WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Toyota Motor Sales, U.S.A., Inc. v. TPI

Case No. D2003-0418

 

1. The Parties

The Complainant is Toyota Motor Sales, U.S.A., Inc., of Torrance, California, United States of America, represented by Shaw Pittman of United States of America.

The Respondent is TPI, of Gallatin, Tennessee, United States of America.

 

2. The Domain Name and Registrar

The domain name at issue is<tpilandcruiser.com> (the "Disputed Domain Name"), registered with Network Solutions, Inc. Registrar ("Network Solutions").

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 30, 2003. On June 3, 2003, the Center transmitted by e-mail to Network Solutions a request for registrar verification in connection with the Disputed Domain Name. On June 4, 2003, Network Solutions transmitted by e-mail 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 June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 25, 2003. The Respondent failed to submit a response. Accordingly, notification of the Respondentís default was given on June 27, 2003.

The Center appointed Timothy D. Casey as the sole panelist in this matter on July 9, 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

Under Paragraph 5(e) of the Rules, "[i]f a Respondent does not submit a response, in the absence of exceptional circumstances, the panel shall decide the dispute based upon the complaint." In the present case, the Respondent failed to respond to both the initial complaint, and the subsequent Procedural Order. Therefore, as the Respondent failed to submit any formal response to these Proceedings, as no informal correspondence indicates that the Respondent contests the facts as presented by the Complainant and, in the absence of any exceptional circumstances, under Paragraph 5(e) of the Rules, the Panel adopts the facts asserted in the Complaint and the Complainant's Response to the Procedural Order as undisputed facts and decides the dispute between the Complainant and the Respondent based upon such undisputed facts.

(i) The Complainant is owner of the federally-registered LAND CRUISER trademark (the "Trademark"), and has used the Trademark in connection with goods since at least as early as 1962. The Complainant has used the Trademark continuously and extensively in connection with the business of manufacturing, advertising and promoting automobile and automobile parts. Prior to the assignment of the federal trademark registration, the Complainant and Custom Coach Corporation ("Custom Coach") both used the LAND CRUISER mark pursuant to a concurrent use agreement Ė the Complainant for sports utility vehicles and Custom Coach for buses. The concurrent use agreement remained in effect until June 1, 2000, when the Complainantís parent company Toyota Motor Corporation acquired all of Custom Coachís remaining rights to the Trademark.

(ii) The Trademark is a well-known trademark with which the public has come to associate the goods provided by the Complainant.

(iii) The Complainant has spent substantial sums in advertising its products under the mark LAND CRUISER for many years.

(iv) The Complainant has not authorized the Respondent to use the Trademark, nor is the Respondent affiliated with the Complainant in any way.

(v) The Respondent registered the domain name <tpilandcruiser.com> on June 13, 1996, with Network Solutions as registrar.

(vi) On August 20, 1999, the Complainant sent a cease and desist letter to the Respondent via Federal Express to the address of record for the Respondent, requesting that the Respondent stop using the Disputed Domain Name.

(vii) On October 11, 2001, the Complainant sent a second cease and desist letter to the Respondent, and also transmitted through Federal Express.

(viii) On December 13, 2001, and November 1, 2002, the Complainant sent follow up letters, also via Federal Express.

(ix) The tracking history for all four letters sent by the Complainant to the Respondent between August 20, 1999 and November 1, 2002, indicates that the Respondent received the letters.

(ix) The Respondent failed to acknowledge receipt of the Complainantís correspondence and has continued to use the domain name <tpilandcruiser.com>.

 

5. Partiesí Contentions

A. Complainant

Complainant asserts that:

(i) The Disputed Domain Name is identical or confusingly similar to the Complainant's federally registered trademark LAND CRUISER The Disputed Domain Name fully incorporates the LAND CRUISER trademark. A mere addition of a house mark such as "tpi" to an otherwise identical mark is not sufficient to differentiate or avoid a likelihood of confusion created by the Respondentís use of the Complainantís mark LAND CRUISER. Because of the confusing similarities between the Complainant's trademark and the Disputed Domain Name, web-based consumers are likely to believe that they can purchase goods directly from Toyota, or that there is an authorized connection between Toyota and the Respondent.

