WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toyota Motor Credit Corporation v. Andrew Hillin

Case No. D2011-2175

1. The Parties

The Complainant is Toyota Motor Credit Corporation of Torrance, California, United States of America, represented by Dykema Gossett PLLC, United States of America.

The Respondent is Andrew Hillin of St. Louis, Missouri, United States of America.

2. The Domain Names and Registrar

The disputed domain names <mylexusextendedwarranty.com>, <myscionextendedwarranty.com> and <mytoyotaextendedwarranty.com> are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2011. On December 12, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain names. On the same date, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 December 16, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was January 5, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 6, 2011.

The Center appointed Angela Fox as the sole panelist in this matter on January 19, 2012. 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. The Decision due date was subsequently extended to February 16, 2012.

4. Factual Background

The Complainant is a wholly-owned subsidiary of Toyota Motor Corporation, manufacturers of motor vehicles including TOYOTA, LEXUS and SCION cars, trucks and sports utility vehicles. The Complainant provides retail financing, retail leasing, wholesale financing and other financial services to authorised dealers of those vehicles and their customers in the United States (excluding Hawaii) and Puerto Rico.

Toyota Motor Corporation has used the TOYOTA trademark in the United States since at least as early as 1958, and following the Complainant’s incorporation in 1982, the Complainant itself has also used the TOYOTA mark there in respect of its financial services since 1983. Both the Complainant and its parent company Toyota Motor Corporation have used the LEXUS trademark in the United States since at least as early as 1989, and the SCION trademark there since at least as early as 2003.

The Complainant and Toyota Motor Corporation have invested substantial sums in promoting TOYOTA, LEXUS and SCION-branded vehicles and related financial services in the United States. The brands have enjoyed considerable commercial success, with U.S. sales of TOYOTA-branded automobiles, trucks, parts and accessories exceeding USD 90,000,000,000 since 1958; U.S. sales of LEXUS-branded automobiles, sports utility vehicles and parts and accessories exceeding USD 56,000,000,000 since 1989; and U.S. sales of new SCION-branded automobiles totaling billions of US dollars since launch of the SCION range in 2003.

Toyota Motor Corporation is the proprietor of numerous trademark registrations in the United States for TOYOTA, LEXUS, SCION and marks including these elements, which the Complainant is authorised to use. Included in the Complaint were details of a number of these registrations, including the following United States registration numbers:

- 1,338,339 for TOYOTA registered on May 28, 1985;

- 2,762,080 for TOYOTA FINANCIAL SERVICES registered on September 9, 2003;

- 1,675,339 for LEXUS registered on February 11, 1992;

- 2,851,110 for LEXUS FINANCIAL SERVICES registered on June 8, 2004; and

- 2,795,479 for SCION registered on December 16, 2003.

The Complainant or its parent or sister companies have also registered numerous domain names incorporating the above marks, including <toyotafinancial.com>, <toyotafinancialservices.com>, <toyota.com>, <lexusfinancial.com>, <lexusfinancialservices.com>, <lexus.com>, <scionfinancial.com>, <scionfinancialservices.com> and <scion.com>.

The Complainant offers its financial services under the TOYOTA, LEXUS and SCION marks inter alia through websites at “www.toyotafinancial.com”, “www.lexusfinancial.com” and “www.scionfinancial.com”.

The disputed domain name <mytoyotaextendedwarranty.com> was registered on December 9, 2010. The disputed domain names <mylexusextendedwarranty.com> and <myscionextendedwarranty.com> were both registered on April 27, 2011. All three disputed domain names have been used in respect of websites operated by an entity called “Compass Auto”, offering extended warranty services to owners of TOYOTA, LEXUS and SCION-branded vehicles. Print-outs from the corresponding websites, made on November 4, 2011, were annexed to the Complaint.

The Complainant’s attorneys sent a cease and desist letter to the Respondent on August 15, 2011 demanding the transfer of the disputed domain names to the Complainant. No reply was received to that letter, nor to several reminders that were subsequently sent.

5. Parties’ Contentions

A. Complainant

The Complainant submits that the disputed domain names are confusingly similar to the trademarks in which it has rights through its parent company’s registration and use and the Complainant’s own authorised use of the trademarks TOYOTA, LEXUS and SCION, and through the registration and use by it or its parent and sister companies of domain names incorporating these marks. The disputed domain names differ only in the addition of descriptive words that are directly relevant to the financial services the Complainant provides and that are not, therefore, capable of avoiding confusion.

The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. The Respondent is using the disputed domain names in respect of websites offering extended warranties for TOYOTA, LEXUS and SCION-branded automobiles. The Respondent is not, however, licensed or authorised by the Complainant or its parent company to use the marks, and the Complainant submits that the Respondent’s activities do not give rise to a right or legitimate interest in the disputed domain names within the meaning of paragraph 4(a)(ii) of the Policy because the Respondent is using the TOYOTA, LEXUS and SCION trademarks without authorisation to attract Internet users to websites offering the same type of warranty services as the Complainant provides under those marks.

