WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Toyota France and Toyota Motor Corporation v. Computer-Brain

Case No. D2002-0002

 

1. The Parties

The Complainants are Toyota France, a corporation organized under the Laws of France, of Vaucresson, France and Toyota Jidosha K.K. d/b/a Toyota Motor Corporation, a corporation organized under the Laws of Japan, of Aichi-ken, Japan.

The Respondent is Computer-Brain of, Chartres, France.

 

2. The Domain Name and Registrar

The domain name at issue is <toyota-occasions.com>.

The Registrar is Network Solutions, Inc. of Herndon, Virginia, USA.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center ("The Center") by e-mail on January 2, 2002, receipt of which was acknowledged by the Center on January 4, 2002, and a hardcopy of the Complaint along with Exhibits were received in the Center on January 8, 2002.

On January 11, 2002, the Center sent to the Registrar (Network Solutions, Inc.) a request for verification. On January 15, 2002, Network Solutions, Inc. confirmed that it is the concerned Registrar and that the Respondent is the registrant of the domain name <toyota-occasions.com> as well as the administrative contact thereof.

On January 17, 2002, the Center verified that all formal requirements had been complied with, including payment of the prescribed fee.

On January 18, 2002, the Complaint was notified to the Respondent in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 2(a) and the administrative proceedings formally commenced on that day.

On February 7, 2002, the Center received a letter from the Respondent dated January 31, 2002, along with a copy of an earlier letter dated January 31, 2002, sent by the Respondent to the Complainants' attorney. On February 8, 2002, to which the Center issued a Response Deficiency Notification, to which the Respondent responded by e-mail on February 14, 2002.

On March 8, 2002, the Center notified the parties that an administrative panel, composed of a single member had been appointed and that the Panelist had duly submitted a "Statement of Acceptance and Declaration of Impartiality and Independence" to the Center.

No further submissions were received by the Center or the Panel. The date scheduled for issuance of the Panel's decision is March 22, 2002.

The language of the proceedings is English.

 

4. Factual Background

The Complainants, namely Toyota Motor Corporation ("TMC") and Toyota France, own numerous registrations worldwide for the trademark "Toyota", which designates vehicles and allied goods and/or services. Some of these marks have been filed as early as 1966, 1975 and 1982. TMC manufactures and distributes the said vehicles whereas Toyota France distributes the vehicles in France. The Complainants have also registered a number of domain names formed with the trademark "Toyota".

On March 31, 2000, the Respondent registered the domain name <toyota-occasions.com> with Network Solutions, Inc.

On December 5, 2001, the Complainantís attorney sent a registered cease and desist letter to the Respondent, receipt of which was acknowledged on December 11, 2001, emphasizing the well-know character of the trademark "Toyota" and requesting the Respondent to cease any use of, and to transfer, the domain name <toyota-occasions.com> to the Complainants within eight days.

It is of particular relevance to emphasize that the investigations carried out by the Complainants revealed that :

- The Respondent is a French company "Computer-Brain";

- The managing director of which is Mr. Pierre-Eric Destruy;

- The address and phone/fax numbers (as given in the Whois of the disputed domain name) of which correspond to another company, namely SA Thireau BMW Garage, a BMW car dealer;

- The Chief of Marketing of SA Thireau BMW Garage is Mr. Pierre-Eric Destruy;

- Mr. Pierre-Eric Destruy, acting as managing director of Computer-Brain, registered a series of domain names all formed with a car manufacturer trademark (such as Audi, Fiat, Nissan, Mercedes, Volvo, Ford, Opel, Peugeot, Porsche) associated with the name "occasion(s)".

As the aforesaid cease-and-desist letter had remained without reply, the Complainants filed the Complaint with the Center on January 2, 2002.

On January 31, 2002, after the present proceedings had commenced and on the deadline for response of February 7, 2002, the Center received a letter from the Respondent. Along with a covering letter was attached a copy of another registered letter dated January 31, 2002, directed to the Complainantsí attorney. No evidence of acknowledgement of receipt of this letter by the Complainant was produced.

On February 8, 2002, the Center communicated with the Respondent via e-mail to notify the Respondent that the submitted letter (if taken as the Respondentís response) did not comply with the requirements of the Rules as, among others, it was not drafted in the English language (the language of the proceedings).

