WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Sales, U.S.A., Inc. v. Above.com Domain Privacy / Transure Enterprise Ltd.
Case No. D2017-2392
1. The Parties
Complainant is Toyota Motor Sales, U.S.A., Inc. of Plano, Texas, United States of America (“U.S.” or “United States”), represented by Phillips, Ryther & Winchester, United States.
Respondent is Above.com Domain Privacy of Beaumaris, Victoria, Australia / Transure Enterprise Ltd. of Wilmington, Delaware, United States.
2. The Domain Name and Registrar
The disputed domain name <lexusofsantamonica.com> (the “Domain Name”) is registered with Above.com, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 4, 2017. On December 5, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On December 6, 2017, the Registrar transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing Respondent’s 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 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 28, 2017. In accordance with the Rules, paragraph 5, the due date for Response was January 17, 2018. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on January 25, 2018.
The Center appointed Martin Schwimmer as the sole panelist in this matter on February 13, 2018. 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, Toyota Motor Sales, U.S.A., Inc., is the licensee of the owner of the LEXUS trademark, registered in the United States (registration number 1,574,718) on January 2, 1990, and the exclusive importer and distributor of Toyota and Lexus automobiles. Complainant’s authorized Lexus dealer in Santa Monica, California, uses the domain name <lexussantamonica.com>, which it registered on June 10, 1997. On October 12, 2005, Respondent registered the Domain Name, <lexusofsantamonica.com>, which it has used for various purposes, including the hosting of pay-per-click ads, as well as a “customer survey” purporting to originate with Complainant.
5. Parties’ Contentions
Complainant is licensee of the famous LEXUS trademark, which mark has been in use in the U.S. since 1987. Complainant’s corporate parent registered the LEXUS trademark in the U.S. in 1990. Complainant extensively promotes the LEXUS mark in numerous media, including the “www.lexus.com” official website. Numerous UDRP panels have found LEXUS to be a famous trademark.
Complainant’s authorized Lexus dealer in Santa Monica, California, uses the name Lexus of Santa Monica, and the domain name <lexussantamonica.com>, which it registered on June 10, 1997 – eight years before Respondent registered <lexusofsantamonica.com>on October 12, 2005.
Over time, Respondent has utilized the Domain Name to display pay-per-click advertisements, which ads were labeled to refer to Complainant but actually referred to entities unrelated to Complainant. At other times, the Domain Name was used to host a page purporting to conduct a Lexus customer survey. At other times, the Domain Name redirected to “www.volvo.com”, a website belonging to a competitor of Complainant. At other times, the Domain Name was simply offered for sale on the website.
Respondent has no rights or legitimate interests in the Domain Name because Respondent is not known by the Domain Name, has not been authorized by Complainant to use Complainant’s marks in any way, has no connection or affiliation with Complainant, and has never made any bona fide use of the Domain Name.
Respondent’s use of the Domain Name to offer advertising links to other websites is not a bona fide offering of goods and services pursuant to paragraph 4(c)(i) of the Policy.
Use of the Domain Name to display advertising targeted toward the Domain Name’s trademark meaning, while simultaneously offering the Domain Name for sale is a well-known form of cyber piracy and is clearly illegitimate.
Use of the Domain Name in order to create the false impression that Complainant was the sponsor of a “customer survey” displayed on the website, is also illegitimate.
Use of the Domain Name to resolve to “www.volvo.com”, the website of one of Complainant’s direct competitors, is also illegitimate.
Many factors demonstrate Respondent’s bad faith. Given the strength and fame of the LEXUS trademark, Respondent’s bad faith is established by the fact of registration alone. LEXUS falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that it was unaware of Complainant’s prior rights or has a legitimate interest in domain names that combine “lexus” with a geographic identifier like Santa Monica.
Respondent’s use of the Domain Name to display Complainant’s unique design trademarks conclusively proves that Respondent was aware of the trademark significance of the Domain Name, <lexusofsantamonica.com>.
Finally, Respondent is a notorious cyberpirate who has been the losing respondent in over 195 UDRP proceedings involving the famous trademarks of others, including trademarks such as STATE FARM, NIKE, BATH AND BODYWORKS, MORGAN STANLEY, SEARS, STARBUCKS, and BANK OF AMERICA.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
Complainant is the licensee of its corporate parent, which owns the LEXUS trademark. In previous UDRP decisions, UDRP panelists have found that Complainant has protectable rights in the mark LEXUS. See, e.g., Toyota Motor Sales USA. v. Rafi Hamid dba ABC Automobile Buyer, WIPO Case No. D2001-0032. The evidence submitted by Complainant supports these findings. Although Complainant does not claim to be the owner of any trademark registrations for the mark LEXUS, Complainant has established that its corporate parent owns numerous U.S. federal trademark registrations for the mark LEXUS. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview”), section 1.4.1 (“A trademark owner’s affiliate such as a subsidiary […] is considered to have rights in a trademark under the UDRP for purposes of standing to file a complaint.”)