The Respondent is not, moreover, commonly known by names corresponding to the disputed domain names. The Complainant points out that the Respondent is instead an individual, Andrew Hillin, and that the websites linked to the disputed domain names appear to be operated by an entity called “Compass Auto.”

Finally, the Complainant contends that the Respondent has used and registered the disputed domain names in bad faith. In particular, the Complainant argues that the Respondent has used the disputed domain names to attempt to attract and divert, for commercial gain, Internet users to websites offering competing warranty services by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the extended warranty services offered through the Respondent’s sites. The Complainant also submits that the Respondent’s failure to respond to the Complainant’s cease and desist letter and reminders further demonstrates bad faith in registering and using domain names that are confusingly similar to the TOYOTA, LEXUS and SCION trademarks.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default. No exceptional circumstances explaining the default have been put forward. Therefore, in accordance with paragraphs 14(a) and (b) of the Rules, the Panel will decide the Complaint and shall draw such inferences as it considers appropriate from the Respondent's default.

6. Discussion and Findings

Under paragraph 4(a) of the Policy, a complainant can only succeed in an administrative proceeding under the Policy if the panel finds that:

(i) the disputed domain names are identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

All three elements must be present before a complainant can succeed in an administrative proceeding under the Policy.

A. Identical or Confusingly Similar

The Complainant is a wholly-owned subsidiary of Toyota Motor Corporation, who the Complainant has shown is the proprietor of registered trademark rights in TOYOTA, LEXUS and SCION, and the Complainant is authorised to use those trademarks. The Panel is therefore satisfied that these are trademarks in which the Complainant has rights.

The disputed domain names all comprise either the trademark TOYOTA, LEXUS or SCION, plus the generic words “my” and “extended warranty”, and the non-distinctive domain name suffix “.com”. The combination of the TOYOTA, LEXUS and SCION trademarks with the words “my” and “extended warranty” gives rise to a whole that denotes extended warranties for TOYOTA, LEXUS and SCION-branded vehicles. The disputed domain names are therefore likely to be understood as pointing to websites where extended warranties can be bought for TOYOTA, LEXUS or SCION-branded vehicles. These are the same type of financial services provided by the Complainant under the TOYOTA, LEXUS and SCION marks. Consequently, the differences between the disputed domain names and the TOYOTA, LEXUS and SCION marks are not differences capable of avoiding a risk of confusion; rather, they are likely to enhance that risk (see inter alia American Automobile Association, Inc. v. Nevis Domains LLC, WIPO Case No. D2006-0489; The American Automobile Association, Inc. v. AAA-Vacationsunlimeted, WIPO Case No. D2009-0373; Playboy Enterprises International, Inc. v. Sookwan Park, WIPO Case No. D2001-0778; Amazon.com, Inc. v. PDC, WIPO Case No. D2003-0076; and National Association for Stock Car Auto Racing, Inc. v. David Crawford, Jr., WIPO Case No. D2001-1338, where the mere addition of a generic or descriptive term to a trademark was found not to avoid confusing similarity between the trademark and a disputed domain name, particularly where the descriptor was relevant to a complainant's business).

The Panel is therefore satisifed that the disputed domain names are confusingly similar to trademarks in which the Complainant has rights.

B. Rights or Legitimate Interests

The Respondent has not been authorised by the Complainant or its parent company to use the TOYOTA, LEXUS or SCION trademarks, and nothing in the record indicates that the Respondent has been commonly known by a name or names corresponding to the disputed domain names. Nor has the Respondent made any effort in these proceedings to demonstrate that it has a right or legitimate interest in the disputed domain names.

It is clear from the evidence submitted with the Complaint that the Respondent has been using the disputed domain names to offer extended warranty services to owners of TOYOTA, LEXUS and SCION-branded vehicles. If that activity amounts to a bona fide offering of goods or services under the disputed domain names, then under paragraph 4(c)(i) of the Policy the Respondent would have a right or legitimate interest in the disputed domain names. That would not necessarily mean that the Respondent’s use could not be said to infringe the Complainant’s trademark or other rights held by the Complainant or its parent company, but rather that it would not be appropriate to invoke the Policy against the domain name registrations in question.

Contents of Websites Linked to Disputed Domain Names

In this case, the print-outs annexed to the Complaint show that the disputed domain names were being used to link to websites with home pages featuring a photograph of a TOYOTA, LEXUS or SCION-branded vehicle and text reading as follows:

Home Page at “www.mytoyotaextendedwarranty.com”

“Toyota Extended Warranty

By owning a Toyota you can have peace of mind knowing you made a reliable investment. Having unexpected costly repair bills can take away from that experience. With a Toyota Extended Warranty you can avoid those high repairs and hassle by being protected now. Below we will provide you with important information about your vehicle.

