WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Sales, U.S.A. Inc. v. Domain Admin, Whois Privacy Corp.
Case No. D2018-0801
1. The Parties
The Complainant is Toyota Motor Sales, U.S.A. Inc. of Texas, United States of America, represented by Phillips Ryther & Winchester, United States of America.
The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.
2. The Domain Name and Registrar
The disputed domain name <sunnysidetoyota.com> (the “Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 10, 2018. On April 11, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 16, 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.
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 the Respondent of the Complaint, and the proceedings commenced on April 17, 2018. In accordance with the Rules, paragraph 5, the due date for Response was May 7, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 11, 2018.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on May 23, 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
The Complainant manufactures vehicles and parts in 27 countries and regions around the world and sells them in more than 170 countries and regions.
The Complainant began using the TOYOTA trade mark in the U.S. in 1958 and currently holds the following United States registrations of the word mark TOYOTA (the “Trade Marks”):
- Registration No. 843,138, dated January 30, 1968
- Registration No. 1,274,261, dated April 17, 1984
- Registration No. 1,338,339, dated May 28, 1985
- Registration No. 1,589,552, dated April 3, 1990
- Registration No. 1,698,252, dated June 30, 1992
- Registration No. 1,721,365, dated October 6, 1992
- Registration No. 1,888,870, dated April 11, 1995
- Registration No. 2,115,623, dated November 25, 1997
- Registration No. 2,848,004, dated June 1, 2004
- Registration No. 2,949,195, dated May 10, 2005.
The Respondent registered the Domain Name on August 29, 2008.
When the Complainant first discovered Respondent’s registration in the fall of 2014, the Domain Name resolved to a webpage promoting the sale of Mazda automobiles. The Complainant then asked the domain name registrar, Internet Domain Service BS Corp, for the true or beneficial registrant’s name and contact information, but it refused to provide the requested information. However, the Respondent subsequently stopped using the Domain Name for a period of time.
On September 2, 2016, the Complainant sent a demand letter to the Respondent via Internet Domain Service BS Corp. The Respondent did not respond.
The Complainant sent a second demand letter to the Respondent via both email and first class mail in April 2017 and, when it did not receive a response, re-sent the demand letter via email on May 30, 2017. Again, no response was received.
On August 8, 2017, the Complainant found that the Domain Name resolved to a website under the domain name <edmunds.com>, an auto information and lead referral website, which provides consumers with information regarding new and used automobiles and provides sales leads to auto dealers in direct competition with the Complainant’s dealers.
On September 2, 2017, the Complainant sent a third demand letter to the Respondent via email and first-class mail. Again, Respondent did not respond, but stopped using the Domain Name to host a website.
On March 7, 2018, the Complainant discovered that the Respondent was using the Domain Name to resolve to the website under <volvo.com>.
5. Parties’ Contentions
According to the Complainant, the Domain Name is confusingly similar to the Trade Marks as it wholly incorporates the name TOYOTA of which the Trade Marks consist and the addition of the geographic indicator “Sunnyside” conforms to the convention in the automobile dealer network of forming dealer names by combining the manufacturer’s mark with the dealer’s name or location.
The Respondent has no rights in the Domain Name, the Complainant submits, as it is not known by the Domain Name, has not been authorized by the Complainant to use the Trade Marks in any way, has no connection or affiliation with the Complainant, and has never made any bona fide use of the Domain Name. Furthermore, the Complainant puts forward, the Respondent’s use of a domain name confusingly similar to the Trade Marks to redirect Internet users interested in the Complainant’s products and services to a website that offers similar products and services in direct competition with Complainant’s business is not a use in connection with a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use of the Domain Name. The same applies to the Respondent’s use of the Domain Name for a website displaying pay-per-click advertisements, including pay-per-click advertisements targeted toward the Trade marks’ meaning, the Complainant states.
According to the Complainant, given the strength and fame of the Trade Marks, the Respondent’s bad faith is established by the fact of registration alone. The TOYOTA mark, the Complainant submits, falls within a select class of internationally strong marks that have become so famous that it is impossible for any respondent to claim that he was unaware of the Complainant’s prior rights or has a legitimate interest in a domain name that consists of the name of a “Toyota” dealer.
