WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Sales, U.S.A., Inc. v. Domain Administrator, Fundacion Privacy Services LTD
Case No. D2018-0338
1. The Parties
1.1 The Complainant is Toyota Motor Sales, U.S.A., Inc. of Plano, Texas, United States of America (“United States”), represented by Phillips Ryther & Winchester, United States (the “Complainant”).
1.2 The Respondent is Domain Administrator, Fundacion Privacy Services LTD of Panama City, Panama (the “Respondent”).
2. The Domain Name and Registrar
2.1 The Disputed Domain Name <mytoyotaguard.com> (the “Disputed Domain Name”) is registered with Media Elite Holdings Limited dba Register Matrix (the “Registrar”).
3. Procedural History
3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 15, 2018. On February 15, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On February 23, 2018, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
3.2 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”).
3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 5, 2018. In accordance with the Rules, paragraph 5, the due date for Response was March 25, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 26, 2018.
3.4 The Center appointed Ike Ehiribe as the sole panelist in this matter on April 9, 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
4.1 The Complainant is said to be a wholly owned subsidiary of Toyota Motor Corporation, a Japanese corporation and is the exclusive importer and distributor of Toyota automobiles throughout the United States, save the State of Hawaii, Puerto Rico (unincorporated territory of the United States), and the United States Virgin Islands. The Complainant is also said to be the exclusive licensee of the Toyota Motor Corporation’s trademarks and is contractually obligated to monitor the distribution territory for trademark infringements and abate any infringements found. It is said that the Complainant’s predecessor first sold Toyota brand passenger vehicles in 1939, and since then the Toyota brand has grown to be one of the world’s leading automobile brands. The Complainant has provided evidence of numerous trademark registrations for the trademark TOYOTA and related stylized and design marks. See e.g., United States Reg. No. 843138, registered January 30, 1968. It is said that Toyota was listed in Business Week’s annual survey of the “100 Most Valuable Global Brands” as the 6th most valuable brand in the world in 2015 and has consistently since then been listed in the top 20 brands. It is further said that since the Complainant began manufacturing in North America in 1986, more than 26 million Toyota automobiles have been manufactured in North America. Sales of Toyota automobiles, motor trucks, and structural parts and accessories are said to have exceeded USD 100 billion since 1958.
4.2 According to the WhoIs record, the Respondent registered the Disputed Domain Name on November 17, 2015 with the Registrar being Media Elite Holdings Limited. According to the Complainant’s allegations and evidence, the Disputed Domain Name redirected to websites of competitors of the Complainant and currently it also resolves to a website with pay-per-click links.
5. Parties’ Contentions
5.1 The Complainant argues that the Disputed Domain Name <mytoyotaguard.com> is confusingly similar to the Complainant’s TOYOTA trademark, as the fact that the Disputed Domain Name wholly incorporates the Complainant’s trademark is sufficient to establish the confusing similarity requirement under the policy despite the addition of other words to such marks. The Complainant refers in support to previous UDRP decisions such as F. Hoffmann-La Roche AG v. Above.com Domain Privacy / Shu Lin, Shu Lin Enterprises Limited / Host Master, Transure Enterprise Ltd, WIPO Case No. D2010-1986; and in particular Toyota Motor Credit Corp. v. Hillin, WIPO Case No. D2011-2175 (transferring <mytoyotaextendedwarranty.com>, <mylexusextendedwarranty.com>, and <myscionextendedwarranty.com> and finding that differences between the disputed domain names and the TOYOTA, LEXUS, and SCION trademarks are not differences capable of preventing a risk of confusion, but rather they are likely to enhance that risk). It is further asserted that the term “guard” is commonly used in association with products and accessories that protect automobiles from damage or theft. The Complainant has therefore registered the TOYOTA trademark for use in connection with such products and obtained United States trademark registration covering such goods and services. Furthermore, it is said that a consumer will assume that the Disputed Domain Name <mytoyotaguard.com> refers to such a product or accessory. Also the mere addition of “my” it is argued, to a well-known trademark does not distinguish the trademark from the trademark owner. See also Ford Motor Company v. Domain Admin, WhoIs Privacy Corp. / PPA Media Services / Ryan Foo, WIPO Case No. D2016-2572 (transferring the domain name <myfordvehicles.com>).
