WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Sales, U.S.A., Inc. v JT4WD'S
Case No. D2002-0392
1. The Parties
The Complainant is Toyota Motor Sales, U.S.A., Inc. ("TMS"), a corporation organized and existing under the laws of the State of California, having its principle place of business in Torrance, Los Angeles County, California, United States of America.
The Respondent is John Turpin, an individual with an address in King, North Carolina, United States of America.
2. The Domain Name and Registrar
The domain name at issue is: <landcruiser.net>, registered with Network Solutions, Inc., Herndon, Virginia, United States of America ("NSI").
3. Procedural History
A Complaint was submitted to the WIPO Arbitration and Mediation Center ("the Center") on April 26, 2002, in electronic form. The Center received the hard copy of the Complaint on April 29, 2002. The Center acknowledged receipt of the Complaint on April 30, 2002.
On April 30, 2002, a Request for Registrar Verification was transmitted to NSI. NSI responded on May 3, 2002, confirming the registration details and its receipt of a copy of the Complaint from Complainant by certified mail.
A Formal Requirements Compliance Checklist was initiated by the Center on April 26, 2002, and completed May 6, 2002. The Center determined that that the Complainant was in formal compliance with the requirements of the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, in effect as of December 1, 1999 ("the Supplemental Rules"). The Panelist has independently reviewed the Requirements and finds that the Complainant is in formal compliance with the requirements of the Policy, the Rules and the Supplemental Rules.
The Complainant paid the required fees for a single-member Panel on time and in the required amount.
No formal deficiencies having been noted, on May 6, 2002, a Notification of Complaint and Commencement of Administrative Proceeding ("the Commencement Notification") was transmitted to the Respondents (with copies to the Complainant, NSI and ICANN), setting a deadline of May 27, 2002, by which the Respondents could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondents by email to the email addresses indicated in the Complaint and specified in Whois confirmations received from NSI and by post/courier to the indicated postal addresses. Having reviewed the communications records in the case file, the Panelist finds that the Center has discharged its responsibility under Paragraph 2(a), Rules, "to employ reasonably available means calculated to achieve actual notice to Respondent."
On June 4, 2002, having received no formal Response from the designated Respondent, the Center transmitted to the parties a Notification of Respondent Default.
On June 11, 2002, the Center invited Richard Allan Horning to serve as the Sole Panelist in Case No. D2002-0316 and transmitted to him a Statement of Acceptance and Request for Declaration of Impartiality and Independence. Richard Allan Horning’s Statement of Acceptance and Declaration of Impartiality and Independence was received on June 11, 2002. On June 17, 2002, the Center transmitted to the parties a Notification of Appointment of Administrative Panel and projected decision date, in which Richard Allan Horning was formally appointed as the Sole Panelist.
The Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Policy, Rules and the Supplemental Rules.
4. Factual Background
Complainant is a wholly owned subsidiary of Toyota Motor Corporation, a Japanese corporation, ("Toyota") and is the exclusive importer and distributor of Toyota Land Cruiser automobiles throughout the United States except the State of Hawaii.
TMS and its corporate parent have continuously used the name and mark LAND CRUISER in the United States since at least as early as 1958. TMS claims to have spent substantial sums in advertising and promoting its products under the name and mark LAND CRUISER for many years. Since 1993 alone, sales of LAND CRUISER vehicles, parts and accessories therefor in the United States have exceeded One Billion Dollars ($1,000,000,000).
Toyota Motor Corporation, TMS' corporate parent, is the owner of the following United States Trademark Registration and Application to Register the mark LAND CRUISER:
(1) Registration No. 721,813, for the mark LAND CRUISER, in Class 12 for modified self-propelled buses, issued September 26, 1961 ("Registered Mark"). This registered mark was initially filed by Alco Standard, was assigned and transferred five times before it was ultimately transferred and assigned to TMS' parent, Toyota Motor Corporation, on June 1, 2000.
(2) Application Serial No. 76/078,863, for the mark LAND CRUISER, in Class 12
for automobiles ("Application"). This Application was approved for publication on March 29, 2002.
Respondent John Turpin registered the domain name <landcruiser.net> on March 16, 1998 (Complaint, Annex A).
At the time of the Commencement Notification, and at submission of the dispute to the Panelist, the domain name <landcruiser.net> resolved to the website entitled "JT Outfitters", self-described as "The ONLY ALL Toyota 4wd Shop East of the Mississippi River!". The website gives an address in Walnut Cove, North Carolina. Offered on the website is information about Toyota 4 wheel drive vehicles, restorations, parts, accessories and various service offerings of JT Outfitters with respect to removal, rebuilding, replacing engines, leaf springs, coil springs and the like. JT Outfitters Inc. is described as a North Carolina corporation. In the copyright section of the website the following appears "No affiliation, connection, sponsorship or approval by Lexus, Mercedes Benz, Toyota or any other motor vehicle manufacturing organization is intended." The same website is resolved when the user enters a request to be linked to the website at the domain <JToutfitters.com>.
5. Parties’ Contentions
Complainant contends that Respondent has registered domain names which are nearly identical to and confusingly similar to the service marks and trademarks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panelist as to the principles the Panelist 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 States’ courts have experience with similar disputes, to the extent that it would assist the Panelist in determining whether the Complainant have met their burden as established by Paragraph 4(a) of the Policy, the Panelist 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:
1) 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,
2) that the Respondent has no legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and used in bad faith.
