WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Toyota Motor Sales USA v. Rafi Hamid dba ABC Automobile Buyer

Case No. D2001-0032

 

1. The Parties

Complainant Toyota Motor Sales U.S.A., Inc., a California Corporation, ("Complainant" or "Toyota") located and doing business at 19001 South Western Avenue, Torrance, California 90509-2991 USA.

Respondent is Rafi Hamid dba ABC Automobile Buyer ("Respondent" or "ABC Auto") located at 1415 W. 22nd St., Suite 150, Oak Brook, Illinois 60523-2021 USA.

 

2. The Domain Name(s) and Registrar(s)

The domain names at issue are the following which are registered by Network Solutions, Inc. (the "Registrar") located at 505 Huntmar Park Drive, Herndon, Virginia, 20170 USA:

"lexuschicago.com"

"mcgrathlexus-chicago.com"

"chicagolexus.com"

"napervillelexus.com"

"chicagolandlexus.com"

"usalexus.com"

"chicago-lexus.com"

"eliteoflexus.com"

"lexuselite.com"

"leasinglexus.com"

"midwestlexus.com"

"mcgrathlexuschicago.com" and

"uslexus.com".

These domain names are collectively referred to as the "Domain Names."

 

3. Procedural History

On January 5, 2001, the WIPO Arbitration and Mediation Center (the "Center") received a copy of the Complaint of Complainant. On January 11, 2000, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. The Complainant paid the required fee.

On January 12, 2001, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Names and that the Domain Names are registered in the Respondent's name.

The Center verified that the Complaint with Amendment satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

On January 17, 2001, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under paragraph 2(a) of the Rules.

On February 14, 2001, the Center advised Respondent that it was in default for failing to file its Response.

On February 26, 2001, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page (the "Sole Panelist"), the Center notified the parties of the appointment of a single-arbitrator panel consisting of the Sole Panelist.

The Sole Panelist, thereupon, granted a pending request from Respondent to file a Response after the deadline. Respondent had submitted documentation to WIPO, which the Sole Panelist deems to be a Response.

 

4. Factual Background

Complainant is a wholly-owned subsidiary of Toyota Motor Corporation, a Japanese corporation, and is the exclusive importer and distributor of LEXUS automobiles throughout the United States except the State of Hawaii. Complainant is the owner of the domain name "lexus.com" as well as other domain names that include the mark LEXUS. Complainant has the exclusive authority to appoint and license LEXUS dealers in the United States to use the LEXUS name and mark.

Complainant and its corporate parent Toyota Motor Corporation have substantially and continuously used the name and mark LEXUS in the United States since at least as early as 1989. Sales of LEXUS automobiles, motor trucks and structural parts and accessories in the United States alone have exceeded One Billion Dollars ($1,000,000,000) since 1989, and Complainant has spent substantial sums in advertising such goods during this extensive period of time.

Complainant has the right to use the LEXUS trademark and service mark in the United States and is responsible for the enforcement of said mark in the United States against adverse uses, which impair those rights. Complainantís corporate parent Toyota Motor Corporation is the owner of the following subsisting United States Registrations of the mark LEXUS, among others, covering a wide variety of goods and services:

(1) Registration No. 1,574,718 of the mark LEXUS, for automobiles, which issued January 2, 1990 and has been duly renewed;

(2) Registration No. 1,675,339 of the mark LEXUS, for repair and maintenance services for automotive vehicles and automotive vehicle leasing, which issued February 11, 1992; and

(3) Registration No. 1,739,201 of the mark LEXUS, for financing the purchasing and leasing of automobiles, which issued December 8, 1992.

5. Partiesí Contentions

A. Complainant contends that it has numerous registrations of the trademark LEXUS. Complainant further contends that the Domain Names are identical with and confusingly similar to the LEXUS mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

B. Respondent failed to contest Complainantís assertion that it has numerous registrations of the trademark LEXUS or that the Domain Names are identical with and confusingly similar to the trademark.

Respondent apparently contests Complainantís assertion that Respondent has no rights or legitimate interest in the Domain Names.

Respondent contests Complainantís assertion that Respondent registered and used the Domain Names in bad faith.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."

Since both the Complainant and Respondent are domiciled in the United States, and since United Statesí courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

i) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Identity or Confusing Similarity.

Complainant contends that it has numerous registrations of the trademark LEXUS. Complainant further contends that the Domain Names are identical with and confusingly similar to the LEXUS mark pursuant to the Policy paragraph 4(a)(i).