At Compass Auto Warranty we are committed to building a Toyota extended warranty [...].”

At the end of the page is a section headed “About Your Toyota” and reading:

“For more information about your Toyota visit one of the sites below. Keeping yourself informed on what to expect and doing some research can go a long way. So does a reliable Toyota extended warranty from Compass Auto Warranty.”

The website has changed since the Complaint was filed, however, and the home page now reads:

“Toyota Extended Warranty

“Toyota Extended Warranty For a FREE Quote Call 877-397-1022

Home Toyota Models About Get Covered”

“Save money with Car Repairs and get 24 hour assistance! Current Toyota drivers tend to choose their vehicles based on the brand’s reputation for quality, value and dependability, a reputation that Toyota Motor Company has spend decades building. Currently one of the world’s two largest automakers by vehicles produced, Toyota continues to produce innovative models–like the Prius, RAV4 and best-selling Camry–that set trends in the automotive world for years at a time.

Founded in 1937, Toyota is actually one of the newer major automakers. The company began its life as a manufacturer of engines and heavy machinery but quickly saw opportunity in the booming Japanese auto market. From the very start, the company made its name selling smaller, more efficient vehicles than its American counterparts, achieving success in the 1940s and 50s with vehicles like the Toyopet Crown sedan and Toyopet Stout pickup truck.

Despite strict import tariffs designed to protect American automakers, and thanks in part to the drive for efficiency that followed the oil crisis of the 1970s, Toyota prospered in North America. The company began building its own manufacturing infrastructure in the United States during this time and today employs tens of thousands of people at plants and offices around the country. Toyota’s runaway success enabled it to create new spinoffs, like luxury brand Lexus and edgy newcomer Scion. Research and development spending has also increased, making Toyota a leader in hybrid, fuel-saving, safety, and interactive navigation technology.

Though they are renowned for their safety and reliability, Toyota vehicles do occasionally experience mechanical problems that necessitate repair work. In older vehicles with manual transmissions, clutch failures have been reported, while older automatic transmissions can experience fluid leaks and breakdowns beyond 200,000 miles. Folks who drive their Toyotas on poorly-maintained roads or in very cold climates may also notice wear on their vehicle’s suspension, with shocks and struts requiring replacement from time to time.

Newer Toyota vehicles contain loads of cutting-edge technology that can malfunction or break down. Hybrid Toyota drivers have noticed problems with their vehicle’s batteries including overheating and power drain. The brakes and brake pads on these vehicles may also wear down faster than normal. Meanwhile, in-cabin computers and navigation systems can fail from time to time, creating a headache for drivers.

Because its vehicles last for so long, drivers of the company’s older cars often purchase extended warranties to protect themselves against paying for costly repairs and maintenance out of pocket. There is a Toyota extended warranty for every budget, from value packages that cover major work like transmission replacement and engine failures to comprehensive plans that pay for just about any repair job–including navigation, computer, and battery systems.

Over the years, Toyota extended warranties have saved drivers millions of dollars. Whichever plan they choose, Toyota owners know that their extended warranties take the surprise out of driving an older car: rather than pay out of pocket for expensive repairs, folks who hold Toyota extended warranties drive with the assurance that their warranty plan will keep their cars running and on the road!”

Home Page at “www.mylexusextendedwarranty.com”

“Lexus Extended Warranty”

“There’s a reason you own a Lexus. Even reliable vehicles suffer breakdowns that leave you inconvenienced and stuck with high repair bills if you are not covered. Protect yourself with an extended Lexus warranty from Compass Auto and you will never be far from help. An extended Lexus warranty from Compass Auto gives you peace of mind and contributes to your financial security.

At Compass Auto we are devoted to your safety and security by offering coverage’s that truly go above and beyond your expectations. As our customer you receive; the absolute best coverage at the lowest price, a risk free 30 day review period to read over and understand your coverage and most importantly the confidence knowing all of Compass Auto’s extended warranties are backed by reputable insurance companies that provide the same high quality service we do.”

However, the disputed domain name <lexusextendedwarranty.com> is now re-directed to a page of search results on the Bing search engine for the search term “www.lexusextendedwarranty.com”.

Home Page at “www.myscionextendedwarranty.com”

The text from this website did not appear on the print-outs annexed to the Complaint, and the disputed domain name now automatically diverts to a WordPress website at “www.mychevroletextendedwarranty.com” which requires a user name and password, but displays a message indicating that “User registration is currently not allowed.”

the Respondent’s Use a Bona Fide Offering of Services?