The Complainant adds that the Respondent’s awareness of the Trade Marks is demonstrated by its labeling the lists of pay-per- click advertisements displayed on the website under the Domain Name with both the Trade Marks and misspellings thereof. The Complainant also points out that the Respondent’s bad faith is further demonstrated by its use of the Domain name to resolve to websites of the Complainant’s competitors, including Volvo and Mazda, and to display pay-per-click advertisements targeted toward the Trade Marks’ meaning. Finally, the Complainant submits that the Respondent is a notorious cyber pirate who has been the losing respondent in a large number of UDRP proceedings, which also justifies a finding that Respondent has acted in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The Complainant has shown that it has registered rights in the Trade Marks.
The Domain Name is confusingly similar to the Trade Marks as it incorporates the mark TOYOTA, of which the Trade Marks consist, in its entirety. The addition of the geographic term “sunnyside” does not avoid this confusing similarity (see also WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 and Playboy Enterprises International, Inc. v. Zeynel Demirtas, WIPO Case No. D2007-0768, <playboyturkey.com>).
Therefore, the Panel finds that the Domain name is confusingly similar to the Trade marks in which the Complainant has rights.
B. Rights or Legitimate Interests
The Complainant has to make out at least a prima facie case that the Respondent does not have rights or legitimate interests in the Domain name (WIPO Overview 3.0, section 2.1). Based on the evidence and the undisputed submissions of the Complainant, the Panel concludes that the Respondent has not received the Complainant’s consent to use the Trade Marks as part of the Domain Name, is not commonly known by the Domain Name, has no connection or affiliation with the Complainant and has not acquired trade mark rights in the Domain Name. The Respondent’s uses of the Domain Name in the present case for a website (i) containing links to websites, such as the websites under <edmunds.com> and <volvo.com>, where products are offered for sale that compete with the Complainant’s products sold under the Trade Marks, (ii) displaying, inter alia, pay-per-click advertisements to websites under domain names consisting of misspellings of the Trade Marks, does not amount to a bona fide offering of goods or services, nor a legitimate noncommercial or fair use.
In view of the above, the Panel concludes that the Complainant has established that the Respondent has no rights or legitimate interests in the Domain Name.
C. Registered and Used in Bad Faith
Many panels in previous UDRP decisions have found that the TOYOTA mark, of which the Trade Marks consist, is well-known throughout the world and a famous trade mark(see, for instance, Toyota Motor Sales, U.S.A., Inc. v. RD Labs, WIPO Case No. D2005-1129 (<toyota-usa.com>) and Toyota Motor Sales, U.S.A., Inc. v. James Olp, WIPO Case No. D2017-1297 (<doraltoyota.com>)).
Based on the information and the evidence provided by the Complainant, the Panel finds that at the time of registration of the Domain Name the Respondent was or should have been aware of the Trade Marks, since:
- the Respondent’s registration of the Domain Name occurred more than forty years after the registration of the earliest of the Trade Marks;
- the Trade Marks are famous throughout the world; and
- the element TOYOTA of which the Trade Marks consist, is incorporated in its entirety in the Domain Name, and does not appear to be a dictionary word, nor a name of which it is likely that a registrant would spontaneously or accidentally think of.
Under these circumstances, the Panel concludes that the Domain Name has been registered in bad faith.
With regard to bad faith use, the Panel considers fact that the Respondent did not respond to three cease-and desist-letters (while apparently choosing to temporarily disconnect the then current website from the Domain Name in response to the first such letter in 2014) and the lack of a response to the Complaint as evidence of bad faith use of the Domain Name. The fact that the Domain Name alternately resolved to websites containing links to websites on which products were offered of competitors of the Complainant and to a website displaying, inter alia, pay-per-click advertisements to websites under domain names consisting of misspellings of the Trade Marks, is an indication that the Domain Name is being used to intentionally attempt to attract, for commercial gain, Internet users to the website or other online location by creating a likelihood of confusion with the Trade Marks as to the source, sponsorship, affiliation or endorsement of the website to which the Domain Name resolves, and of the products offered there, within the meaning of paragraph 4(b)(iv) of the Policy.
Therefore, the Panel concludes that the Domain Name has been registered and is being used in bad faith.
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 <sunnysidetoyota.com> be transferred to the Complainant.
Wolter Wefers Bettink
Date: June 5, 2018