Complainant contends that it has numerous registrations of the trademark LEXUS and that its trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the LEXUS mark. 15 U.S.C. ß 1115. Complainant further alleges that its registrations are incontestable and conclusive evidence of its ownership of the mark and exclusive right to use the mark in connection with the stated goods. 15 U.S.C. ßß 1065 and 1115(b).

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. See, e.g., EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., ICANN Case No. D2000-0047.

Respondent has not contested the assertions by Complainant that it has valid registrations of the trademark. Therefore, the Sole Panelist finds that Complainant, for purposes of this proceeding, has enforceable rights in the trademark.

Complainant further contends that the Domain Names are identical with and confusingly similar to the trademark pursuant to the Policy paragraph 4(a)(i).

Respondent has not contested the assertions by Complainant that the Domain Names are confusingly similar to the trademark.

Complainant alleges that the Domain Names are confusingly similar to the trademark LEXUS, and are otherwise identical to the LEXUS mark except for the use of geographic designations such as "USA", "US", "Chicago", "Chicagoland", "Midwest", and "Naperville", generic words such as "leasing" and "elite" and surnames of authorized LEXUS dealers such as "McGrath".

The Sole Panelist notes that the entirety of the mark LEXUS is included in each of the Domain Names.

Generally, a user of a mark "may not avoid likely confusion by appropriating another's entire mark and adding descriptive or non-distinctive matter to it." 3 J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition ß 23:50 (4th ed. 1998).

Adaptive Molecular Tech., Inc. v. Woodward, WIPO Case No. D2000-0006 (February 28, 2000,) (finding that a domain name was "undoubtedly" confusingly similar because it incorporated the "primary, distinctive element of both of Complainant's trademarks.") Moreover, in determining the similarity of two marks, points of similarity are weighed more heavily than points of difference. See, GoTo.com, Inc. v. Walt Disney Co., 202 F.3d 1199, 1206 (9th Cir. 2000); Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 1054-55 (9th Cir. 1999).

Administrative panels and arbitrators considering similar cases where registrants simply added a geographical name to a registered trademark have found such domain names to be confusingly similar. See AT&T Corp. v. WorldclassMedia.com ("attmexico.com", "att-latinamerica.com"), WIPO Administrative Panel Decision in Case No. D2000-0553 (transfer ordered where domain names incorporating the AT&T trademark plus a country or place name were found to be confusingly similar to the AT&T trademarks); America Online, Inc. v. Dolphin@Heart ("aolfrance.com", "aolgermany.com", "aolireland.com", "aolspain.com"), WIPO Administrative Panel Decision in Case No. D2000-0713 (transfer ordered where domain names were confusingly similar because the "addition of a place name generally does not alter the underlying mark to which it is added."); Wal-Mart Stores, Inc. v. Walmarket Canada ("walmartcanada.com"), Administrative Panel Decision in Case No. D2000-0150 (transfer ordered where "walmartcanada.com" domain name was found to be confusingly similar to complainantís WAL-MART trademark); and Cellular One Group v. Paul Brien (cellularonechina.com), Administrative Panel Decision in Case No. D2000-0028 (transfer ordered where "cellularonechina.com" domain name was found to be identical or confusingly similar to the CELLULARONE trademark).

Administrative panels and arbitrators considering similar cases where registrants simply added descriptions of services or products to a registered trademark have found such domain names to be confusingly similar. See, Parfums Christian Dior v. 1 Netpower, Inc., WIPO Case No. D2000-0022 (March 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark).

Complainant further alleges that Respondentís use of the LEXUS name and mark in the Domain Names at issue erroneously leads Complainantís customers and customers of Complainantís authorized LEXUS dealers to believe that the Domain Names are somehow associated with, endorsed by or sponsored by Complainant and/or its authorized LEXUS dealers. Administrative panels and arbitrators have found domain names, which incorporate well-known or famous marks to be confusingly similar in that the offending domain name is misleading. See, Nike, Inc., WIPO Case No. D2000-0167.

Complainant's mark and its services are famous. Complainant has been using its trademark as a web address and domain name since as at least as early as 1989. Persons familiar with Complainant's products and services are likely to conclude that the Domain Names are simply an extension of Complainant's business. Persons encountering Respondent's site will be mislead into believing Complainant is beginning another business, which could be detrimental to Complainant. In view of the fame of Complainant's marks and the lack of distinctiveness afforded by the simple addition of non-distinctive or descriptive material, the Domain Names are misleading.