The entity operating the websites linked to the disputed domain names is not a re-seller; rather, it has been offering its own warranty services to owners of TOYOTA, LEXUS and SCION-branded vehicles. These activities are analogous to those of re-sellers, however, since the entity behind the linked websites is offering the same services as those of the Complainant under the TOYOTA, LEXUS and SCION marks. Whether such activities amount to a bona fide offering of services within the meaning of paragraph 4(c)(i) of the Policy, therefore, can be assessed on the basis of the criteria accepted by the majority of panelists as applying to re-sellers or distributors, as set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”).

The Oki Data requirements for a bona fide offering of goods or services by a re-seller may be summarised as follows:

(1) The respondent must actually be offering the goods or services at issue;

(2) The respondent must use the site only for the offer of the trademarked goods or services;

(3) The respondent’s site must accurately disclose the relationship, if any, between the registrant and the trademark owner; and

(4) The respondent must not try to “corner the market” in domain names incorporating the trademark, thus depriving the trademark owner of the ability to reflect its own mark in a domain name.

In this case, there is nothing in the present record to suggest that the entity operating the websites linked to the disputed domain names was offering anything other than warranties for TOYOTA, LEXUS and SCION-branded vehicles on the linked websites, nor that the Respondent was trying to corner the market in domain names incorporating the trademarks.

However, the content of the websites linked to the disputed domain names does not, in the Panel’s view, make it clear that the entity behind the websites is not connected with, or authorised or approved by, the Complainant or its parent company. Motor vehicle manufacturers routinely offer their own extended warranty services and Internet users encountering a website linked to a domain name such as <mytoyotaextendedwarranty.com>, <mylexusextendedwarranty.com> or <myscionextendedwarranty.com> might reasonably assume, in the absence of an express indication to the contrary, that the entity behind the website was in fact the manufacturer or a company related to or authorised or approved by it to offer warranty services under the brand name.

Although the evidence shows that the website linked to <mytoyotaextendedwarranty.com> referred to Compass Auto Warranty, the website did not clearly indicate that Compass Auto Warranty was not affiliated with or in some way endorsed or approved by the Complainant or its parent company. Nor is there any such indication on the modified version of the website. In the absence of such an indication, the text on the linked site leaves it unclear whether there is any connection between the entity responsible for the websites and the Complainant or its parent company.

The same can be said of the contents of the website at “www.mylexusextendedwarranty.com” and “www.myscionextendedwarranty.com” websites as shown on the print-outs annexed to the Complaint. The print-outs relating to <mylexusextendedwarranty.com> show a reference to “Compass Auto” but again, there is nothing to indicate that this entity was not affiliated with or authorised or approved by the Complainant or its parent company. The print-outs relating to <myscionextendedwarranty.com> do not show any text, but the content that does appear does not disclose the fact that there was no relationship with the Complainant or its parent company.

Consequently, visitors to the websites linked to the disputed domain names could wrongly assume that the entity mentioned on the websites, Compass Auto, was in some way associated or affiliated with, or authorised or approved by, the Complainant or its parent company. At the very least, visitors to the linked websites would be uncertain as to whether there was any such connection. Leaving that point unclear is not the same as falsely suggesting that the entity behind the linked websites was the Complainant or its corporate parent, but the failure to disclose the absence of a relationship that might otherwise reasonably be presumed could clearly mislead Internet users to the Respondent’s advantage, since some visitors might be led to take out an extended warranty from the Respondent in the mistaken belief that they were dealing with an entity that was in some way connected with or endorsed by the vehicle manufacturer.

In the Panel’s view, the Respondent’s apparent failure to disclose the fact that it was independent of, and was not offering services that were authorised or approved by, the Complainant or its parent company on the websites linked to the disputed domain names deprives the Respondent’s use of the bona fides required to establish a right or legitimate interest based on the offer of goods or services under paragraph 4(c)(i) of the Policy.

Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names.

C. Registered and Used in Bad Faith

Under paragraph 4(b)(iv) of the Policy, the following circumstance, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 web site or location or of a product or service on your web site or location.”

The Respondent registered the disputed domain names and has used them in order to offer extended warranty services for TOYOTA, LEXUS and SCION-branded vehicles, and has therefore used them to attempt to attract, for commercial gain, Internet users to its websites. As indicated above, however, such efforts to attract Internet users have ultimately relied on an inherent likelihood of confusion between the disputed domain names and the TOYOTA, LEXUS and SCION trademarks, which the Respondent has not dispelled through the content of its linked websites since it has not disclosed on those sites the absence of any relationship with or authorisation or approval by the Complainant and its parent company.

The Panel therefore finds that the disputed domain names were registered, and have been used, in bad faith under paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <mylexusextendedwarranty.com>, <myscionextendedwarranty.com> and <mytoyotaextendedwarranty.com> be transferred to the Complainant.

Angela Fox
Sole Panelist
Dated: February 15, 2012