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Piaggio & C. S.p.A., Piaggio USA, Inc. v. Phillip K. Waters, Jr. [2005] GENDND 122 (12 January 2005)


National Arbitration Forum

national arbitration forum

DECISION

Toyota Motor Sales, U.S.A., Inc. v. I. E. Mann d/b/a Everything Internet

Claim Number: FA0411000370902

PARTIES

Complainant is Toyota Motor Sales, U.S.A., Inc. (“Complainant”), represented by John Hornick, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street Nw, Washington, DC 20005. Respondent is I. E. Mann d/b/a Everything Internet (“Respondent”), 1 Oxford Valley, Suite 850, Langhorne, PA 19047.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <autotoyotaparts.com>, registered with Register.com.

PANEL

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.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 23, 2004; the National Arbitration Forum received a hard copy of the Complaint on November 24, 2004.

On November 24, 2004, Register.com confirmed by e-mail to the National Arbitration Forum that the domain name <autotoyotaparts.com> is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com 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 November 30, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 20, 2004 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@autotoyotaparts.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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

On December 27, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf, (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." 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. Respondent’s <autotoyotaparts.com> domain name is confusingly similar to Complainant’s TOYOTA mark.

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

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

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

FINDINGS

Complainant is a wholly owned subsidiary of Toyota Jidosha Kabushiki Kaisha t/a Toyota Motor Corporation, owner of the TOYOTA trademark. Complainant is authorized to enforce the TOYOTA trademark registration. Complainant develops and manufactures passenger vehicles and a wide variety of other products related to automobiles, including automobile parts. Complainant has sold millions of vehicles bearing the TOYOTA mark and offers parts and accessories under the TOYOTA mark for all of its vehicles. Complainant spends millions of dollars each year to advertise and promote its TOYOTA-branded products and services.

 

Complainant has continuously used the TOYOTA mark since at least 1958. In August 2004, Business Week magazine ranked the TOYOTA mark as the ninth most valuable brand name in the world. Complainant also holds registrations for the TOYOTA mark in almost 200 countries, including U.S. Reg. No. 843,138, on file at the United States Patent and Trademark Office (issued January 30, 1968). Complainant also operates a website at the <toyota.com> domain name.

Respondent registered the <autotoyotaparts.com> domain name on May 17, 2002. The domain name resolves to a website that offers and promotes Complainant’s products and products and services that compete with Complainant. Respondent is not an authorized TOYOTA dealer and is not licensed to use Complainant’s TOYOTA mark for any purpose.

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 that it has rights in the TOYOTA mark through registration with the United States Patent and Trademark Office and through continuous use of the mark in commerce. See Men’s Wearhouse, Inc. v. 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption).

The <autotoyotaparts.com> domain name is confusingly similar to Complainant’s TOYOTA registered trademark because the disputed domain name fully incorporates the mark while merely adding the generic terms “auto” and “parts,” which are also descriptive of products and services that Complainant offers. The disputed domain name also incorporates the “.com” generic top-level domain. Neither the addition of generic or descriptive terms nor the addition of a generic top-level domain distinguishes the disputed domain name from Complainant’s mark. See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to Complainant’s marks and likely to mislead Internet users into believing that products and services offered by Respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to 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 Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

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

Rights or Legitimate Interests

Respondent has failed to submit a Response in this proceeding. Therefore, Complainant’s submission has gone unopposed and its arguments unrefuted. In the absence of a Response, the Panel accepts as true all reasonable allegations contained in the Complaint unless clearly contradicted by the evidence. Because Respondent has failed to submit a Response, it has failed to propose any set of circumstances that could substantiate its rights or legitimate interests in the <autotoyotaparts.com> domain name. See 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); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the Complaint to be deemed true).

Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor is Respondent making a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). The record reveals that Respondent’s domain name directs unsuspecting Internet users to a website that offers for sale both Complainant’s products and products and services that compete with Complainant. Respondent makes opportunistic use of Complainant’s mark in order to capitalize on the goodwill and fame associated with the TOYOTA moniker; thus, Respondent fails to establish rights or legitimate interests in the <autotoyotaparts.com> domain name. See Ticketmaster Corp. v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 9, 2001) (finding no rights or legitimate interests where Respondent generated commercial gain by intentionally and misleadingly diverting users away from Complainant's site to a competing website); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (“[I]t would be unconscionable to find a bona fide offering of services in a respondent’s operation of [a] web-site using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Nike, Inc. v. Ben Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).

No evidence before the Panel suggests Respondent is commonly known by the <autotoyotaparts.com> domain name under Policy ¶ 4(c)(ii). Respondent’s WHOIS information indicates that the registrant of the disputed domain name is known as “I. E. Mann d/b/a Everything Internet” and is not known by the confusing second-level domain that infringes on Complainant’s TOYOTA mark. Moreover, Respondent is not authorized or licensed to use Complainant’s mark for any purpose. 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").

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

Registration and Use in Bad Faith

Respondent uses a confusingly similar variation of Complainant’s famous TOYOTA mark within the <autotoyotaparts.com> domain name to ensnare unsuspecting Internet users. Respondent then redirects the users to its website, which offers competing products and services. Respondent commercially benefits from this diversion by selling products and services to Internet users who are searching under Complainant’s mark. Such infringement is what the Policy was intended to remedy. Thus, the Panel finds Respondent registered and used the domain name in bad faith pusuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

Respondent has also registered and used a domain name that is confusingly similar to Complainant’s mark for the purpose of offering products and services that compete with Complainant’s products and services. Moreover, Respondent’s website purports to offer Complainant’s products for sale even though Respondent lacks authorization from Complainant to sell Complainant’s products. Respondent’s use of the <autotoyotaparts.com> domain name establishes that Respondent registered the domain name for the purpose of disrupting the business of a competitor pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business); see also Puckett v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that Respondent has diverted business from Complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also Volkswagen of Am., Inc. v. Site Design Online, FA 95753 (Nat. Arb. Forum Nov. 6, 2000) (transferring BAYAREAVW.COM from Respondent, an automobile dealership specializing in Volkswagens, to Complainant); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant).

Furthermore, while each of the four circumstances listed under Policy ¶ 4(b), if proven, evidences bad faith use and registration of the <autotoyotaparts.com> domain name, additional factors can also be used to support findings of bad faith. See Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (finding that in determining if a domain name has been registered in bad faith, the Panel must look at the “totality of circumstances”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“the examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”).

Respondent’s registration of the disputed domain name, which incorporates Complainant’s well-known registered mark and simply adds generic and descriptive terms, suggests that Respondent knew of Complainant’s rights in the TOYOTA mark. Additionally, Complainant’s trademark registration, on file at the United States Patent and Trademark Office, gave Respondent constructive notice of Complainant’s mark. Thus, the Panel finds that Respondent chose the <autotoyotaparts.com> domain name based on the distinctive and well-known qualities of Complainant’s mark, which evidences bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”); see also Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that Respondent demonstrated bad faith where Respondent was aware of Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy paragraph 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); 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); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof”).

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

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 <autotoyotaparts.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated: January 11, 2005


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