5.2 The Complainant asserts that the Respondent has no rights to or legitimate interests in the Disputed Domain Name as the Respondent is not known by the Disputed Domain Name and neither has the Respondent been authorised to use the TOYOTA trademark in any way and has no known connection to the Complainant and has never made any bona fide use of the Disputed Domain Name. The Complainant states further that the Respondent is using the Disputed Domain Name to resolve to official websites of the Complainant’s direct competitors such as Hyundai, Volvo, and Nissan and to the website of <edmunds.com>. It is the Complainant’s further submission that these uses are clearly not legitimate but are all infringing the Complainant’s rights and are in no way a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy, nor is it a legitimate noncommercial or fair use of the Disputed Domain Name under the Policy. Finally, the Complainant asserts that aside from the Respondent’s registration of the Disputed Domain Name, the Complainant has not found any evidence of any person or entity using the name “My Toyota Guard” and even if there was, such use would dilute the Complainant’s TOYOTA trademark and thus could not give rise to rights or legitimate interests.
5.3 On the issue of bad faith, the Complainant identifies several factors that demonstrate that the Respondent registered and has continued to use the Disputed Domain Name in bad faith. The first point made by the Complainant is that given the strength and fame of the Complainant’s TOYOTA trademark, the Respondent’s bad faith is established by the fact of registration alone. In this regard the Complainant asserts that the TOYOTA trademark falls within a select class of internationally strong trademarks which have become so famous that it is impossible for the Respondent to claim lack of knowledge of the Complainant’s prior rights. Secondly, the Complainant refers to the Respondent’s use of the Disputed Domain Name to resolve to the websites of the Complainant’s competitors such as Hyundai, Volvo and Nissan and to direct Internet traffic to websites hosting pay-per-click links as further evidence of bad faith and use. The Complainant refers to the cases of Bayerische Motoren Werke AG v. Aditya Roshini, Web Services Pty, WIPO Case No. D2015-1110 and American Honda Motor Co., Inc v. Ryan G Foo, PPA Media Services, WIPO Case No. D2015-0829. Thirdly, the Complainant describes the Respondent as a notorious cyberpirate who has lost a large number of UDRP proceedings and who proceeded to alter the WhoIs record to remove the name “Domain Admin, WhoIs Privacy Corp” and replace it with “Domain Administrator, Fundacion Privacy Services Ltd.”, upon receipt of the Complainant’s cease and desist letter dated March 27, 2017. The Complainant also states that both “Domain Admin, WhoIs Privacy Corp.” and “Domain Administrator, Fundacion Privacy Services Ltd” have been named together as respondents in a large number of cases and therefore the Complainant asserts that the Respondent has altered the WhoIs record to give the impression that the Registrant of the Disputed Domain Name is a proxy service. The Complainant therefore argues that even if these entities are legitimate proxy services, the Respondent’s conduct in employing multiple proxy services is further evidence of bad faith use.
5.4 The Respondent did not reply to the Complainant’s contentions. Therefore in accordance with paragraphs 14(a) and (b) of the Rules, the Panel shall draw such inferences as it considers appropriate from the Respondent’s default.
6. Discussion and Findings
6.1 Under paragraph 4(a) of the Policy, to succeed in this administrative proceeding the Complainant must prove that: (i) the Disputed Domain Name is identical or confusingly similar to the trademark or service mark of the Complainant; (ii) the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and (iii) the Disputed Domain Name has been registered and is being used in bad faith.
6.2 As expressly stated in the Policy, the Complainant must establish the existence of each of these three elements in any administrative proceeding.
