark within the disputed domain name. Therefore, in light of the evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(iii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that UDRP ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent’s <toyotaextendedwarranty.us> domain name resolves to Respondent’s website which offers for sale the same warranty services Complainant sells. The Panel finds that Respondent’s use of the disputed domain name to operate a website for its own benefit by offering competing warranty services is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panel holds that Policy ¶ 4(a)(ii) has been met.
Complainant asserts that Respondent registered and is using the disputed domain name in order to disrupt Complainant’s business. Internet users intending to purchase Complainant’s warranty services may find Respondent’s website and purchase similar services from Respondent instead. The Panel finds that such a plan is evidence of bad faith use and registration under Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s AMERICAN SINGLES mark in order to operate a competing online dating website supported a finding that respondent registered and used the domain name to disrupt the complainant’s business under UDRP ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to UDRP ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The <toyotaextendedwarranty.us> domain name redirects Internet users to Respondent’s website which offers competing automobile warranty services. Respondent’s use of the confusingly similar disputed domain name and website content that may be of interest to Complainant’s customers, creates a likelihood of confusion as to Complainant’s affiliation with the dispute domain name and featured services. Respondent tries to profit from this confusion by collecting sale revenues. The Panel finds that Respondent’s registration and use of the disputed domain name constitutes bad faith according to Policy ¶ 4(b)(iv). See Yahoo! Inc. v. Web Master, FA 127717 (Nat. Arb. Forum Nov. 27, 2002) (“By use of <yahgo.com> to operate its search engine, a name that infringes upon Complainant’s mark, Respondent is found to have created circumstances indicating that Respondent, by using the domain name, has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or of a product or service on the website as proscribed in UDRP ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toyotaextendedwarranty.us> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Datd: July 28, 2011
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