Toyota Motor Sales U.S.A. Inc. v. John
Clelland
Claim
Number: FA0309000198018
Complainant is Toyota Motor Sales U.S.A. Inc.,
Torrance, CA (“Complainant”) represented by John F. Hornick, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P., 1300 I Street Nw,
Washington DC 20005 Respondent is John Clelland, 23000 Cricket Hill Road, Cupertino, CA 95014 (“Respondent”).
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <land-cruiser.com>, registered with Network
Solutions.
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.
James
A. Carmody, Esq., as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum (the "Forum")
electronically on September 24, 2003; the Forum received a hard copy of the
Complaint on September 25, 2003.
On
September 29, 2003, Network Solutions confirmed by e-mail to the Forum that the
domain name <land-cruiser.com> is registered with Network
Solutions and that Respondent is the current registrant of the name. Network
Solutions has verified that Respondent is bound by the Network Solutions 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
September 30, 2003, a Notification of Complaint and Commencement of
Administrative Proceeding (the "Commencement Notification"), setting
a deadline of October 20, 2003 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 postmaster@land-cruiser.com by
e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the Forum transmitted
to the parties a Notification of Respondent Default.
On
November 5, 2003, pursuant to Complainant's request to have the dispute decided
by a single-member Panel, the Forum appointed James A. Carmody, Esq., as
Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the 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."
Therefore, the Panel may issue its decision based on the documents
submitted and in accordance with the ICANN Policy, ICANN Rules, the 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 <land-cruiser.com>
domain name is identical to Complainant’s LAND CRUISER mark.
2. Respondent does not have any rights or
legitimate interests in the <land-cruiser.com> domain name.
3. Respondent registered and used the <land-cruiser.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Respondent has
failed to answer the Complaint.
Therefore, this Panel may draw any reasonable inferences from
Complainant’s assertions. See
Bayerische Motoren Werke AG v. Bavarian AG, FA110830 (Nat. Arb. Forum June
17, 2002) (finding that in the absence of a Response, the Panel is free to make
inferences from the failure to respond and assign greater weight to certain
circumstances than it might otherwise do); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27,
2000) (finding it appropriate for the Panel to draw adverse inferences from
Respondent’s failure to reply to the Complaint).
Complainant
asserts that it is a wholly owned subsidiary of Toyota Motor Corporation
(“TMC”). TMC is the owner of the mark,
LAND CRUISER, registered on July 9, 2002, with the United States Patent and
Trademark Office (Reg. No. 2590587).
Complainant asserts it is licensed to use TMC’s trademarks in its
distribution territories. Likewise,
Complainant asserts its contractual obligation, through its licensing agreement
with TMC, to monitor and enforce TMC’s rights in the LAND CRUISER mark within
Complainant’s distribution territories.
Therefore, this Panel may reasonably infer that Toyota Motor Sales is a
wholly owned subsidiary of Toyota Motor Corporation and has a contractual
obligation to monitor and enforce infringements upon TMC’s trademarks.
The mark, LAND
CRUISER, refers to an automobile line that Complainant exclusively imports and
distributes in the United States. LAND
CRUISER has been continuously used in commerce in the United States since
1957. The LAND CRUISER mark has become
famous and valuable property after being promoted and advertised
extensively. Complainant’s sales of
LAND CRUISER vehicles, parts, and accessories in the United States have
exceeded $1,000,000,000 since 1993.
Respondent
registered <land-cruiser.com> on September 11, 1997. Respondent used the domain name to advertise
its business, Acme-Oufitters, which sells accessories for LAND CRUISER
vehicles. Sometime between August and
November of 1999, Complainant learned of Respondent’s use of the domain name <land-cruiser.com>
and demanded that the domain name be transferred. On November 29, 1999, Respondent stated in writing that the
domain name was no longer being used for the Acme Outfitter’s website. Complainant confirmed shortly, thereafter,
that Respondent ceased using the domain name in connection with the Acme
website. Complainant contacted
Respondent again in December 1999 and February 2000, requesting the transfer of
the domain name. In February 2000,
Respondent refused to transfer the domain name.
Respondent
renewed its registration of the domain name on September 13, 2002. Respondent resumed using the domain name for
its Acme-Outfitters website around April of 2003. Sometime after July 16, 2003, the website redirected Internet
users to another reseller of LAND CRUISER accessories located at
<man-a-fre.com>.
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.
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’s
parent company, Toyota Motor Corporation, has ownership rights in the LAND
CRUISER mark through registration with the United States Patent and Trademark
Office and continuous use in commerce since 1957. For purposes of this proceeding, TMS has established sufficient
rights in the LAND CRUISER mark through its licensing agreement with TMC.
Respondent’s
registered domain name incorporates the LAND CRUISER mark in its entirety. The only difference between LAND CRUISER and
<land-cruiser.com> is a hyphen separating “land” from
“cruiser.” Hyphens fail to alleviate
the identical nature of a combination of words existing in a domain name from
that of a registered mark. See Nintendo Of Am. Inc. v. This Domain Is For
Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com>
identical and confusingly similar Complainant’s GAME BOY mark, even though the
domain name is a combination of two descriptive words divided by a hyphen); see
also Teradyne Inc. v. 4Tel Tech.,
D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the
registered mark is an insubstantial change. Both the mark and the domain name
would be pronounced in the identical fashion, by eliminating the hyphen");
see also Hewlett-Packard Co. v.
