WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Justin Kent Luhrs v. Steve Regan

Case No. D2002-0671

 

1. The Parties

1.1 The Complainant is Justin Kent Luhrs, of Ontario, Canada. The Respondent is Steve Regan, of CA 91946, United States of America.

 

2. The Domain Name and Registrar

2.1 The domain name at issue is <toyota-of-glendale.com> ("the Domain Name").

2.2 The Registrar is Go Daddy Software Inc. ("Go Daddy"). Confirmation from Go Daddy was received by the WIPO Arbitration and Mediation Center ("the Center") by email on July 19, 2002, stating that it had not received a copy of the Complaint but confirming that the Respondent was the current Registrant of the Domain Name.

 

3. Procedural History

3.1 The Complaint dated July 18, 2002, was received by email by the Center on the same day with a paper copy being received on August 9, 2002.

3.2 On August 1, 2002, the Complainant emailed the Center stating that he was trying to arrange "surrender" of the Domain Name from the Respondent but this would be at a sum which was a third of the cost of arbitration. The Complainant stated that if the Respondent did not agree to the terms that he proposed he would re-file the Complaint and proceed with the arbitration.

3.3 On August 2, 2002, the Center responded by email to the Complainant explaining that before the 30 day suspension could be effected the filing fee must first be paid.

3.4. On August 5, 2002, the Complainant emailed the Center stating that he had decided not to pursue negotiations with the Respondent and informing the Center that he was paying the filing fee and wanted to proceed with the Complaint. The Center sent a further reminder by email on August 8, 2002, after which the fee was received by the Center.

3.5 Notice of the proceedings was received by the Respondent in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules") on August 13, 2002. The date of commencement of the administrative proceeding was August 14, 2002.

3.6 The Respondent filed a response dated August 22, 2002. This response was received electronically by the Center, with a paper copy being received on August 27, 2002, before the September 3, 2002, deadline.

3.7 A Panel was constituted on September 10, 2002, comprising a single panelist, Mr. Nick Gardner ("the Panel"). A statement of acceptance and declaration of impartiality and independence has been filed by the Panel.

3.8 The date scheduled for the Panel to render its decision is September 24, 2002.

 

4. Relief Sought

4.1 The Complainant requests that the Domain Name be transferred to it from the Respondent.

 

5. Factual Background

5.1 It appears from the "Who is" printout provided by the Complainant that the Respondent registered the Domain Name on May 2, 2002.

5.2 The Complainant runs a car dealership called "Toyota of Glendale" which sells Toyota vehicles.

5.3 The Complainant began these proceedings on July 18, 2002.

5.4 Following the start of these proceedings the Parties entered into negotiations regarding the transfer of the Domain Name. However, on August 5, 2002, the Complainant advised the Center that he had decided not to pursue negotiations further.

 

6. The Complainantís Contentions

A. The Complainant

6.1 These may be summarized as follows:

a) The Domain Name is confusingly similar to the Complainantís registered domain name, <toyotaofglendale.com>.

b) The Complainant states that he has permission from Toyota North America to use "Toyota", which is, he states, a trade mark registered in the United States. No further details have been provided about the nature of this permission.

c) The Respondent has no rights or legitimate interests in the Domain Name (not having been given permission by Toyota North America) and the Domain Name has been registered, and is being used, in bad faith by the Respondent to subvert automobile sales traffic rightfully belonging to the Complainantís dealership, Toyota of Glendale.

d) The Complainant states that he originally registered the Domain Name. No further material has been provided in support of this (e.g. a "Who is" print out), but this does not appear to be in dispute.

e) The Complainant claims that, due to an internal misunderstanding between his management company and its dealership functions, he failed to re-register the Domain Name after it lapsed.

B. The Respondentís Contentions

6.2 These may be summarized as follows:

a) The Respondent contends that the Complainant has not provided evidence of any rights he may have to use the trade mark "Toyota".

b) The Respondent points out that, in any case, the Domain Name is not identical to the registered trade mark "Toyota".

c) The Respondent asserts that he, like everybody else, had a legitimate right to register the Domain Name once it was made available to all-comers by the Registrar and that by registering and using the Domain Name the Respondent is not infringing the Complainantís rights as the mere registration and use of a domain name does not automatically infer infringement. (The Respondent here cites what appear to be two US court judgments).

d) The Respondent stresses that before he purchased the Domain Name, it was kept on hold for the benefit of the Complainant for over 2 months. The Respondent asserts that the Complainantís explanation of a misunderstanding is a late excuse for ignoring several written reminders for payment sent by post and e-mail by the Registry, NSI, which would have made the consequences of non-payment clear. The Respondent claims the Complainant had therefore abandoned the Domain Name.