The Respondent was given up to February 13, 2002, to amend its response to have it comply with the formal requirements described in the Centerís notification of February 8, 2002.

The Respondent responded to the Center on February 14, 2002, by e-mail, and in English, stating that it needed more time but that, in any event, it would not oppose the "release" of the disputed domain name. This correspondence was copied by the Center to the Complainantsí attorney.

Paragraph 10(b) of the Rules provide that :

"In all cases, the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case"

Because the Respondentís response (i.e., the letter from the Respondent sent to the Center) was received in the Center by the deadline of February 7, 2002, and notwithstanding the fact that it was not in accordance with the formal requirements of the Rules, the Panel is of the opinion that it should be taken into account in the present case.

Deciding otherwise would amount to treating the Respondent as being in default and rule a decision by default, and that would not be a fair trial nor would it be fair to the Respondent which eventually expressed itself.

The said response was written in French, but one of the Complainants, Toyota France, is a French company and the attorney of the Complainants is also a French individual. Both of them could therefore read and understand the Respondentís communications. Accordingly, the Panel is satisfied that the "principe du contradictoire" was respected.

The content of the Respondentís letter dated January 31, 2002, directed to the Complainantís attorney, is as follows (as translated by the Panel).

"Dear Mr. Hirsch,

Further to my phone calls and in response to the registered letters, I do confirm my statements.

I have indeed booked a number of domain names formed with the mark of a car manufacturer associated with the word "occasions".

My plans were to have a central web site (net-occasions.com) publishing on-line offers for sale of second-hand cars from individuals or professionals (the web site of a car manufacturer cannot offer such a service as it is related to a dealers network and thus cannot communicate on individualsí cars).

In order to facilitate the search, I wanted to register these domain names in the search engines after checking that I was acting lawfully :

I got in touch another car dealer having the same type of domain name who confirmed that he never had any objection from the car manufacturer at issue.

I visited various web sites (including WIPOís) and observed that no similar case had been dealt with.

I have therefore booked these domain names and awaited a jurisprudence which would confirm my use of these domain names.

Well before your first fax letter, the report of a trial led me not to renew the domain name registrations, and this is the proof of any will to use them for a profitable purpose.

The domain name <toyota-occasions.com> being among the last ones I had booked, it comes to termination after the others have already returned to the public domain (see attachments).

In the light of these elements, which I have always explained since our first contact, please note that I have never raised any objection against the release of the domain name <toyota-occasions.com> and that, as a non lawyer, I thought that it should take two persons in a dispute to start any kind of proceedings (which would gain some time for the Tribunals).

Note also that I have never been contacted by Toyota France, towards whom I would not have raised objection either.

Looking forward to hearing from you,

I remain, Mr. Hirsch, Yours Truly."

Attached to this letter is a listing issued by Verisign showing the date of expiration of numerous domain names registered by the Respondent.

 

5. Partiesí Contentions

A. Complainants

The Complainantsí contentions are that the contested domain name <toyota-occasions.com>:

- clearly violates paragraph 4(a)(i) of the Policy in that it is confusingly similar to the trademarks of the Complainants in which the Complainants have prior rights,

- equally clearly violates paragraph 4(a)(ii) of the Policy in that Respondent is neither a member or a licensee of the Complainants, nor has it received any permission or consent to use the trademark TOYOTA under any form or variation;

- also equally clearly violates paragraph 4(a)(iii) of the Policy in that Respondent, who could not pretend ignorance of the existence of the trademarks of the Complainants:

- has developed a pattern of registering domain names comprising famous car manufacturers trademarks and is warehousing said names,

- is warehousing the contested domain name, preventing the Complainants, legitimate trademark owners, from using their mark in a corresponding domain name,

- did not reply to the Complainantís lawyerís Cease and Desist letter,

- is, in one of his professional activities as Head of Marketing of a competitor of the Complainants, closely involved with trading in cars.

B. Respondent

As explained above, the Respondent has not formally responded to the Complaint and thus did not put detailed arguments to the Panel. The Respondent sent to the Center a copy of a letter, dated January 31, 2002, addressed to the Complainantís attorney.

