DECISION

Toyota Motor Sales, U.S.A., Inc. v. Landcruiser Connection

Claim Number:  FA0303000152460

PARTIES

Complainant is Toyota Motor Sales, U.S.A., Inc., Torrance, CA (“Complainant”) represented by Jordan S. Weinsten, of Oblon, Spivak, McClelland, Maier & Neustadt, P.C. Respondent is Landcruiser Connection, Sterling, VA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <landcruiserconnection.com>, registered with Network Solutions, Inc.

PANEL

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.

Tyrus R. Atkinson, Jr., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 28, 2003; the Forum received a hard copy of the Complaint on March 31, 2003.

On April 2, 2003, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <landcruiserconnection.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 April 2, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 22, 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@landcruiserconnection.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 April 29, 2003, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Tyrus R. Atkinson, Jr., 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.

RELIEF SOUGHT

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

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <landcruiserconnection.com> domain name is confusingly similar to Complainant’s LAND CRUISER mark.

2. Respondent does not have any rights or legitimate interests in the <landcruiserconnection.com> domain name.

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

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

FINDINGS

Complainant, Toyota Motor Sales, U.S.A., is a wholly-owned subsidiary of Toyota Motor Corporation, the owner of the LAND CRUISER mark. Complainant holds U.S. Patent and Trademark Office (“USPTO”) Reg. No. 2,590,587 for the LAND CRUISER mark registered on July 9, 2002. Complainant is the exclusive distributor of all Toyota brand vehicles, including LAND CRUISER vehicles, in the United States (except Hawaii), the United Mexican States, the Commonwealth of Puerto Rico and the U.S. Virgin Islands.

Complainant is a signatory to an Importer Agreement that grants it a License to use Toyota’s trademarks in the distribution territory. The Importer Agreement also obligates Complainant to monitor continuously the distribution territory for possible trademark infringement.

Complainant has used the LAND CRUISER mark in the United States in connection with its goods and services since as early as 1958. Since 1993 alone, sales of LAND CRUISER vehicles, parts and accessories in the United States have exceeded one billion dollars. Complainant has expended significant resources advertising and promoting its products under the LAND CRUISER mark. As a result of Complainant’s extensive promotion and sales of products and services under the LAND CRUISER mark, Complainant’s mark has acquired fame and distinctiveness.

Respondent, Landcruiser Connection, registered the <landcruiserconnection.com> domain name on March 10, 1997. Complainant’s investigation of Respondent reveals that Respondent is a Virginia corporation that amended its name to Cruiser Connection in 2000. As of September 1999, Respondent was using the domain name in connection with the “servicing of Complainant’s LAND CRUISER vehicles, and for sales of aftermarket products adaptable to Complainant’s LAND CRUISER vehicles.”

Complainant’s correspondence with Respondent indicates that Respondent was prepared to sell the domain name registration to “interested entities.” As noted, Respondent eventually changed its company name to Cruiser Connection, Inc., and also changed its website to <4x4connection.com>. However, Respondent indicated in a discussion with Complainant’s counsel that it intended to “minimally maintain” the subject domain name “as a vehicle to direct our customer base to our enhanced capabilities.”

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 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.

Identical and/or Confusingly Similar

Complainant has established rights in the LAND CRUISER mark through registration and subsequent continuous use of the mark. See The Men’s Wearhouse, Inc. v. Brian Wick, FA 117861 (Nat. Arb. Forum Sept. 16 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning”).

Respondent’s <landcruiserconnection.com> domain name is confusingly similar to Complainant’s LAND CRUISER mark. Respondent’s second-level domain incorporates Complainant’s mark in its entirety, and deviates only with the addition of a generic word. Further, because Complainant’s LAND CRUISER mark is well-known among the consuming public, it is provided an expanded scope of protection under the Policy. See Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s website, think that an affiliation of some sort exists between Complainant and Respondent, when in fact, no such relationship would exist); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied).

Additionally, top-level domains, such as “.com,” are considered irrelevant when conducting a “confusingly similar” analysis under Policy ¶ 4(a)(i). Therefore, Respondent’s domain name is confusingly similar to Complainant’s mark. See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top-level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant’s submission to the Panel asserts that Respondent does not have any rights or legitimate interests in the <landcruiserconnection.com> domain name. Because Respondent has failed to submit a Response, Complainant’s assertions are unopposed and the Panel is permitted to accept all reasonable inferences contained in the Complaint as true, unless clearly contradicted by the evidence. 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).

Additionally, because Complainant has provided proof of valid, subsisting rights in a mark that is confusingly similar to the domain name in question and alleged that Respondent lacks rights or legitimate interests in the domain name, the burden shifts to Respondent. By failing to respond, Respondent has consequently failed to assert any circumstances that could substantiate its rights or interests in the subject domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain name, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a Response, Respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).

Unrefuted evidence indicates that Respondent intimated its desire or willingness to sell its rights in the subject domain name to an “interested entity.” Respondent’s apparent willingness to dispose of its rights in the domain name suggests it lacks rights in <landcruiserconnection.com> under Policy ¶¶ 4(c)(i) and (iii). See Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding Respondent’s conduct purporting to sell the domain name registration suggests it has no legitimate use); see also Skipton Bldg. Soc’y v. Colman, D2000-1217 (WIPO Dec. 1, 2000) (finding no rights in a domain name where Respondent offered the infringing domain name for sale and the evidence suggests that anyone approaching this domain name through the worldwide web would be "misleadingly" diverted to other sites).

Additionally, Respondent continues to make use of the <landcruiserconnection.com> domain name despite changing its corporate identity to Cruiser Connection and moving its operations to <4x4connection.com>. Respondent has made clear that it intends to continually divert Internet traffic from the infringing domain name to its website, thereby profiting from unauthorized use of Complainant’s mark in the domain name. Such use fails to establish rights or legitimate interests in the domain name under the Policy. See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website).

Respondent is not authorized or licensed by Complainant to make use of the LAND CRUISER mark, or any confusingly similar variation, in a domain name. Information before the Panel indicates that Respondent is not commonly known by the <landcruiserconnection.com> domain name, but is incorporated under the “Cruiser Connection” moniker. Moreover, Complainant’s LAND CRUISER mark is well-known and is associated with Complainant’s goods and services. Therefore, Respondent fails to establish rights in the domain name under Policy ¶ 4(c)(ii). See 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); see also Victoria’s Secret v. Asdak, FA 96542 (Nat. Arb. Forum Feb. 28, 2001) (finding sufficient proof that Respondent was not commonly known by a domain name confusingly similar to Complainant’s VICTORIA’S SECRET mark because of Complainant’s well-established use of the mark).

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

At the time Respondent registered the <landcruiserconnection.com> domain name, Complainant’s LAND CRUISER mark was famous as a result of Complainant’s extensive use and promotion of the mark. Consequently, Respondent likely knew, or should have known, of Complainant’s rights in the LAND CRUISER mark. Therefore, Respondent’s registration of the domain name, despite having at least constructive knowledge of its infringing characteristics, constitutes bad faith registration under Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “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, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here 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).

Respondent’s bad faith use of the domain name is enunciated under Policy ¶ 4(b)(i). Specifically, Respondent indicated its willingness to sell its rights in the disputed domain name in a discussion with Complainant’s counsel by stating, “In the meantime an offering is being prepared to sell the domain name to interested entities.” Respondent is holding <landcruiserconnection.com> hostage while attempting to solicit bids for the domain name registration, which constitutes bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where Respondent offered domain names for sale); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”).

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

DECISION

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

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

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 2, 2003

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