national arbitration forum

 

DECISION

 

Toyota Motor Sales, U.S.A., Inc. v. Abraham Dones

Claim Number: FA0612000874857

 

PARTIES

Complainant is Toyota Motor Sales, U.S.A., Inc. (“Complainant”), represented by Victor K. Sapphire of Jeffer, Mangels, Butler & Marmaro, LLP, 1900 Avenue of the Stars, Seventh Floor, Los Angeles, CA, 90067.  Respondent is Abraham Dones (“Respondent”), 809 Adour Drive, Poinciana, FL, 34759.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toyotaofclermont.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.

 

PANEL

The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding.  Hon. Carolyn Marks Johnson sits as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically December 22, 2006; the National Arbitration Forum received a hard copy of the Complaint December 27, 2006.

 

On January 1, 2007, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <toyotaofclermont.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the name.  Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On January 10, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 30, 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 postmaster@toyotaofclermont.com by e-mail.

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On February 6, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      The domain name that Respondent registered, <toyotaofclermont.com>, is confusingly similar to Complainant’s TOYOTA mark.

 

2.      Respondent has no rights to or legitimate interests in the <toyotaofclermont.com> domain name.

 

3.      Respondent registered and used the <toyotaofclermont.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Toyota Motor Sales, U.S.A., Inc., is the exclusive importer and distributor of Toyota automobiles throughout the United States (except Hawaii).  Complainant has used the TOYOTA mark in commerce in the United States since 1959 to promote its automobiles and related accessories.  Complainant holds numerous trademarks with the United States Patent and Trademark Office (“USPTO”) for the TOYOTA mark (i.e. Reg. No. 843,138 issued January 30, 1968).  Complainant also registered the domain name <toyota.com>, which is being used to promote Complainant’s products and conduct business online.

 

Respondent, Abraham Dones, registered the <toyotaofclermont.com> domain name February 26, 2005.  Respondent is using the disputed domain name to display links to Complainant and its competitors’ products.  In an October 3, 2006, email from Respondent to Complainant, Respondent stated that the domain name is for sale and offered to sell the domain name to Complainant for a reasonable offer.

 

DISCUSSION

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 will draw such inferences as the Panel 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 Complainant to 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.

 

Identical to and/or Confusingly Similar

 

Complainant’s registrations of the TOYOTA mark with the USPTO predate Respondent’s registration of the disputed domain name.  Under Policy ¶ 4(a)(i), registration of a mark with an appropriate governmental authority such as the USPTO confers rights in that mark to Complainant.  Therefore, the Panel finds that Complainant established legal rights in the TOYOTA mark pursuant to Policy ¶ 4(a)(i).  See Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 200) (finding that successful trademark registration with the USPTO creates a presumption of rights in a mark); see also Innomed Tech., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant’s rights in the mark.”).

 

The disputed domain name that Respondent registered, <toyotaofclermont.com>, contains Complainant’s TOYOTA mark in its entirety and adds the geographical designation “of Clermont” as well as the generic top-level domain “.com.”  The addition of a geographical designation does not avoid a finding of confusing similarity under Policy ¶ 4(a)(i), and the addition of the generic top-level domain “.com” is without significance to this analysis.  Therefore, the Panel finds that the disputed domain name, <toyotaofclermont.com>, is confusingly similar to Complainant’s TOYOTA mark pursuant to Policy ¶ 4(a)(i).  See Net2phone Inc. v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s domain name <net2phone-europe.com> is confusingly similar to the complainant’s mark because “the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the domain name <cmgiasia.com> is confusingly similar to the complainant’s CMGI mark); see also Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . .").

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).

 

Rights to or Legitimate Interests

 

Complainant alleged that Respondent does not have rights or legitimate interests in the <toyotaofclermont.com> domain name.  Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).  Because Respondent failed to respond to the Complaint, the panel assumes that Respondent does not have rights or legitimate interests in the disputed domain name.  See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has asserted that respondent does not have rights or legitimate interests with respect to the domain name, it is incumbent on respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); 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 does not have rights or legitimate interests is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist). 

 

However, the Panel examines the record to determine if the record shows that Respondent has rights or legitimate interests under Policy ¶ 4(c).

 

Complainant alleged that Respondent is not commonly known by the <toyotaofclermont.com> domain name.  The WHOIS information identifies Respondent as “Abraham Dones” and Complainant has alleged that Respondent is not licensed or authorized by Complainant to use Complainant’s TOYOTA mark.  The Panel finds no evidence in the record suggesting that Respondent is commonly known by the name.  Therefore, the Panel concludes that Respondent is not commonly known by the <toyotaofclermont.com> domain name pursuant to Policy ¶ 4(c)(ii).  See Tercent Inc. v. 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 RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail").

 

Respondent is using the <toyotaofclermont.com> domain name to display links to Complainant and to its competitors’ products.  Respondent has acknowledged earning income from advertising hits.  Respondent’s unauthorized use of Complainant’s TOYOTA mark in the disputed domain name is an opportunistic attempt to commercially benefit from the goodwill associated with Complainant and its products.  It is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) and it is not a legitimate 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 TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).

 

Respondent also offered to sell the <toyotaofclermont.com> domain name to Complainant.  In Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003), the Panel found that “Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”  Similarly, in Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000), the Panel found that the respondent’s conduct purporting to sell the domain name suggested it had no legitimate use of the disputed domain name. 

 

Based on the evidence and the above holdings, the Panel concludes that Respondent has no rights or legitimate interests in the <toyotaofclermont.com> domain name pursuant to Policy ¶ 4(a)(ii).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent is currently offering the <toyotaofclermont.com> domain name for sale and has offered to sell it to Complainant.  The Panel finds that this evidence supports findings of bad faith registration pursuant to Policy ¶ 4(b)(i).  See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶ 4(b)(i).”).

 

Further, Respondent has caused the disputed domain name that contains in its entirety Complainant’s protected mark to display a list of links that lead Internet users seeking Complainant to websites of Complainant’s competitors.  This is likely to disrupt Complainant’s business by diverting business away from Complainant.  Therefore, the Panel finds that Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).

 

The disputed domain name, <toyotaofclermont.com>, which is confusingly similar to Complainant’s TOYOTA mark, is likely to cause confusion among customers searching for Complainant’s products.  Specifically, customers may become confused as to the affiliation, endorsement, or sponsorship of the products advertised by the links on Respondent’s website.  Respondent acknowledged receiving income for advertising hits at the site, and Respondent is therefore attempting to commercially benefit from this likelihood of confusion.  Therefore, the Panel finds that such use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).

 

The Panel finds that Complainant satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <toyotaofclermont.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Carolyn Marks Johnson, Panelist

Dated: February 20, 2007.

 

 

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