The Panel therefore finds it appropriate to consider the Respondentís letter dated January 31, 2002, as its contentions.

The Respondent expressly acknowledges that it registered a number of domain names formed with a car manufacturerís trademark followed by the French word "occasions", with the intent to run a portal web site where second-hand cars would be offered for sale.

It further explains that, in order to check whether its project was lawful, it checked with other car dealers who had engaged in the same kind of behaviour, consulted the WIPO web site and finally, decided to register the domain names then await for a possible jurisprudence in his favour.

The Respondent seems to indicate that after having knowledge of a particular (unspecified) jurisprudence, it decided to allow his various domain names to lapse and did not pay the required renewal fee, but that, when contacted by the Complainantsí attorney, the domain name <toyota-occasions.com> had not yet lapsed. It states that it never objected to the release of the disputed domain name to the Complainant.

 

6. Discussion and Findings

According to paragraph 4(a) of the Policy, the Complainants must prove that :

(i) The domain name is identical or confusingly similar to a trade mark in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

Identical or Confusing Similarity

TMC is the owner of numerous trademark registrations for "Toyota" worldwide. It therefore has a property right over the said mark.

Toyota France owns a number of trademark registrations formed with the name "Toyota". It must also be noticed that "Toyota" is contained in its corporate name. Besides, Toyota France, according the Complaint, is responsible for the enforcement of the trademarks Toyota in France. Thus, Toyota France has rights in the mark Toyota.

The disputed domain name is <toyota-occasions.com>. It is not identical to the trademarks "Toyota", and the trademarks formed with "Toyota", owned by the Complainants.

However, the Panel is of the opinion that the domain name is confusingly similar to the Complainantsí trademarks, because within the disputed domain name, there is no doubt that the predominant element is "Toyota" which is distinctive and eligible for protection per se and clearly isolable within the combination <toyota-occasions.com>.

It has to be borne in mind that the French name "occasions" means "used" or "second-hand".

Hence, "occasions" is a generic term, which in addition to the name "Toyota" does not create new wording with a meaning of its own, within which "Toyota" would no longer be perceived as the trademark of the vehicles of the Complainant.

Indeed, one may reasonably suspect that the public, when reading or hearing the domain name <toyota-occasions.com> will be lead to believe that the said domain name is owned by, or related to, the Complainants and points towards a web site where used or second hand Toyota cars are shown and offered for sale.

In this respect, the disputed domain name would be associated in the publicís mind with the Complainantsí trademarks so that a risk of confusion is likely.

No Rights or Legitimate Interests

The Complainants have not authorized the Respondent to use and register their trademarks or to seek the registration of any domain name incorporating the said marks.

The Respondent has not demonstrated that it had any prior rights or legitimate interest in the domain name.

The Panel is even more convinced that the Respondent had no legitimate interest in the domain <toyota-occasions.com> because, as evidenced by the Complainants, Mr Destruy, acting as a representative for the Respondent, is also a BMW car dealer. In other words, Mr. Destruy is a direct competitor of the Complainants. One can hardly believe that the Complainants would have permitted one of their competitors to use and register a domain name which is confusingly similar to their trademark.

The Respondent explains in its letter dated January 31, 2002, that it intended to open a portal web site where used cars, of different trademarks, would have been offered.

If the Respondent's representative, Mr. Destruy - notwithstanding the fact that he also happens to run a business which competes with the Complainants - may have a legitimate right to operate a commercial web site dedicated to used cars including Toyota second-hand cars, he clearly did not have any right to register, without the consent of the legitimate owners of the trademark "Toyota" (The Complainants) a domain name formed with this trademark.

The Panel is satisfied that the Respondent has no rights or legitimate interests in the disputed domain name.

Registration and Use in Bad Faith

Even though the Respondent, in its letter dated January 31, 2002, attempts to put forward his good faith, the facts of this case tend to show that, on the contrary, the Respondent acted in bad faith.

As explained above, the managing director of the Respondent is also a senior employee of a BMW car dealer. As a professional car dealer, he could not have been in ignorance that trademark rights were vested in the name "Toyota", and that any use of the same without the consent of the trademark owner is prohibited.

