WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toyota Motor Sales, U.S.A., Inc. v. Domain Administrator, Fundacion Privacy Services Ltd, PERFECT PRIVACY, LLC / Milen Radumilo, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo, Shu Lin

Case No. D2021-1871

1. The Parties

The Complainant is Toyota Motor Sales, U.S.A., Inc., United States of America (“United States”), represented by Phillips Winchester, United States.

The Respondent is Domain Administrator, Fundacion Privacy Services Ltd, Panama; PERFECT PRIVACY, LLC, United States / Milen Radumilo, Romania; Privacy service provided by Withheld for Privacy ehf, Iceland / Gabriella Garlo, Brazil; Shu Lin, China.

2. The Domain Names and Registrars

The disputed domain names are: <jimfalklexus.com>, registered with Media Elite Holdings Limited dba Register Matrix (“Media Elite Registrar”); <lexusoftoledo.com>, registered with Victorynames LLC (“Victorynames Registrar”); <toyota-lexus.parts>, registered with NameCheap, Inc. (“NameCheap Registrar”); and <turnersvilletoyota.com> registered with Above.com, Inc. (“Above.com Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 15, 2021. On June 15, 2021, the Center transmitted by email to the Registrars a request for registrar verification in connection with the disputed domain names. On June 15, 2021, NameCheap Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <toyota-lexus.parts> which differed from the named Respondent and contact information in the Complaint. On June 17, 2021, Victorynames Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <lexusoftoledo.com> which differed from the named Respondent and contact information in the Complaint. On June 18, 2021, Media Elite Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of <jimfalklexus.com> and providing the contact details. On June 22, 2021, Above Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name <turnersvilletoyota.com> which differed from the named Respondent and contact information in the Complaint.

The Center sent an email communication to the Complainant on June 22, 2021 providing the registrant and contact information disclosed by the Registrars, and requesting the Complainant to file an amended Complaint with relevant argument for the consolidation of Respondents or to file different Complaints for each Respondent. The Complainant filed an amendment to the Complaint on June 26, 2021. On June 30, 2021, the Center sent a communication to the Complainant informing that there appeared to be at least prima facie grounds sufficient to warrant accepting the Complaint for the Panel’s final determination of the consolidation request.

The Center verified that the Complaint, together with the amendment to 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 June 30, 2021. In accordance with the Rules, paragraph 5, the due date for Response was July 20, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 30, 2021.

The Center appointed Steven A. Maier as the sole panelist in this matter on August 2, 2021. 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. Consolidation of Proceedings

The Complainant brings these proceedings against four different named Respondents but asks that the proceedings be consolidated. As discussed in section 4.11.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):

“Where a complaint is filed against multiple respondents, panels look at whether (i) the domain names or corresponding websites are subject to common control, and (ii) the consolidation would be fair and equitable to all parties. Procedural efficiency would also underpin panel consideration of such a consolidation scenario.”

The Complainant relies principally on similarities in the websites to which the respective disputed domain names resolve and to commonalities between the underlying registrants as disclosed.

Having reviewed the Complainant’s submissions, the Panel finds that:

(a) the disputed domain name <jimfalklexus.com> has resolved at different times to a webpage offering what appear to be pay-per-click (“PPC”) links to car-related websites and a privacy policy; a page requesting that a Chrome plugin be downloaded; and a redirection to “www.volvocars.com”.

(b) the disputed domain name <lexusoftoledo.com> has resolved at various times to a webpage offering PPC links and a privacy policy which are similar to those linked to by <jimfalkuslexus.com>; and a redirection to “www.volvocars.com”.

(c) the disputed domain name <toyota-lexus.parts> has resolved to a webpage offering PPC links and a privacy policy which are similar to those linked to by <jimfalkuslexus.com>; and

(d) the disputed domain name <turnersvilletoyota.com> has resolved to a webpage requesting that a Chrome plugin be downloaded (which is similar, although not identical, to that in the case of <jimfalklexus.com>).