Cupcake City, FA 93562 (Nat. Arb. Forum Apr. 7, 2000) (finding that a
domain name which is phonetically identical to Complainant’s mark satisfies ¶
4(a)(i) of the Policy).
Moreover, the
Complainant and Respondent similarly conduct business relating to the LAND
CRUISER automobile. The only difference
is that Complainant is licensed to use the LAND CRUISER mark and Respondent is
not. It is recognized that the
likelihood of confusion increases when the parties are involved with the same
product or industry. See Slep-Tone Entm't Corp. v. Sounds Choice Disc
Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“likelihood of
confusion is further increased by the fact that the Respondent and
[Complainant] operate within the same industry”); see also Vivid Video, Inc.
v. Tennaro a/k/a Vivid Revolution, FA 126646 (Nat. Arb. Forum Nov. 14,
2002) (finding it significant that Respondent and Complainant operate in the
same industry, making any distinctiveness of Respondent’s domain name from
Complainant’s mark less important).
Therefore,
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant
has asserted that Respondent does not have any rights or legitimate interests
in the <land-cruiser.com> domain name. Accordingly, the Panel may presume Respondent has no such rights
or interests. See Vertical Solutions Mgmt., Inc. v.
webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (failure
to respond allows all reasonable inferences of fact in the allegations of
Complainant to be deemed true); see also Bayerische Motoren Werke AG v.
Bavarian AG, FA110830 (Nat. Arb. Forum June 17, 2002) (finding that in the
absence of a Response the Panel is free to make inferences from the very
failure to respond and assign greater weight to certain circumstances than it
might otherwise do).
Additionally,
Respondent is using <land-cruiser.com> in connection with the sale
of LAND CRUISER accessories in competition with Complainant. This is not a bona fide offering of goods or
services, or a legitimate noncommercial fair use, pursuant to Policy ¶¶ 4(c)(i)
and (iii). See Computerized Sec.
Sys., Inc. v. Bennie Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (holding
that Respondent’s appropriation of Complainant’s mark to market products that
compete with Complainant’s goods does not constitute a bona fide offering of
goods and services); see also Clear Channel Communications, Inc. v. Beaty
Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding that Respondent,
as a competitor of Complainant, had no rights or legitimate interests in a
domain name that utilized Complainant’s mark for its competing website); see
also Disney Enterss, Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum March 17,
2003) (finding that Respondent’s diversionary use of Complainant’s mark to attract
Internet users to its own website was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names).
Also,
the record indicates that Respondent is not commonly known by the <land-cruiser.com>
domain name, but rather does business as “Acme-Outfitters.” Therefore, Respondent has no rights or
legitimate interests pursuant to Policy ¶ 4(c)(ii). See Gallup Inc. v.
Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that
Respondent does not have rights in a domain name when Respondent is not known
by the mark); see also Compagnie
de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000)
(finding no rights or legitimate interest where Respondent was not commonly
known by the mark and never applied for a license or permission from
Complainant to use the trademarked name).
Therefore,
Complainant has satisfied Policy ¶ 4(a)(ii).
When Respondent
registered <land-cruiser.com> in 1997, nearly forty years after
Complainant began using the LAND CRUISER mark, Complainant’s mark was famous as
a result of extensive use and promotion.
Consequently, Respondent should have known about Complainant’s rights in
the LAND CRUISER mark. Bad faith can be
inferred when one registers and uses a domain name identical to a famous
mark. See Digi Int’l v. DDI Sys.,
FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“there is a legal presumption of bad
faith, when Respondent reasonably should have been aware of Complainant’s
trademarks, actually or constructively”); see also Entrepreneur Media, Inc.
v. Smith, 279
F.3d 1135, 1148 (9th Cir. 2002) ("where an alleged infringer chooses a
mark he knows to be similar to another, one can infer an intent to
confuse"); see also Samsonite
Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding
that evidence of bad faith includes actual or constructive knowledge of a
commonly known mark at the time of registration).
Furthermore, bad
faith is established when a domain name is used to intentionally attract, for
commercial gain, Internet users to a website by creating a likelihood of
confusion with another’s mark as to the source, sponsorship, affiliation, or
endorsement of its website or product.
Respondent used <land-cruiser.com> to advertise its
business, which sold goods in competition with Complainant. This establishes bad faith as defined in
Policy ¶ 4(b)(iv). See ESPN, Inc. v. Ballerini, FA 95410 (Nat.
Arb. Forum Sept. 15, 2000) (finding bad faith where Respondent linked the
domain name to another website <iwin.com>, presumably receiving a portion
of the advertising revenue from the site by directing Internet traffic there,
thus using a domain name to attract Internet users for commercial gain); see
also Bama Rags, Inc. v. Zuccarini,
FA 94380 (Nat. Arb. Forum May 8, 2000) (finding bad faith where Respondent
attracted users to advertisements).
Therefore,
Complainant has satisfied 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 <land-cruiser.com> domain name be TRANSFERRED
from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated:
November 10, 2003
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