The Domain Name wholly incorporates Complainant’s world-famous LEXUS trademark and combines it with “Santa Monica” and the generic Top-Level Domain (“gTLD”) suffix, “.com”, which may be disregarded. “The fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks.” Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
This is true here, as the additional word is a geographic indicator, “Santa Monica”, as consumers are likely to think that <lexusofsantamonica.com>refers to a website targeted toward consumers in Santa Monica. See, e.g., Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corporation v. Atma Estate, WIPO Case No. D2006-1231 (transferring <lexus-ukraine.com>and finding “mere addition of the geographical term ‘Ukraine’ and a hyphen to the LEXUS mark does not grant distinctiveness to the domain name in the present case”, as consumers are “likely to think that the contested domain name constitutes a variation of the trademark LEXUS owned by Complainant, which does business and has a base in Ukraine”).
Accordingly, Complainant has satisfied the first element of the Policy.
B. Rights or Legitimate Interests
Complainant alleges that Respondent has no rights or legitimate interests in the Domain Name because Respondent is not known by the Domain Name, has not been authorized by Complainant to use the LEXUS mark in any way, has no connection or affiliation with Complainant, and has never made any bona fide use of the Domain Name.
Complainant further alleges that none of the uses that Respondent has made of the Domain Name, <lexusofsantamonica.com>,are legitimate.
Respondent’s pay-per-click ads, whether targeting Complainant, Complainant’s competitors, or unrelated services, are not legitimate usages. See, e.g., Playboy Enterprises International Inc. v. Global Media Domain Trust, WIPO Case No. D2006-1543 (holding that the respondent has no rights or legitimate interests where the disputed domain name was used to display advertising to online sites offered by competitors of the complainant).
Respondent’s purported LEXUS customer survey is an impersonation of Complainant. See, e.g., Electro-Sensors, Inc. v. Charles Nguyen, WIPO Case No. D2013-1517 (explaining use of disputed domain name to impersonate complainant “would constitute the very opposite of use in connection with a bona fide offering of goods or services that might otherwise give rise to a legitimate right or interest in a domain name”).
Respondent’s diversion of the Domain Name to resolve to the website of a competitor of Complainant, is not a bona fide offering of goods, nor is it legitimate fair use. See Friedman and Soliman Enterprises, LLC v. Gary Selesko, M&B Relocation and Referral, LLC, WIPO Case No. D2016-0800.
Previous UDRP panels have consistently held that it is sufficient for a complainant to prove a prima facie case that the respondent does not hold rights or legitimate interests in the domain name (see Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455; and Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110). Once a prima facie case is shown, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating its rights or legitimate interests in the disputed domain name.
Respondent has not submitted any reply to Complainant’s contentions.
Therefore, in light of Complainant’s prima facie case, unrebutted by Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
The Panel finds that Complainant has established bad faith, with evidence relevant to all four provided circumstances under the Policy. .
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the Domain Name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registration to Complainant who is the owner of the trademark or service mark or to a competitor of Complainant, for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the Domain Name; or
(ii) 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) 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 online location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
As a preliminary point, previous UDRP panels have found that the LEXUS mark is famous. See, e.g., Toyota Motor Credit Corporation v. Digi Real Estate Foundation, WIPO Case No. D2006-1619 (transferring <lexusfinancail.com>and finding domain name confusingly similar to LEXUS “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”).
Respondent’s use of LEXUS logos, and its redirection of the Domain Name to the website of a competitor, and its hosting of advertisements referring to Complainant, proves beyond doubt that Respondent was aware of Complainant’s reputation in its Trademark, and sought to profit from that reputation.
Respondent used the Domain Name to offer to sell it. See Wolters Kluwer U.S. Corporation v. Transure Enterprise Ltd., WIPO Case No. D2008-0384) (display on the disputed domain name website that the “site may be for sale”, is additional evidence of bad faith).
Respondent has engaged in a massive pattern of cyber piracy. The Panel did not review all of the 195 UDRP decisions identified by Complainant, but reviewed a sample sufficiently large to find that Respondent is indeed responsible for a pattern of cyber piracy.
Respondent has made no legitimate use of the website in any manner.
Respondent has impersonated Complainant through its purported LEXUS customer survey. See Comcast Corporation v. Yan Wei, WIPO Case No. D2016-1167 (finding “Complainant’s evidence thatthe Respondent’s website linked to a page purporting to be a ‘survey’ of theComplainant’s services strongly reinforces [the] view” that respondent was attempting toattract users to its website by creating a likelihood of confusion and finding bad faith pursuant to Policy).
For the reasons cited above, the Panel finds for Complainant on the third element of the Policy.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <lexusofsantamonica.com> be transferred to Complainant.
Date: February 27, 2018