WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Sales U.S.A. Inc. v. Tony Mwangi
Case No. D2003-0623
1. The Parties
The Complainant is Toyota Motor Sales U.S.A. Inc., a corporation located and doing business in California, United States of America, represented by Shaw Pittman LLP of McLean, Virginia, United States of America.
Respondent is Tony Mwangi, an individual with a listed address in Randolph, Massachusetts 02368, United States of America.
2. The Domain Names and Registrar
The disputed domain names are <lexusmail.com> and <mylexus.com> (hereinafter the "Domain Names") registered with Network Solutions, Inc., (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") by email on August 7, 2003. Hard copies were received by the Center on August 12, 2003. On August 8, 2003, the Center requested that the Registrar verify the ownership of the Domain Names. On August 13, 2003, the Registrar confirmed that Respondent is the registrant of the Domain Names as well as the administrative, billing, and technical contact.
On August 15, 2003, the Center verified that the Complaint satisfied the formal requirements of 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"). Accordingly, the Center commenced the proceeding on August 15, 2003. Pursuant to the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint by sending notice to the email address and street address listed in the Registrarís database. The Center advised Respondent that the due date for responding to the Complaint was September 4, 2003. The Respondent did not submit any response. The Center notified the Respondent that it had failed to respond and set forth the consequences of the default in a notice sent on September 8, 2003. Because all notices sent by the Center to Respondent were sent to the address provided by Respondent and verified by the Registrar, and the Center took all actions necessary and required by the Policy, the Rules and the Supplemental Rules to notify Respondent of this proceeding.
The Center appointed Barbara Solomon as the sole panelist in this matter on October 7, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
Complainant is a wholly-owned subsidiary of Toyota Motor Corporation ("TMC"), a Japanese corporation that is the owner of the trademark LEXUS. Complainant is party to a Lexus importer agreement with TMC pursuant to which TMC granted to Complainant a non-exclusive right to use the trademarks and service marks of TMC on or relating to Lexus vehicles, Lexus parts and Lexus accessories for distribution, sale and service in the continental United States, Alaska, Puerto Rico and the U.S. Virgin Islands.
Complainant has been using the LEXUS mark in connection with automobiles, structural parts and accessories therefor and in connection with automotive repair, maintenance, financing and leasing services in the United States since 1989. Since 1989, sales of LEXUS automobiles, structural parts and accessories in the U.S. have exceeded fifty billion dollars (U.S.).
On August 23, 2000, Respondent registered the domain name <lexusmail.com> and on December 13, 2000, Respondent registered the domain name <mylexus.com>. As of November 1, 2001, Respondent was using the <lexusmail.com> domain name to solicit visitors to subscribe to an e-mail service provided at the website. The home page for <lexusmail.com> refers to it as "A Lexus Enthusiasts Community." As of February 8, 2002, the domain name <mylexus.com> brought Internet users to a page advising that the site was being rebuilt "to give you a better browsing experience" and included links to discussion forums and e-mail, including a link to <lexusmail.com>.
On February 25, 2002, Complainant sent Respondent a cease and desist letter. Respondent failed to respond. After the February 25, 2002, cease and desist letter was sent, Respondent renewed both of the Domain Names. Thereafter, Complainant sent several more demand letters to Respondent. In all cases, the demand letters were returned as undeliverable and otherwise went unanswered.
5. Partiesí Contentions
Complainant contends that the mark LEXUS, which it is licensed to use, is a recognized and famous trademark and that the Domain Names were selected in order to commercially benefit from an association with Complainantís reputation. Complainant further contends that the Domain Names were selected for the sole purpose of capitalizing on Complainantís reputation in order to lure visitors to Respondentís websites for purposes of deriving revenue. Complainant claims that the Domain Names are confusingly similar to the LEXUS trademark consisting of a combination of LEXUS with the generic terms "MY" and "MAIL." Complainant further asserts that the Respondent has not made a legitimate non-commercial or fair use of the Domain Names. Rather, the only use made of the Domain Names, according to Complainant, is to attract people to view advertising on a website for Respondentís commercial benefit.
As to Respondentís bad faith registration and use of the Domain Names, Complainant contends, among other things, that the use of the Domain Names creates a likelihood of confusion in that Complainantís customers are likely to believe that the Domain Names, and presumably any website to which they point, are sponsored by or associated with Complainant, that Respondent has provided false contact information, that Respondent has failed to respond to demand letters, and that Respondent renewed the Domain Names and continued to use them notwithstanding Complainantís objections and with full knowledge of Complainantís rights in the LEXUS mark.
The Respondent did not submit any response and therefore does not contest Complainantís assertion of rights in the LEXUS mark, that the Domain Names are identical or confusingly similar to LEXUS, that the Respondent has no rights or legitimate interests in the Domain Names, or that Respondent registered the Domain Names in bad faith.
6. Discussion and Findings
Notwithstanding the fact that the Respondent defaulted in these proceedings, Complainant may only prevail if, on the basis of the statements and documents submitted in accordance with the Policy, Complainant establishes each of the following: (i) that it has enforceable or protectable rights in the mark LEXUS; (ii) that the Domain Names are identical or confusingly similar to the LEXUS trademark in which the Complainant has rights; (iii) that the Respondent has no legitimate rights or interest in the Domain Names; and (iv) that the Domain Names have been registered and are being used in bad faith.
A. Complainantís Rights
The first issue is whether Complainant has a legal basis or standing to assert rights in the LEXUS mark in this proceeding. First, Complainant does not own the LEXUS trademark. Second, Complainant is not an exclusive licensee. Third, according to the excerpts of the importer agreement provided by Complainant, Complainant does not have the right to take action against infringements or potential infringements. Rather, the agreement states that the Complainant will "assist" TMC in taking steps or will take defensive measures against a complaint of infringement. Thus, contrary to Complainantís assertion, nothing in the agreement obligates or even gives Complainant any right to file a UDRP.
In determining whether Complainant has a basis for asserting a protectable right, it is appropriate to look at U.S. law since both Complainant and Respondent are located in the United States. Under U.S. law one need not be an owner or a registrant of a mark to assert a claim for infringement and even a non-exclusive U.S. distributor of a product may have standing to sue. See Quabaug Rubber Co. v. Fabiano Shoe Co., 576 F.2d 154 (1st Cir. 1977). Accordingly, the Panel is satisfied that Complainant has sufficient standing to assert a claim. This conclusion is supported by the decisions of prior Panelists who have found that Complainant has protectable rights in the mark LEXUS. See Toyota Motor Sales U.S.A., Inc. v. Rafi Hamid d/b/a ABC Automobile Buyer, WIPO Case No. D2001-0032 (March 28, 2001); Toyota Motor Sales U.S.A., Inc. v. Indian Spring Motor, NAF Case No. FA0305000157289 (June 23, 2003).
B. Identical or Confusingly Similar
Complainant contends that the Domain Names are confusingly similar to the LEXUS trademark since they consist of a combination of LEXUS with the generic terms "my" or "mail." The addition of the word "my" to the LEXUS mark is simply not enough to prevent the domain name from being confusingly similar to the LEXUS trademark. See NBA Properties, Inc. v. Holladio, Inc., WIPO Case No. D2000-1626 (February 7, 2001) (finding <mynba.com> confusingly similar to NBA); Sony Corporation v. Sin, Eonmok, WIPO Case No. D2000-1007 (November 16, 2000) (finding <mysony.com> to be confusingly similar to SONY); Pfizer Inc. v. MyViagra/Wilbert Smith, WIPO Case No. D2002-0463 (July 15, 2002) (finding <myviagra.com> to be confusingly similar to VIAGRA).
Similarly, the domain name <lexusmail.com> is not sufficiently distinct from the mark LEXUS to create a wholly distinct domain name. The addition of the generic term "mail" does not affect the prominence of the LEXUS mark. In addition, Internet users could be confused by believing that this domain name is somehow associated with Complainant and is a place to send mail relating to LEXUS cars. See Google, Inc. v. Dotname Communications, NAF Case No. FA0206000114712 (August 18, 2002) (<googlemail.com> found confusingly similar to GOOGLE); Volkswagen Aktiengesellschaft v. Iggi Networks, Inc., NAF Case No. FA0107000098077 (August 17, 2001) (<vwmail.com> found confusingly similar to VW).
Accordingly, the Panel finds that Complainant has met its burden under the Policy, paragraph 4(a)(i), by showing that the Domain Names are confusingly similar to the LEXUS mark in which Complainant has rights.
C. Rights or Legitimate Interests
Because Respondent has defaulted it has offered no proof of its rights or legitimate interest in the domain name. As such, the Panel may accept as true all of the allegations of the complaint. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000). Complainant asserts that neither Complainant nor TMC licensed or authorized Respondent to use the LEXUS mark. Respondent had several opportunities to show a plausible non-infringing explanation for selecting the disputed Domain Names. See Web Van Group, Inc. v. Stan Atwood, WIPO Case No. D2000-1512 (February 20, 2001). In view of the fact that the Respondent was given ample opportunity to present evidence to show its legitimate rights, its utter failure to do so makes it impossible for the Panel to identify any reason to allow the Respondent to claim rights or legitimate interest in respect of the Domain Names. Accordingly, Complainant has met its burden under paragraph 4(a)(ii) of the Policy.
D. Registered and Used in Bad Faith
The Panel must also consider whether the Domain Names were registered and used in bad faith. In considering this issue the Panel notes that LEXUS is a well-known trademark and was well-known prior to the registration of the Domain Names. At the time Respondent registered the Domain Names he was presumed to be on notice that LEXUS was a trademark of another entity. Indeed, this is reflected in the web pages attached to the complaint in which Respondent has included a disclaimer. Such a disclaimer is an admission that Respondent recognized that Internet users would assume that web pages attached to the Domain Names would be associated with Complainant or its parent company. The evidence suggests that Respondent adopted the Domain Names in order to intentionally "attract, for commercial gain, Internet users to [his] website . . ., by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of [Respondentís] website . . . " in violation of paragraph 4(b)(iv) of the Policy. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (February 29, 2000).
Once again, in the absence of any evidence provided by Respondent, it is difficult for the Panel to conceive of any plausible explanation for registering the Domain Names. Respondent has not shown that it was running a fan club or a chat room devoted to Lexus automobiles. While there could be legitimate and good faith reasons for adopting and using the domain names, Respondent has failed to offer any. Given that Respondent clearly knew that LEXUS was the trademark of Complainantís parent company, as evidenced by his disclaimer, that the Domain Names were clearly meant to refer to Complainant as evidenced by other indicia on the website and that the Domain Names appear to have been used to attract Internet users to Respondentís websites on which advertising for third parties was placed, and given the absence of any evidence to contradict the assertions of the Complaint, the Panel finds that Complainant has satisfied paragraph 4(a)(iii) of the Policy, and has shown that Respondent registered and is using the Domain Names in bad faith.
The Panel, having found that all of the requirements of paragraph 4(a) of the Policy have been proven by the Complainant, hereby orders that the Domain Names <mylexus.com> and <lexusmail.com> be transferred to the Complainant.
Barbara A. Solomon
Dated: October 16, 2003