Therefore, the Sole Panelist finds that the Domain Names are confusingly similar to the LEXUS mark pursuant to the Policy paragraph 4(a)(i).

Rights or Legitimate Interest.

Complainant contends that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Respondent has no relationship with, license from or specific permission from Complainant for the use of the LEXUS mark.

The Policy paragraph 4(c) allows three nonexclusive methods for the Sole Panelist to conclude that it has rights or a legitimate interest in the Domain Name:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainant alleges that Respondent has offered no bona fide good or services using the Domain Names, is not commonly known by any of the Domain Names at issue in this proceeding and cannot claim that it is making a noncommercial or fair use of the Domain Names.

Complainant alleges that Rafi Hamid is a current employee of authorized LEXUS dealer Arlington Lexus. At various times, Mr. Hamid has been employed by other LEXUS dealerships. Nevertheless, his employment at a LEXUS dealership did not give Mr. Hamid the right to register the Domain Names at issue in this proceeding.

Respondent has asserted that while employed at various Lexus dealerships in the Chicago area, he registered the Domain Names to demonstrate e-commerce marketing possibilities to Toyota and the dealerships. Respondent has given presentations to the dealers and to corporate officials for Toyota from Japan concerning his ideas for e-commerce. Respondent asserts that these presentations were well received and that a Toyota officer Hiro Yoshihashi wrote him an email commending him on his ingenuity.

While not specifically stated in the Response, the Sole Panelist assumes that these statements are intended to be an allegation that Respondent has rights and legitimate interests in the Domain Names.

The communications, which Respondent has received from the dealerships and from corporate Toyota officials, do not constitute a license for use of the LEXUS trademark. There is no indication in the information supplied by Respondent that he was conducting his own business. Any marketing was done on behalf of the dealerships or Toyota. Therefore, Respondent does not qualify under any of the subparagraphs (i) - (iii) of the Policy, paragraph 4(c).

The file contains no evidence that the use of the Domain Names meets the elements for any of the nonexclusive methods provided for in the Policy paragraph 4(c). Therefore, the Sole Panelist finds that Respondent has no rights or legitimate interest in the Domain Names pursuant to the Policy paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Names in bad faith in violation of the Policy paragraph 4(a)(iii).

The Policy paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product

Complainant alleges that the Respondent has registered the Domain Name in order to prevent the Complainant from reflecting the trademark in the corresponding Domain Name and has engaged in a pattern of such conduct, thus meeting the criteria for subparagraph 4(b)(ii).

Complainant alleges that Mr. Hamid linked the domain names "lexuschicago.com" and "chicagolexus.com" to Arlington Lexusí website, again without permission of either Complainant or Arlington Lexus. Upon Complainantís objection, Arlington Lexus directed Mr. Hamid to cease linking these domain names to Arlington Lexusí website. Respondentís intent to prevent Complainant as the owner of the trademark from reflecting the mark in a corresponding is evidenced by the fact that while Mr. Hamid stopped linking the domain names "lexuschicago.com" and "chicagolexus.com" to Arlington Lexusí website, he has steadfastly refused to transfer the Domain Names to Complainant. By de-linking the domain names at the direction of Arlington Lexus, Mr. Hamid acknowledged that he has no rights or legitimate interests in the Domain Names, yet he continues to hold them, yet he refuses to transfer the Domain Names to Complainant.

Complainant further alleges that Respondent registered and is using the Domain Names in bad faith as evidenced by Respondentís pattern of registering other domain names, which are identical or confusingly similar to famous and/or well-known marks such as "nbaboys.com" and "ncaaboys.com". Complainantís search of a Whois database search conducted on January 4, 2001, proves that Respondent is accumulating, collecting and hoarding other domain names of well-known marks. Respondentís bad faith registration of the Domain Names at issue in this proceeding is amply demonstrated by this pattern of registering other domain names that are identical or confusingly similar to famous and/or well-known marks unaffiliated with Respondent. See, Colgate-Palmolive Co. v. Kasinga, No. FA0002000094203 (NAF April 7, 2000).