(ii) The Respondent does not have any rights or legitimate interest in the Disputed Domain Name because: (i) the Respondent is not currently using, has not used and upon the Complainantís information and belief has made no preparations to use the Disputed Domain Name in connection with the provision of goods and services; (ii) the Respondent has not commonly been known by the Disputed Domain Name as an individual, business or other organization; and (iii) the Respondent has not been authorized by the Complainant to use the Trademark and is not affiliated with the Complainant in any way.

(iii) The Disputed Domain Name has been registered and is being used by the Respondent in bad faith. Upon the Complainantís information and belief, the Respondent acquired the Disputed Domain Name primarily for the purpose of generating commercial gain by misleading and diverting consumers who are seeking the Complainant or the Complainantís dealer network. As the basis for this belief, the Complainant cites the fact that the Respondent is commonly known as TPI 4x4 and that the Disputed Domain Name merely provides a link to "www.tpi4x4.com". The Respondents use of the domain name <tpilancruiser.com> is used in order to attract, for commercial gain, Internet users to the "www.TPI 4x4.com" web site by creating a likelihood of confusion with the Complainantís LAND CRUISER mark as the source, sponsorship, affiliation, or endorsement of the Respondentís web site. Furthermore, the Respondent failed to acknowledge receipt of the Complainantís letters, but also, after receiving the Complainantís correspondence, the Respondent continued to use the domain name <tpilandcruiser.com>.

Pursuant to Paragraph 5(e) of the Rules, in the absence of a Response from the Respondent, "the Panel shall decide the dispute based upon the complaint." The Panel will independently determine the merits of the Complaint on the basis of all evidence available.

B. Respondent

The Respondent did not reply to the Complainantís contentions.

 

6. Discussion and Findings

A. Identical or Confusingly Similar

The Disputed Domain Name: (i) is confusingly similar to the Complainant's trademark, LAND CRUISER, and (ii) fully incorporates the Complainant's trademark into it. The Complainant has trademark rights in the United States that date at least as far back as 1962. The Respondent registered the Disputed Domain Name in June 1996. Here, the Complainant clearly has superior rights to the LAND CRUISER mark.

The Panel finds for the Complainant on the first element, that the Respondent's domain name is identical or confusingly similar to the trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(a)(ii) of the Policy inquires as to whether or not the Respondent has any rights or legitimate interests vested in the Domain Name. Paragraph 4(c) provides examples of circumstances that can demonstrate the existence of such rights or legitimate interests: (i) use of, or preparations to use, the Domain Name in connection with a bona fide offering of goods or services; (ii) the fact that the Respondent has commonly been known by the Domain Name; and (iii) legitimate non-commercial or fair use of the Domain Name.

Under the facts as presented in this case, and in accordance with the Policy paragraph 4(a)(ii) as stated above, the Respondent does not appear to have any rights or legitimate interest in respect of this domain name.

The Respondent has not been commonly known as <tpilandcruiser.com> or LAND CRUISER as an individual, business or other organization, nor has the Complainant authorized the Respondent to use the Trademark.

The Panel finds the Complainantís untimely reaction to the Respondentís 1996 registration and subsequent use of the domain name a potential basis for questioning the Complainantís contention that the Respondent has no legitimate rights or interest in the domain name. However, since the Respondent has not replied and provided any argument to refute the Complainantís contention, the Panelís question must remain unanswered. Accordingly, the Panel finds for the Complainant on the second element, that the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name.

C. Registered and Used in Bad Faith

On the facts of this case, as asserted by the Complainant, the Panel finds that the Respondent registered the Disputed Domain Name primarily for the purpose of generating commercial gain by misleading and diverting consumers who are seeking the Complainant or the Complainantís dealer network, as is required under Paragraph 4(b)(i) of the Policy. As the basis for this belief, the Complainant cites the fact that the Respondent is commonly known as TPI 4x4 and that the site associated with the Disputed Domain Name merely provides a link to "www.tpi4x4.com". The Panel has independently confirmed that the Respondent uses the Disputed Domain Name as asserted by the Complainant. The Respondentís use of the site supports a finding that the Respondent uses the domain name <tpilandcruiser.com> in order to attract, for commercial gain, Internet users to the "www.TPI 4x4.com" web site by creating a likelihood of confusion with the Complainantís LAND CRUISER mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís web site.

The Panel finds that the Disputed Domain Name was registered and is being used in bad faith.

 

7. Decision

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, <tpilandcruiser.com> be transferred to the Complainant.

 


 

Timothy D. Casey
Sole Panelist

Dated: July 24, 2003