Toyota Motor Sales U.S.A., Inc. v. Yosef Garshom d/b/a Auto Shivuk
Claim Number: FA0602000645572
Complainant is Toyota Motor Sales U.S.A., Inc. (“Complainant”), represented by John Hornick, of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., 901 New York Avenue NW, Washington, DC 20001- 4413. Respondent is Yosef Garshom d/b/a Auto Shivuk (“Respondent”), 30 Hagolan Street, Bet Dagan, Gush Dan 502000, Israel.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <autoparts4toyota.com>, <lexautoparts.com>, <lexcarparts.com>, <lexus-auto-and-parts.com>, <lexus-engine-parts.com>, <toyota-engine-parts.com> and <toytparts.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 14, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 15, 2006.
On February 15, 2006, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <autoparts4toyota.com>, <lexautoparts.com>, <lexcarparts.com>, <lexus-auto-and-parts.com>, <lexus-engine-parts.com>, <toyota-engine-parts.com> and <toytparts.com> domain names are registered with Go Daddy Software, Inc. and that Respondent is the current registrant of the names. 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 February 16, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 8, 2006 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@autoparts4toyota.com, postmaster@lexautoparts.com, postmaster@lexcarparts.com, postmaster@lexus-auto-and-parts.com, postmaster@lexus-engine-parts.com, postmaster@toyota-engine-parts.com and postmaster@toytparts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On March 15, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Louis E. Condon 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." 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <autoparts4toyota.com>, <toyota-engine-parts.com> and <toytparts.com> domain names are confusingly similar to Complainant’s TOYOTA mark. Respondent’s <lexautoparts.com>, <lexcarparts.com>, <lexus-auto-and-parts.com> and <lexus-engine-parts.com> domain names are confusingly similar to Complainant’s LEXUS mark.
2. Respondent does not have any rights or legitimate interests in the <autoparts4toyota.com>, <lexautoparts.com>, <lexcarparts.com>, <lexus-auto-and-parts.com>, <lexus-engine-parts.com>, <toyota-engine-parts.com> and <toytparts.com> domain names.
3. Respondent registered and used the <autoparts4toyota.com>, <lexautoparts.com>, <lexcarparts.com>, <lexus-auto-and-parts.com>, <lexus-engine-parts.com>, <toyota-engine-parts.com> and <toytparts.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Toyota Motor Sales, U.S.A., Inc., is a manufacturer of passenger vehicles and products related to automobiles. Complainant has been using the TOYOTA mark in the United States since at least 1958 and has sold millions of passenger vehicles throughout the world bearing that mark. Similarly, Complainant has been using the LEXUS mark in the United States since at least 1989 in the global sale and promotion of automobiles bearing that mark. In July 2005, Business Week magazine ranked the TOYOTA mark as the ninth most valuable brand name in the world.
Complainant is a wholly-owned subsidiary of Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation (“Toyota Motor Corporation”). Toyota Motor Corporation owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the TOYOTA and LEXUS marks. Toyota Motor Corporation first registered the TOYOTA mark with the USPTO on January 30, 1968 (Reg. No. 843,138). Toyota Motor Corporation first registered the LEXUS mark with the USPTO on January 2, 1990 (Reg. No. 1,574,718).
Respondent registered the disputed domain names on the following dates:
<autoparts4toyota.com> on November 16, 2003; <lexautoparts.com> on April 27, 2004; <lexcarparts.com> on March 25, 2004; <lexus-auto-and-parts.com> on January 16, 2003; <lexus-engine-parts.com> on July 3, 2003; <toyota-engine-parts.com> on July 3, 2003; and <toytparts.com> on March 25, 2004. Respondent is using the disputed domain names to operate commercial websites offering third-party after-market products and used parts for Complainant’s vehicles, as well as parts for other vehicles manufactured by Complainant’s competitors.
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.
The Panel finds that Toyota Jidosha Kabushiki Kaisha t/a Toyota
Motor Corporation’s registrations of the TOYOTA and LEXUS marks with the USPTO
sufficiently establish its rights in the marks pursuant to Policy ¶
4(a)(i). See VICORP
Restaurants, Inc. v. Triantafillos, FA 485933 (Nat. Arb. Forum July 14,
2005) (“Complainant has established rights in the BAKERS SQUARE mark by
registering it with the United States Patent and Trademark Office (“USPTO”).”);
see also Nordstrom,
Inc. and NIHC, Inc. v. Grotte, FA
115347 (Nat. Arb. Forum Aug. 26, 2002) (“Complainant has established its rights
in the NORDSTROM mark through securing a variety of trademark registrations
with the USPTO reflecting its NORDSTROM mark.”).