The Complainant also submits that each of the four underlying registrants has been the losing respondent in numerous previous proceedings under the UDRP. The Complainant refers to 78 such cases concerning the registrant of <jimfalklexus.com>, 93 such cases concerning the registrant of <lexusoftoledo.com>, eight such cases concerning the registrant of <toyota-lexus.parts> and 20 such cases concerning the registrant of <turnersvilletoyota.com>. The Complainant submits that all of the Respondents are therefore seasoned “cyber pirates” and are likely to be using a series of aliases to disguise any connection between them.

The Panel finds in the circumstances that the Complainant has made out a prima facie case that the four disputed domain names are subject to common control. None of the Respondents having disputed the Complainant’s submissions, or that consolidation would be fair and equitable to all Parties, the Panel directs that the proceedings be consolidated accordingly.

5. Factual Background

The Complainant is a wholly-owned subsidiary of Toyota Motor Corporation, a Japanese corporation (“Toyota”). The Complainant is the exclusive importer of Toyota motor vehicles throughout the majority of the United States.

The Complainant submits (without contradiction on the part of any Respondent) that it is the exclusive licensee in the United States of Toyota’s trademarks TOYOTA and LEXUS. Those trademarks include, for example:

- United States trademark number 843138 for the word mark TOYOTA, registered on January 30, 1968; and
- United States trademark number 1574718 for the word mark LEXUS, registered on January 2, 1990.

The disputed domain names were registered on the following dates:

<jimfalklexus.com> on June 29, 2013;
<lexusoftoledo.com> on February 19, 2021;
<toyota-lexus.parts> on December 11, 2020;
<turnersvilletoyota.com> on March 29, 2009.

The Complainant has provided evidence that each of the disputed domain names has been used in the manner described in section 4 above. The Complainant provides additional evidence that the disputed domain name <lexusoftoledo.com> has been offered for sale on “Sedo.com” for USD 9,888.

6. Parties’ Contentions

A. Complainant

The Complainant submits that Toyota is a global leader in the automotive field, manufacturing in 27 countries and selling in over 170 countries worldwide. It states that Toyota first used the trademark TOYOTA in the United States in 1958 and the trademark LEXUS in 1987. It submits that more than 26 million TOYOTA automobiles have been built in the United States and that as of 2004 over two million LEXUS vehicles had been sold in the United States. The Complainant provides evidence of the recognition of the TOYOTA mark as a valuable global brand.

The Complainant contends that new and certified used TOYOTA and LEXUS vehicles are sold in the United States through a network of authorized dealers who are permitted to use the marks for that purpose. The Complainant states that such dealerships typically combine the relevant trademark with the name of the dealership and/or the name of the relevant geographical area. The Complainant cites the following domain names as actual examples of the authorized use of these naming conventions:

<jimfalkbeverlyhillslexus.com>;
<jimwhitelexustoledo.com>, and
<toyotaofturnersville.com>.

The Complainant submits that the disputed domain names are confusingly similar to its TOYOTA or LEXUS trademarks. It states that three of the disputed domain names combine the mark TOYOTA with the name or geographical area associated with one of its authorized dealers and that the final disputed domain name merely combines the TOYOTA and LEXUS trademarks. The Complainant contends that the Respondent’s additions to their trademarks for the purpose of the disputed domain names increase the likelihood of confusion because the additions refer to the Complainant’s authorized dealerships.

The Complainant contends that the Respondents have no rights or legitimate interests in respect of the disputed domain names. The Complainant states that none of the Respondents have any affiliation with Toyota or the Complainant and none of them have been licensed or otherwise authorized to use the TOYOTA or LEXUS trademarks. The Complainant further submits that the Respondent’s uses of the disputed domain names, for the purpose of promoting PPC links, or to invite Internet users to download a Chrome extension, cannot amount to any bona fide use of those names for commercial purposes. The Complainant adds that certain of the PPC links in question refer to competitors of the Complainant.

The Complainant submits that the disputed domain names have been registered and are being used in bad faith. It contends that such is the strength and renown of the TOYOTA and LEXUS trademarks that it is impossible for any Respondent to claim it was unaware of those marks at the date of registration of the disputed domain names. It adds that the combination of its trademarks with the names and/or locations of its authorized dealers further illustrates the Respondent’s bad faith intent. The Complainant also cites as bad faith the Respondent’s use of the disputed domain names to resolve to PPC links including links to competing automobile manufactures. In respect of the disputed domain name <lexusoftoledo.com> the Complainant relies additionally on the Respondent’s offer to see the disputed domain name for USD 9,888, which it contends is a sum grossly in excess of its out-of-pocket costs of registration.