A. Identical or Confusingly Similar
6.3 This Panel finds as a fact that the Complainant is a subsidiary of Toyota Motor Corporation, the registered owner of several trademark registrations for the world-famous TOYOTA trademark as substantiated by the copies of trademark registrations attached to this proceeding. The Panel therefore finds that the Disputed Domain Name <mytoyotaguard.com> is confusingly similar to the TOYOTA trademark. As is patently obvious, the Disputed Domain Name wholly incorporates the Complainant’s trademark TOYOTA and the addition of the generic Top-Level Domain (gTLD) “.com” and or the dictionary words “guard” and “my” does nothing to preclude a finding of confusing similarity. See also Ford Motor Company v. Domain Admin, WhoIs Privacy Corp. / PPA Medical Services / Ryan Foo, WIPO Case No. D2016-2572 (transferring a number of disputed domain names including <myfordvehicles.com>) and Toyota Motor Credit Corporation v. Andrew Hillin, WIPO Case No. D2011-2175 (transferring a number of disputed domain names including <mytoyotaextendedwarranty.com> and <mylexusextendedwarranty.com>).
6.4 The Panel therefore finds that the Complainant has established that the Disputed Domain Name is confusingly similar to the Complainant’s trademark.
B. Rights or Legitimate Interests
6.5 As submitted by the Complainant, the Panel equally finds that the Respondent has no rights to or legitimate interests in the Disputed Domain Name. Also evidence has been adduced to show that the Respondent has never been known by the Disputed Domain Name nor authorised or licensed to use the Disputed Domain Name in connection with a bona fide offering of goods and services. On the contrary the Complainant has presented credible evidence by way of screen shots indicating that the Respondent has been directing the Disputed Domain Name to resolve to websites of other automobile manufacturers who are competitors of the Complainant. The Panel finds that such conduct cannot be described as evidence of rights or legitimate interests in the Disputed Domain Name within the ambit of paragraph 4(c) of the Policy.
6.6 Accordingly, the Panel is satisfied that the Complainant has established that the Respondent does not own any rights or legitimate interests in the Disputed Domain Name as stipulated in paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
6.7 With the question of bad faith registration and use in mind, the Panel finds without any doubt that the Respondent registered the Disputed Domain Name in bad faith with the intention to engage in continued bad faith use. This finding is based on a number of irrefutable factors arising from the evidence as adduced by the Complainant. Firstly, the Respondent could not have been unaware of the Complainant’s prior rights in the world-famous TOYOTA trademark as of November 2015 when the Respondent elected to register the Disputed Domain Name. The Panel is satisfied that a consumer is more likely to assume that the Disputed Domain Name <mytoyotaguard.com> is associated with the Complainant or one of the numerous motor vehicle related services rendered by the Complainant. See in support section 3.2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third edition (“WIPO Overview 3.0”). It therefore follows that the Panel finds that in circumstances such as these, the mere fact of registration is in itself clear proof of bad faith registration and use. Clearly, the Respondent registered the Disputed Domain Name for financial gain, a motive substantiated by the use to which the Respondent has put the Disputed Domain Name. Secondly, there is clear evidence that the Respondent directs the Disputed Domain Name to resolve to websites of other automobile entities such as Hyundai, Nissan, and Volvo which are competitors of the Complainant and currently to websites with pay-per-click advertisement links. Thirdly, the Respondent failed to respond to a cease and desist letter dated March 27, 2017 dispatched by the Complainant. Instead, and upon receipt of the letter, the Respondent altered the WhoIs record by deleting “Domain Admin, WhoIs Privacy Corp.” as the registrant of the Disputed Domain Name and replacing same with “Domain Administrator Fundacion Privacy Services Ltd.” The Panel finds that the failure of the Respondent to respond to the cease and desist letter is further evidence of bad faith. So also does the act of altering the Whois record constitute further evidence of bad faith in the circumstances of this case. Fourthly, the fact that the Respondent resorted to using multiple proxy services whether legitimate or not is further evidence of bad faith use. Fifthly, as alluded to in paragraph 5.4 above the Panel has drawn adverse inferences from the failure of the Respondent to respond to the Complainant’s contentions in this matter.
6.8 The Panel is therefore satisfied that the Respondent registered the Disputed Domain Name in bad faith and has continued to engage in bad faith use.
7.1 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 Name <mytoyotaguard.com> be transferred to the Complainant.
Date: April 25, 2018