Complainant has demonstrated that since it first commenced use of the mark LAND CRUISER in the United States in 1958, Complainant has spent substantial sums in advertising and promoting its products under the name and mark LAND CRUISER. Complaint, ¶ V.3. Since 1993 alone, sales of LAND CRUISER vehicles, parts and accessories therefor in the United States have exceeded One Billion Dollars ($1,000,000,000). Complaint, ¶ V.3. TMS had common law trademark rights in the mark LAND CRUISER from 1958 on.
Prior to the assignment of the Registered Mark, TMS and Custom Coach Corporation ("Custom Coach"), the 1961 registrant of LAND CRUISER for modified self-propelled buses in International Class 12, both used the "Land Cruiser" mark – TMS for sport utility vehicles and Custom Coach for buses. In 1962, Complainant entered into an agreement (the "Concurrent Use Agreement") with Custom Coach governing their respective rights in the mark LAND CRUISER. Pursuant to the Concurrent Use Agreement, Complainant retained the right to use the mark LAND CRUISER for four wheel drive utility vehicles and Custom Coach retained the right to use the mark for modified self-propelled buses. The Concurrent Use Agreement remained in effect until June 1, 2000, when Toyota acquired all of Custom Coach's [albeit a different corporation which had adopted the name Custom Coach after obtaining ownership of the Registered Mark] remaining rights in the mark LAND CRUISER including the existing Registered Mark.
The Panelist notes that the domain name in question was first registered by Respondent on March 16, 1998. At the time of that registration, the Application had not yet been filed by Complainant's parent company and the Registered Mark was owned by Nunn Acquisition Corporation which later changed its name to Custom Coach Corporation. The Registration was not transferred and assigned to Complainant's parent company for another two years, on June 1, 2000. These details are of no significance given TMS' long-standing common law trademark rights.
Common law trademark rights, such as those possessed by Complainant since 1958, are sufficient to establish Complainant's rights in the trademark LAND CRUISER. Jeanette Winterson v. Mark Hogarth, WIPO Case No. D2000-0235, Irish Institute of Purchasing and Materials Management v. Association for Purchasing and Supply, Owen O'Neill, WIPO Case No. D2001-0472, Realmark Cape Harbour LLC v. Lawrence S. Lewis, WIPO Case No. D2000-1435, Georgia Gulf Corporation v. The Ross Group, WIPO Case No. D2000-0218, Time Warner inc. and EMI Group plc v. CPIC Net, WIPO Case No. D2000-0433, Hunton & Williams v. American Distribution Systems, Inc., et al., WIPO Case No. D2000-0501, United Artists Theatre Circuit, Inc. v. Domains for Sale Inc., WIPO Case no. D2002-0005. Compare, University of Konstanz v. uni-konstanz.com, WIPO Case No. D2001-0744.
The Panelist finds that domain name at issue is either identical or confusingly similar to the registered trademarks of Complainant. Hewlett-Packard Company v. Cupcake City, NAF Case No. NAF0002000093562; America Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., NAF Case FA0002000093679; Marriott International, Inc. v. John Marriot, NAF Case No. FA0002000094737; Identigene, Inc. v. Genetest Laboratories, WIPO Case No. D2000-1100; Seiko Epson Corporation v. Distribution Purchasing & Logistics Corp., NAF Case No. FA0003000094219; AT&T Corp. v. CME Inc., WIPO Case No. D2001-1060; Microsoft Corporation v. Global Net 2000, Inc., WIPO Case No. D2000-0554; America Online, Inc. v. East Coast Exotics, WIPO Case No. D2001-0661; EFG Bank European Financial Group SA v. Jacob Foundation, WIPO Case No. D2000-0036; The Chancellor, Masters and Scholars of the University of Oxford v. DR Seagle t/a Mr. Oxford University, WIPO Case No. D2001-0746; The Chancellor, Masters and Scholars of the University of Oxford v. CQ, WIPO Case No. D2001-0920.
Courts have recognized that consumers expect to find a company on the Internet at a domain name address comprised of the company's name or mark. In Panavision Int'l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) the Ninth Circuit stated that "A customer who is unsure about a company's domain name will often guess that the domain name is also the company's name….[A] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base." That expectation would be frustrated were Respondents permitted to take advantage of their cybersquatting.
Complainant has alleged and Respondents have failed to deny that they have no legitimate interest in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Ronson Plc v.
Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011. Respondents are not commonly known by the domain name at issue, and have not acquired trademark or service mark rights in the domain name. The Panelist finds that Respondents have no rights or legitimate interest in the domain name.
The question thus arises whether the domain name at issue has been registered and is being used in bad faith. Paragraph 4.b of the Policy sets forth "in particular but without limitation" circumstances which "shall be evidence of registration and use of a domain name in bad faith." Those circumstances are:
(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 or service on your website or location.
In this case, Respondent has not been granted a license to use the mark LAND CRUISER. Despite this lack of authorization, Respondent incorporated the mark LAND CRUISER in its entirety in the domain name in issue. Complainant had established common law rights in that mark as of the date Respondent registered the domain name.
Respondent is using the domain name to generate Internet traffic to its JT Outfitter's web site for commercial gain, as a supplier of parts and services to Toyota Land Cruiser owners. Respondent is clearly trading on Complainant's reputation and good will in the mark LAND CRUISER. This coupled with Respondent's knowledge of Complainant's common law mark, demonstrate bad faith registration and use.
For all of the foregoing reasons, the Panelist decides that the domain name registered by Respondents is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that Respondents have no rights or legitimate interests in respect of the domain name, and that the Respondents' domain name has been registered and is being used in bad faith.
Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panelist requires that the registration of the following domain name <landcruiser.net> be transferred to the Complainant.
Richard Allan Horning
Dated: July 10, 2002