Respondentís intent to prevent Complainant from using the Domain Names is further evidenced by his failure and refusal to communicate with Complainant despite repeated attempted contacts by Complainant. See, Emory Healthcare, Inc., supra. (arbitrator found that Respondentís failure or refusal to communicate despite repeated contacts or attempted contacts by Complainant was evidence of Respondentís bad faith use and registration of the EMORY domain names). Since September 8, 2000, Complainant has attempted to contact Mr. Hamid and ABC Automobile Buyer regarding its unauthorized registration and use of the Domain Names. Respondent did not reply to Complainantís September 8, 2000, letter and Complainant again attempted to communicate with Respondent in a follow-up letter dated December 4, 2000. Complainantís authorized representative, Eric Fingerhut, has left several voice mail messages for Mr. Hamid. Mr. Hamid has not returned any of Mr. Fingerhutís telephone calls.

The Sole Panelist additionally finds that this evidence is sufficient to establish the necessary elements of bad faith under the Policy paragraph 4(b)(ii).

The four criteria set forth in the Policy paragraph 4(b) are nonexclusive. Telstra Corporation Limited v. Nuclear Marshmellows, WIPO Case No. D2000-0003. In addition to these criteria, other factors alone or in combination can support a finding of bad faith.

Inaction or Lack of Use.

One such factor is that Respondent has taken no action to implement and has made no use of the Domain Names. Complainant alleges that in the nearly two year period since Respondent registered the Domain Names, Respondent has not made any demonstrable preparations to use the Domain Names, either for active websites or as trademarks. The only action taken by Respondent is the registration of the Domain Names themselves. None of the Domain Names registered by Respondent resolve to active sites; accordingly, Complainantís customers are likely to be frustrated in their efforts to reach Complainantís website and the websites of Complainantís authorized dealers.

See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000). Telstra it was established that registration together with "inaction" and other facts can constitute bad faith use, and the Telstra decision has since been cited for that proposition and followed by subsequent Panels. Ingersoll-Rand v. Frank Gully, d/b/a Advcomren, WIPO Case No. D2000-0021; Guerlain, S.A. v. Peikang, WIPO Case No. D2000-0055; Compaq Computer Corp. v. Boris Beric, WIPO Case No. D2000-0042; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075; Sanrio Co. Ltd. and Sanrio, Inc. v. Lau, WIPO Case No. D2000-0172; 3636275 Canada, dba eResolution v. eResolution.com, WIPO Case No. D2000-0110; Stralfors AB v. P D S AB, WIPO Case No. D2000-0112; InfoSpace.com, Inc. v. Ofer, WIPO Case No. D2000-0075.

To quote a prior Panel decision, "[B]ecause Respondent is contributing no value-added to the Internet -- it is merely attempting to exploit a general rule of registration -- the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it." Educational Testing Service v. TOEFL, ICANN Case No. D2000-0044.

See also, Leland Stanford Junior Univ. v. Zedlar Transcription & Translation, FA 0006000094970 (NAF July 11, 2000); Revlon Consumer Prods. Corp. v. Yosef, D2000-0468 (WIPO July 27, 2000) (citing cases where panel found inaction constitutes bad faith).

In World Wrestling Federation Entertainment Inc (WWFE) v. Rooij, WIPO Case No. D2000-0290 (June 20, 2000) the Panel made a finding of bad faith based on the fact that the domain name website had not been developed, stating "the concept of a domain name being used in bad faith is not limited to positive action; inaction is within the concepts." Id. at 10.15. See also, Mondich v. Brown, WIPO Case No. D00-0004 (February 16, 2000) (bad faith evidenced by "failure for a substantial period of time to make good faith use of the domain name for [respondent's] business"); Casual Corner Group, Inc. v. Neil Young, No. FA0007000095112 (NAF August 7, 2000); Emory Healthcare, Inc. v. Gulf South Limited, No. FA 0005000094892 (NAF July 5, 2000).

Actual or Constructive Knowledge

A second factor found to support a finding of bad faith is Respondentís knowledge of the Complainantís mark. Complainant worked at several Lexus dealerships and has actual knowledge of the mark and its strength.

Complainant has had the right to use and has used the mark LEXUS in the United States substantially and continuously for more 11 years. The significant goodwill and value of the mark LEXUS is understood by Respondent. Given the fame of the mark LEXUS, it is clear that Respondent registered the Domain Names with full knowledge of Complainantís rights in the trademark and service mark LEXUS, either for the purpose. Respondentís conduct prevents Complainant and its authorized dealers from promoting its own products and services and prevents Complainant from using these domain names. See Emory Healthcare, supra. The result is that Internet traffic intended for Complainant or its authorized dealers can be diverted to Respondent. Respondentís use of the Domain Names creates a likelihood of confusion with Complainantís marks. Since Respondent is not licensed to use the mark LEXUS in this manner, Complainant is harmed because Toyotaís valuable trademarks and reputation are being placed into the hands of Respondent over which Complainant has no control. The public is harmed because it is likely to be confused as to the source of the goods and services that may be offered at sites operated under the Domain Names.