Complainant asserts that it is a wholly-owned subsidiary of
Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation and authorized to
enforce Toyota Motor Corporation’s trademark rights. Prior panels have held that Complainant has standing to enforce
the trademark rights of its parent corporation under the Policy. See Toyota Motors Sales U.S.A., Inc. v. Indian Springs Motor, FA 157289 (Nat. Arb. Forum, Jan. 11,
2005) (“Complainant has established that it has rights in the TOYOTA and
LEXUS marks through TMC’s registration with the USPTO and Complainant’s
subsidiary relationship with TMC.”); see also Toyota Motor Sales,
U.S.A., Inc. v. Fleetrates.com, FA 568488 (Nat. Arb. Forum Nov. 21, 2005) (finding that
although Complainant is not the owner of the trademarks, which are owned by its
parent, Complainant has standing to bring the complaint).
Each of Respondent’s <autoparts4toyota.com>, <lexus-auto-and-parts.com>, <lexus-engine-parts.com> and <toyota-engine-parts.com> domain names incorporates one of Complainant’s marks in its entirety, adding only generic terms, hyphens, and numbers. Panels have found that the additions of descriptive terms related to the complainant’s business and hyphens do not negate confusing similarity. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to the complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which the complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity). Moreover, the addition of a number does not avoid confusingly similarity between Respondent’s domain names and Complainant’s marks. See Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark).
Additionally, Respondent’s <lexautoparts.com>, <lexcarparts.com>
and <toytparts.com> domain names consist of abbreviations of
Complainant’s TOYOTA and LEXUS marks and the generic terms “auto parts,” “car
parts,” and “parts,” with the generic top-level domain “.com.” Therefore, Respondent’s disputed domain
names are confusingly similar to Complainant’s TOYOTA and LEXUS marks pursuant
to Policy ¶ 4(a)(i). See Microsoft
Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the
domain name <ms-office-2000.com> to be confusingly similar even though
the mark MICROSOFT is abbreviated); see also Minn. State Lottery v.
Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com>
domain name is confusingly similar to the complainant’s MINNESOTA STATE LOTTERY
registered mark).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has asserted that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant initially bears the burden of demonstrating that Respondent lacks rights and legitimate interests in the domain names. However, if Complainant establishes a prima facie case, the burden shifts to Respondent to prove that it has rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). The Panel finds that Complainant has established a prima facie case and will evaluate the evidence on record to determine whether Respondent has rights or legitimate interests in the domain name under Policy ¶ 4(c).
There is no evidence or information before the Panel that would suggest that Respondent is commonly known by the disputed domain names. According to the WHOIS information, Respondent is conducting business as “Auto Shivuk.” Consequently, Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). 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 Policy ¶ 4(c)(ii) does not apply); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Moreover, the evidence on record indicates that Respondent is using the disputed domain names to divert Internet users seeking Complainant’s website to commercial websites offering products in competition with Complainant’s business. Such use does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a noncommercial or fair use under Policy ¶ 4(c)(iii). See 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).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <autoparts4toyota.com>,
<lexautoparts.com>, <lexcarparts.com>, <lexus-auto-and-parts.com>,
<lexus-engine-parts.com>, <toyota-engine-parts.com>
and <toytparts.com> domain names to operate commercial websites
offering competing products with those of Complainant. The Panel finds that such use creates
confusion regarding Complainant’s affiliation with the resulting websites,
infringes upon the goodwill connected to Complainant’s marks and evidences bad
faith registration and use under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA
123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered
and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the
respondent was using the confusingly similar domain name to attract Internet
users to its commercial website); 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).
Furthermore, Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iii), because the disputed domain names resolve to websites offering and advertising the products of Complainant’s competitors. Therefore, in light of the confusing similarities between Complainant’s TOYOTA and LEXUS marks and Respondent’s disputed domain names, the evidence on record suggests that Respondent has registered the disputed domain names primarily for the purpose of disrupting the business of Complainant. See EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <autoparts4toyota.com>, <lexautoparts.com>, <lexcarparts.com>, <lexus-auto-and-parts.com>, <lexus-engine-parts.com>, <toyota-engine-parts.com> and <toytparts.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: March 29, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum