WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Credit Corporation v. Digi Real Estate Foundation
Case No. D2006-1619
1. The Parties
The Complainant is Toyota Motor Credit Corporation, of Torrance, California, United States of America, represented by HOWREY LLP, United States of America.
The Respondent is Digi Real Estate Foundation, of Panama City, Panama.
2. The Domain Name and Registrar
The disputed domain name <lexusfinancail.com> is registered with Yellow Start, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 20, 2006. On December 22, 2006, the Center transmitted by email to Yellow Start, Inc. a request for registrar verification in connection with the domain name at issue. On December 25, 2007, Yellow Start, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. 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”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 5, 2007. In accordance with the Rules, paragraph 5(a), the due date for Response was January 25, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 26, 2007.
The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on January 31, 2007. 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
The Complainant is a wholly owned subsidiary of Toyota Motor Corporation, a Japanese company that owns several trademarks in the name LEXUS and LEXUS FINANCIAL SERVICES and the Complainant is licensed to use them. Details of the marks are as follows:
(a) Registered Trademark No. 1,574,718, registered on January 2, 1990 with the United States Patents and Trademarks Office for LEXUS;
(b) Registered Trademark No. 1,675,339, registered on February 11, 1992, with the United States Patents and Trademarks Office FOR LEXUS;
(c) Registered Trademark No. 1,739,201, registered on December 8, 1992, with the United States Patents and Trademarks Office for LEXUS;
(d) Registered Trademark No. 2,852,290, registered on June 15, 2004, with the United States Patents and Trademarks Office for LEXUS;
(e) Registered Trademark No. 2,884,937, registered on September 14, 2004, with the United States Patents and Trademarks Office for LEXUS FINANCIAL SERVICES; and
(f) Registered Trademark No. 2,851,110, registered on June 8, 2004 with the United States Patents and Trademarks Office for LEXUS FINANCIAL SERVICES.
The Complainant has been given the right by the Toyota Motor Corporation to use the trademarks.
The Complainant supplies financing and related services for authorized dealers in motor vehicles manufactured by the Toyota Motor Corporation which include the Lexus.
The Complainant and related companies have registered the domain names <lexus.com>, <lexusfinancial.com> and <lexusfinancialservices.com>, which they use in their business.
The Respondent registered the disputed domain name on October 31, 2006.
5. Parties’ Contentions
The Complainant alleges that the domain name <lexusfinancail.com> should no longer be registered with the Respondent but that it should be transferred to the Complainant.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain name is confusingly similar to the Complainant’s registered trademarks, both the LEXUS and the LEXUS FINANCIAL SERVICES marks, that the Respondent has no rights or legitimate interests in the domain name and that the domain name has been registered and subsequently used in bad faith. The Complainant maintains that it can prove all three of these requirements and that the appropriate remedy is to transfer the domain name to the Complainant.
In support of its case on the first of these three elements, the Complainant relies on the registered LEXUS and LEXUS FINANCIAL SERVICES trademarks to which reference has already been made and says that the domain name <lexusfinancail.com> is confusingly similar to both marks because the only differences are that in the domain name, the letters ‘i’ and ‘a’ have been transposed and the word “services” has been omitted. The confusion comes, it contends, from the fact that Internet users seeing the domain name will believe that it is by some means associated with the Complainant, which it is not.
The Complainant then contends, to establish the second element, that the Respondent has no rights or legitimate interests in the domain name because the facts show an obvious intention by the Respondent to trade on the Complainant’s marks and mislead consumers into believing that they have arrived at the Complainant’s website, by linking the Respondent’s site to third party sites that provide amongst other things, financial and related services for the motor vehicle industry in direct competition with the Complainant. Nor, it is argued, can the Respondent bring itself within any of the provisions of paragraph 4(c) of the Policy.
Finally, the Complainant contends that the domain name was registered and is being used in bad faith. It contends that this is so because the Respondent’s deceptive conduct comes squarely within paragraph 4(b)(iv) of the Policy and because the Respondent is using a domain name incorporating the Complainant’s famous marks and linking its website to the Complainant’s competitors. Moreover, the Respondent has on several occasions been held to be in breach of the UDRP because of similar conduct to that demonstrated in this proceeding by registering other domain names. Accordingly, the Complainant contends, it must be inferred that the Respondent registered and has used the domain name in bad faith with the intention to profit from diverting customers looking for the Complainant’s website to websites of the Complainant’s competitors.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
Paragraph 15 of the Rules provides that the Panel is to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In that regard, the Panel also notes that the fact that the Respondent has not made a submission does not avoid the necessity of examining the issues and of doing so in the light of the evidence. The onus remains on the Complainant to make out its case and past WIPO UDRP panels have said many times that despite the absence of a submission from a Respondent, a Complainant must nevertheless show that all three elements of the Policy have been made out before any order can be made to transfer a domain name.