The fact that the Respondent also registered numerous domain names formed with famous car trademarks (Audi, Fiat, Nissan, Mercedes, Volvo, Ford, Opel, Peugeot, PorscheÖ) associated with the name "occasion(s)" suggests bad faith, in accordance with the provisions of Paragraph 4(b)(ii) of the Policy as such behaviour aimed at acquiring and warehousing domain names, suggests a pattern of conduct preventing trademark owners from using their own marks in a domain name (see Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd., WIPO Case No. D2000-0802; World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306; ISL Marketing AG, and The Federation Internationale de Football Association v. J.Y. Chung, Worldcup2002.com, W Co., and Worldcup 2002, WIPO Case No. D2000-0034).

The Respondent explains (his letter of January 31, 2002) that he intended to open a commercial business for the trade of used cars under the domain name <net-occasions.com>. However, no evidence was put forward for this. Even so, then there is no justification for the registrations neither of the domain name <toyota-occasions.com> nor any of the other domain names formed with famous car trademarks it actually registered, if the Respondent already owned a domain name <net-occasions.com>.

The Panel is of the opinion that the Respondent has registered the disputed domain name, as well as many others, with the intent to benefit from the reputation of the famous trademarks contained in its domain name, among which is "Toyota".

In accordance with the provisions of Paragraph 4(b)(iv), the Panel also considers that the Respondent registered the domain name <toyota-occasions.com> with a view to distracting possible customers of the Complainants and attract them towards his own site in the mistaken belief that they are visiting an official web site of the Complainants.

The Policy requires that the Complainants show that the domain name is used in bad faith.

Use of a domain name does not necessarily mean that the domain name points towards an active web site (see Telstra, WIPO Case No. D2000-0003).

According to Paragraph 15(a) of the Rules, the Panel is free to refer to any rules and principles of law that it deems applicable.

Under French Law, to which the Panel refers since the Respondent and one of the Complainants are French, it is a longstanding principle that the sole act of filing an application to register a trademark may be regarded as a use of a mark for the purpose of determining whether infringement has occurred.

Similarly, in the present case, the Panel finds that the registration of the disputed domain name amounts to using the same, since this registration is a positive action which, in addition, has negative results as far the Complainants are concerned since they are prevented from registering the same domain name comprising their trademark.

When registering the disputed domain name, the Respondent interfered with the Complainantsí legitimate right to use its trademark as a domain name.

Moreover, the following may also suggest bad faith use by the Respondent: the Respondent acknowledges (in his letter of January 31, 2002) that it had some doubt at some point that its domain name registrations were lawful and it explains that it decided to drop the said registrations by not renewing them. A Verisign listing attached to his letter shows that some other domain names registered by the Respondent, such as <citroen-occasions.com> or <peugeot-occasions.com>, were allowed to lapse as early as April 2001.

Yet, upon receipt of the cease-and-desist letter sent on December 5, 2001 by the Complainantsí attorney, the Respondent did not take any action. It did not respond to the letter nor did it engage the procedure for transferring the disputed domain name to the Complainants.

Even after being notified of the Complaint on January 18, 2002, the Respondent did not take any action. It waited until January 31, 2002, to send the above-described letter to the Complainantsí attorney, with a copy to the Center.

Thus, whereas the Respondent appears to admit that it had no legitimate interest in the disputed domain name (since he declares having abandoned a number of similar domain names as early as April 2001), and whereas he had been put on notice of the Complainants' rights and further had been notified by the WIPO that a formal complaint had been filed, he did not take any action in order to release or transfer the domain name to its legitimate owners.

This sequestration of the domain name during that period in spite of the Complainantsí actions amounts to using the domain name <toyota-occasions.com> in bad faith.

 

7. Decision

The Panel is satisfied that the requirements of Paragraphs 4(a) of the Policy and 15 of the Rules are fulfilled, namely that :

(i) The domain name is confusingly similar to the trademarks in which the Complainants have rights; and

(ii) The Respondent has no rights or legitimate interests in the domain name; and

(iii) The Respondent registered and is using the domain name in bad faith.

The Panel directs that the domain name <toyota-occasions.com> be transferred, in accordance with the Complainantsí request, to the first Complainant, Toyota France.

 


 

William Lobelson
Sole Panelist

Dated: March 22, 2002