Actual or constructive knowledge of the Complainantís rights in the Trademarks is a factor supporting bad faith. See Expedia, Inc. v. European Travel Network, D2000-0137 (WIPO April 18, 2000); Document Technologies v. International Electronic Communications, Inc., D2000-0270 (WIPO June 6, 2000) (Respondentís knowledge of complainantís mark at the time of registration of the domain name suggests bad faith).

In addition, Respondent had constructive notice of the LEXUS mark due to Complainantís numerous registrations prior to the registration of the Domain Names. See, e.g., CCA Industries v. Dailey (bikinizone.com), WIPO Administrative Panel Decision in Case No. D2000-0148 (constructive notice found where domain name confusingly similar to complainantís mark and mark registered prior to respondentís domain name); Young Genius Software AB v. MWD (younggenius.com), WIPO Administrative Panel Decision in Case No. D2000-0591 (constructive notice found where complainant had trademark registration in Sweden and domain name registration under the .se top-level domain name prior to respondentís domain name registration); The Channel Tunnel Group Ltd. v. Powell, WIPO Case No. D2000-0038 (March 17, 2000) (Respondent's awareness of complainant's mark when he registering the domain name at issue supported an inference of bad faith).

Failure to Respond to Requests to Transfer

A third factor is Respondentís refusal to voluntarily transfer the contested Domain Name. Complainant has alleged that Respondent refuses to transfer the Domain Names and refuses to respond to Complainantís communications. Failure to respond to a complainantís efforts to make contact provides "strong support for a determination of Ďbad faithí registration and use." Encyclopaedia Britannica v. Zucarini, D2000-0330 (WIPO June 7, 2000).

Use of Entire Mark Without Plausible Good Faith Use

A fourth factor is the use of Complainantís entire mark in the Domain Name, thus making it difficult to infer a legitimate use of the Domain Name by Respondent. In Cellular One Group v. Paul Brien, D2000-0028 (WIPO March 10, 2000), Complainant filed a WIPO complaint against the Registrant of domain name "cellularonechina.com". The WIPO panel agreed with Complainant that the Registrant unlawfully registered an identical or confusingly similar domain name in bad faith. Moreover, the Panel inferred bad faith use of "cellularonechina.com", because the domain name included Complainantís entire trademark. In light of Cellular Oneís trademark registrations and applications, "it is not possible to conceive of a plausible circumstance in which Respondent could legitimately use the domain name." See Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Respondentís Domain Names use the entirety of Complainantís trademark, namely the phrase LEXUS. No plausible explanation exists as to why Respondent selected the name LEXUS as part of the Domain Names other than to trade on the goodwill of Toyota. Respondent has never provided any information to contradict the conclusion that Respondent registered the Domain Names in order to benefit from the well-known LEXUS mark.

Respondent has failed to come forward with any facts to contradict the assertions of Complainant.

The evidence establishes: (i) inaction by Respondent and lack of use of the Domain Names; (ii) actual and constructive knowledge by Respondent of Complainantís rights in the LEXUS mark upon the registration of the Domain Names; (iii) Respondentís failure to positively respond to Complainantís request for transfer; and (iv) the use of Complainantís entire mark creating an absence of any plausible use of the Domain Names that would constitute good faith.

Based upon this evidence, the Sole Panelist finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy paragraph 4(b)(ii) and that Complainant has shown sufficient additional facts beyond the element of the subparagraphs of 4(b) to support a finding that the Domain Names were registered and used in bad faith pursuant to the Policy paragraph 4(a)(iii).

 

7. Decision

The Sole Panelist concludes (a) that the Domain Names are confusingly similar to Complainantís numerous registrations of the trademark LEXUS, (b) that Respondent has no rights or legitimate interest in the Domain Names and (c) that Respondent registered and used the Domain Names in bad faith. Therefore, pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the Sole Panelist orders that the Domain Names be transferred to Toyota Motor Corporation.

 


 

Richard W. Page
Sole Panelist

March 28, 2001