However, as the Panel will illustrate later, it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.
The Panel therefore turns to discuss the various issues that arise for decision on the facts as they are known.
For the Complainant to succeed it must prove, within the meaning of Paragraph 4(a) of the Policy, that:
A. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
B. The Respondent has no rights or legitimate interests in respect of the domain name; and
C. The domain name has been registered and is being used in bad faith.
It is to be noted that paragraph 4 of the Policy provides that the Complainant must prove that each of the three elements is present. The Panel will therefore deal with each of these requirements in turn.
A. Identical or Confusingly Similar
The Panel finds that the domain name is confusingly similar to all of the LEXUS and LEXUS FINANCIAL SERVICES trademarks, details of which appear above and which have been established by evidence annexed to the Complaint.
First, it is confusingly similar to the LEXUS trademarks because the dominant feature of the domain name that compels the attention of the potential customer and of any reasonable bystander is the word “lexus”, which instantly invokes the name Lexus, being the famous brand of motor vehicles. The belief engendered by the domain name that it is associated with that famous brand is not dispelled in the slightest by adding the word “financail”, as this would clearly be taken either to be the word “financial” and hence to be referring to the financing of Lexus vehicles or, if the difference in the spelling is noticed, it would be assumed that it was a simple spelling mistake. In either case the domain name would still be assumed to be linked with the brand Lexus and hence the trademark LEXUS.
In that regard, it has been held many times by WIPO UDRP panels that the addition to a trademark of a term which does no more than describe some aspect of the trademarked goods will not negate a finding of confusing similarity that is otherwise present on the evidence; see Dr. Ing. h.c.F. Porsche AG v. Gary Charles Brown, a k a Gary Brown, a k a Charlie Brown, a k a Gary Charlie Brown, WIPO Case No. D2001-0919, where it was held that the domain name <porscheimporter.com> was confusingly similar to the trademark PORSCHE because the activity of importing would ‘commonly be associated with a producer or dealer in automobiles’, as is financing in the present case.
Moreover, the fact that there is a small change in the spelling of “financial” so that it reads “financail” does not negate the finding of confusing similarity, for it has also been held many times that obvious typographical errors are insufficient to distinguish a domain name from a trademark; see in this regard the cases cited by the Complainant such as Caesar’s World, Inc. v. Lester Bakator, WIPO Case No. D2005-0125 and Harrah’s Las Vegas, Inc. v. Dotsan, NAF FA0204000109715.
Secondly, the domain name is confusingly similar to the trademark LEXUS FINANCIAL SERVICES, for all that the Respondent has done in forming the domain name, as well effecting the misspelling, is to omit one word from the trademark, namely “services”, leaving the dominant message that the domain name represents the financial activities of the famous LEXUS brand and trademark.
The Panel also draws the inference that the misspelling in the present case was done deliberately to ensnare Internet users who are looking for a website devoted to the financing of Lexus vehicles and who make a mistake when trying to spell the combined word “lexusfinancial”.
Finally, it has also been consistently held that confusing similarity is not negated by the presence in the domain name of suffixes such as the gTLD suffix “.com”.
As the Complainant clearly has rights in the registered trademarks as the subsidiary of the registered owner and as an associated company which has been given express permission by the registered owner to use them, the Panel finds that the domain name is confusingly similar to the trademarks and that the Complainant has accordingly established the first of the three elements that it must prove.
B. Rights or Legitimate Interests
Under paragraph 4(a)(ii), the Complainant has the burden of establishing that the Respondent has no rights or legitimate interests in respect of the domain name.
But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(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.
Thus, if the Respondent proves any of these elements or indeed anything else that shows it has a right or legitimate interest in the domain name, the Complainant will have failed to discharge its onus and the complaint will fail.
The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not file a Response or any other form of submission. The Respondent in the present case was given notice that it had until January 25, 2007 to send in its Response, that it would be in default if it did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw appropriate inferences from that default.
It is also well established that, as it is put in paragraph 2.1 of the Overview of WIPO Panel Views on Selected UDRP Questions, “…a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP”.
The Panel, after considering all of the evidence in the Complaint and the exhibits attached to it, finds that the Complainant has made out a prima facie case that the Respondent has no rights or legitimate interests in the domain name. The Respondent has not made any attempt to rebut this prima facie case, and the Panel therefore concludes that the Respondent has no such rights or legitimate interests in the domain name.