e) The Respondent contends that, as a result of his failure to renew the Domain Name the Complainant abandoned any rights he may have had in the Domain Name.

f) The Respondent denies the Complainantís contention that the Respondent is using the Domain Name in bad faith thereby disrupting the business of the Complainant. The Respondent stresses that the Domain Name was unused by the Complainant for many weeks previous to its registration, meaning that the domain [i.e. presumably any web site by reference to the Domain Name] would not have been accessible for many weeks. Any disruption to the Complainantís business would have occurred before the Respondent registered the Domain Name.

g) The Respondent contends that he offered in good faith to return the Domain Name to the Complainant for a fee of $400. The Respondent claims that this amount was to reimburse him for his actual office and notary expenses for the transfer of the Domain Name. (No further details have been provided in evidence documenting these costs.)

h) The Respondent refers to himself in his Response as "Webaffiliated" (presumably a business run by him). Webaffiliated is described as an Internet and Marketing specialist, responsible for clientsí web sites receiving visitors every month.

 

7. Discussion and Findings

7.1 The Panel has reviewed the Complaint, the Response and the documents annexed thereto as well as the emails between the Complainant and the Center referred to in section 3 above. In the light of this material this Panelís findings are set out below.

a) Very little evidence has been filed by either party and the Panel has very little material to assess. However, the key facts do not appear to be in dispute and the Panel relies upon the following:

i) The Complainant trades as a Toyota dealer under the name of Toyota of Glendale and under a domain name <toyotaofglendale.com>.

ii) The Complainant also was previously the owner of the Domain Name <toyota-of-glendale.com> but this lapsed.

iii) The reasons why it lapsed are disputed but this does not seem material.

iv) The Respondent registered the Domain Name. No explanation has been given by the Respondent of any interest it has in either ĎToyotaí or ĎToyota of Glendaleí (however represented).

v) The Respondent offered to return the Domain Name to the Complainant for $400.

b) The Domain Name is confusingly similar to the trade mark used by the Complainant, namely, "Toyota of Glendale". Despite the fact that no explanation has been given as to the specific nature of the rights the Complainant asserts in the registered trade mark "Toyota" e.g. whether the mark is used under license, in the circumstances, the Panel accepts that, as a Toyota dealer doing business as "Toyota of Glendale", the Complainant has trade mark rights in this phrase.

c) It seems to the Panel that the Domain Name includes a geographic reference that is presumably significant in relation to the location of the Complainantís car dealership as well as the make of vehicle that the Complainant sells.

d) The Panelís view is that the Respondent has failed to demonstrate any rights or legitimate interests in respect of the Domain Name. The Respondent does not claim to be carrying out activities (such as himself selling Toyota cars in Glendale) which might at least explain the basis for such rights. Absent any explanation, the Panel concludes the Respondent has no such rights or interests. The argument that, since the Domain Name was available, the Respondent is as entitled as anyone else to acquire it, is incorrect Ė that will always be the case in disputes under the Policy and cannot be an answer in itself to the Complaint. In particular, the Respondent has not demonstrated any of the matters set out at paragraph 4(c) of the Policy, or any other matters which establish a legitimate right or interest.

e) Despite the Respondentís assertion that he does not acquire and sell domain names for profit, on the evidence presented to this Panel (and in view of the lack of documentary support for the $400 costs the Respondent claims he would incur) the Panel regards the Respondentís offer to transfer the Domain Name for $400 as an attempt to transfer the Domain Name for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the Domain Name.

f) The Panel infers, on the balance of probabilities, that the Respondent identified that the Domain Name had lapsed but remained of value to the Complainant, and registered himself with a view to transferring it to the Complainant for more than his out-of-pocket expenses. The figure of $400 appears to the Panel to have been judged to be less than the Complainant would have to pay to invoke the present procedure (the Response states "Webaffiliated does not understand why the Complainant chooses to invoke the WIPO arbitration process at a higher expense"). As such, the Panel takes the view that the registration was within 4(b)(i) of the Policy.

g) The Panel therefore concludes that the Complaint should succeed and that the name was registered, and is being used (in the subsequent offer for sale), in bad faith.

 

8. Decision

In the light of the above findings, the Panelís decision is as set out below.

a) The Domain Name is confusingly similar to the Complainant's trade mark (see paragraph 4(a)(i) of the Policy).

b) The Respondent has no rights or legitimate interests in the Domain Name (see paragraph 4(a)(ii) of the Policy).

c) The Domain Name was registered and is being used in bad faith (see paragraphs 4(a)(iii) and 4(b)(i) of the Policy).

d) This Panel directs that the Domain Name be transferred to the Complainant.

 


 

Nick Gardner
Sole Panelist

Dated: September 24, 2002