The Respondent chose, without the Complainant’s authorization, the Complainant’s famous name as the major part of its domain name and simply omitted a word from one of the Complainant’s corresponding trademarks, transposed two letters in the spelling of one word and then linked the domain name to a website containing sponsored links to businesses providing services in direct competition with the vehicle financing services provided by the Complainant and also to the websites of Volvo and BMW whose products are in direct competition with those of the Complainant and its associated companies.
It has been held many times that, as it was put in Baudville, In. v. Henry Chan, WIPO Case No. D2004-0059, “…no rights or legitimate interest derive from this type of use of another’s trademark.” Accordingly, the conduct of the Respondent calls for an explanation, which the Respondent could have given but has not. In the absence of such an explanation by the Respondent, the Panel draws the inference that “any evidence of the Respondent would not have been in [its] favour”: Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273.
The Complainant has therefore established that the Respondent has no rights or legitimate interests in respect of the domain name, and has thus made out the second of the three elements that it must establish.
C. Registered and Used in Bad Faith
The Complainant must prove on the balance of probabilities both that the domain name was registered in bad faith and that it is being used in bad faith: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive. The four specified circumstances are:
“(i) circumstances indicating that the respondent has registered or 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 the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 Respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s 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 the respondent’s website or location or of a product or service on the site or location.”
The conduct of the Respondent may well bring it within several provisions of paragraphs 4(b) of the Policy. However, as the Panel finds that the case clearly comes within paragraph 4(b)(iv) of the Policy, it is not necessary to consider those other provisions.
As has already been noted, the Respondent is using the domain name to host a website that containing sponsored links to businesses providing services in direct competition with the vehicle financing services provided by the Complainant and also to Volvo and BMW whose products are in direct competition with those of the Complainant and its associated companies. It is inferred by the Panel that this is being done for commercial gain. Applying those facts to the provisions of paragraph 4(b) (iv) of the Policy, it is clear for the following reasons that they come within it.
First, the Respondent was undoubtedly attempting to attract Internet users to its website by using the LEXUS FINANCIAL SERVICES trademark, omitting the word ‘services’, slightly altering the spelling of the word “financial” and embodying the amended name in the domain name. Looking at the website to which the domain name resolves, it is impossible for the Panel to accept that this was being done for any reason other than commercial gain in one form or another, for the website has an essentially commercial nature: see Scania CV AB (Publ) v. Unaci, Inc.WIPO Case No. D2005-0585.
Secondly, by using the slight alteration and misspelling of the Complainant’s trademarks in the domain name, the Respondent created a likelihood of confusion with both of the marks because Internet users would naturally think the domain name would lead to an official Lexus website dealing with the financing of Lexus motor vehicles.
Thirdly, the confusion that was and is likely to be created is confusion about the affiliation of the various goods and services on the Respondent’s website and the others to which it is linked and as to whether or not they are the Complainant’s official Lexus goods and services or in some way associated with it. When consumers see the same goods and services that they expect to find on a Lexus site being promoted on the Respondent’s and the other website, they will naturally assume that those services are being promoted or provided with the Lexus imprimatur, when in fact they are not. Clearly this is all a deliberate attempt to promote the notion in the minds of consumers that they have arrived at a Lexus website and hence it is a deliberate attempt to trade off the name of one of the famous products of the Complainant’s parent company which must effect the Complainant itself.
The Panel finds that these circumstances create confusion with the Complainants’ trademarks as to the sponsorship, affiliation and endorsement of the Respondent’s site and the services on it and on the sites to which it is linked and that the Respondent must be taken to have intended this confusion and to have been doing it for commercial gain in one form or another.
The facts therefore come within paragraph 4(b)(iv) of the Policy and clearly constitute bad faith in the manner in which the Respondent is using the domain name. They also constitute bad faith in the registration of the domain name, for, to paraphrase the words used in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003: “ …it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the disputed domain name. It is also not possible to conceive of a plausible situation in which the Respondent would have been unaware of this fact at the time of registration. These findings, together with the finding … that the Respondent has no rights or interests in the domain name, lead the Administrative Panel to conclude that the disputed domain name has been registered by the Respondent in bad faith”.
The Panel’s conclusion on these matters is enhanced by the fact that the Respondent is becoming a serial offender, having been involved in several WIPO UDRP cases where it has registered domain names incorporating famous trademarks in which it does not have any legitimate rights and then turning them to commercial advantage through deception in the same manner as has been so clearly demonstrated in the present case. In each of those cases, the proceeding resulted in the domain name being transferred to its rightful owner as in, for example, Medco Health Solutions, Inc. v. Digi Real Estate Foundation, WIPO Case No. D2005-0216. That must also be the result in the present case.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lexusfinancail.com> be transferred to the Complainant.
The Honourable Neil Anthony Brown QC
Dated: February 12, 2007