The Complainant requests the transfer of each of the disputed domain names.

B. Respondent

The Respondents did not reply to the Complainant’s contentions.

7. Discussion and Findings

In order to succeed in the Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:

(i) that the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and
(iii) that the disputed domain names have been registered and are being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established to the satisfaction of the Panel that it is the licensee in the United States of the trademarks TOYOTA and LEXUS. Three of the disputed domain names combine one or other of those trademarks with a personal or geographical name and the fourth consists of the two trademarks in question, together with the Top-Level Domain (“TLD”) “.parts”, which is typically to be ignored for the purpose of comparison. In each case, therefore, the Panel finds that one or more of the Complainant’s trademarks are recognizable within the disputed domain names and that the additional elements of the disputed domain names do not prevent a finding of confusing similarity. The Panel therefore finds that each of the disputed domain names is confusingly similar to a trademark in which the Complainant has rights.

B. Rights or Legitimate Interests

In the view of the Panel, the Complainant’s submissions set out above give rise to a prima facie case that the Respondents have no rights or legitimate interests in respect of the disputed domain names. However, none of the Respondents have filed a Response in this proceeding, provided any explanation for their registration and use of the disputed domain names, or submitted evidence of rights or legitimate interests in the disputed domain names, whether in the circumstances contemplated by paragraph 4(c) of the Policy or otherwise. The Panel therefore concludes that the Respondents have no rights or legitimate interests in respect of the disputed domain names.

C. Registered and Used in Bad Faith

The Panel finds that each of the three disputed domain names, <jimfalklexus.com>, <lexusoftoledo.com>, and <turnersvilletoyota.com> combines the Complainant’s LEXUS or TOYOTA trademark with a personal or geographical name and bears an obvious similarity to the Complainant’s authorized dealers’ domain names, <jimfalkbeverlyhillslexus.com>, <jimwhitelexustoledo.com>, and <toyotaofturnersville.com>. In the circumstances, the Panel infers that the Respondents were aware of the Complainant’s trademarks and authorized dealerships at the date of registration of the disputed domain names and registered the same with the intention of impersonating those dealerships and otherwise taking unfair advantage of the Complainant’s commercial goodwill.

The fourth disputed domain name, <toyota-lexus.parts> comprises an unadorned adoption of the Complainant’s two, related, trademarks together with the TLD “.parts”, which has obvious associations with the automotive field. In the view of the Panel, that disputed domain name is also inherently misleading as it must inevitably convey the impression to Internet users that it is owned, operated or otherwise affiliated with the Complainant as a resource for parts for the Complainant’s automobiles.

While the registration and use of inherently misleading domain names may be sufficient in itself to establish bad faith, the Panel also finds that three of the disputed domain names have been used for the purpose of websites containing PPC links, including those which promote the Complainant’s competitors and which must be assumed to provide a commercial benefit for the Respondents. The Panel finds therefore that, by using those disputed domain names, the Respondents have intentionally attempted to attract, for commercial gain, Internet users to their websites by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of their websites or of products or services on their websites (paragraph 4(b)(iv) of the Policy).

In connection with the disputed domain name <lexusoftoledo.com>, the Panel further accepts the Complainant’s submission that the name has been offered for sale for a sum likely to be in excess of the relevant Respondent’s our-of-pocket costs of registration. Since the disputed domain name implies a legitimate connection with one of the Complainant’s authorized dealerships, the Panel infers that the Respondent intended to sell the relevant disputed domain name to the Complainant or its relevant licensee (paragraph 4(b)(i) of the Policy).

While the disputed domain name <turnersvilletoyota.com> appears to have resolved only to a website offering a Chrome extension, this does nothing to counter the inherently misleading nature of that name. Furthermore, while the purpose and effect of that download is unclear, it is clearly unconnected with the Complainant and its genuine business and can only be assumed to represent a further instance of the relevant Respondent taking unfair advantage of the Complainant’s goodwill.

In these circumstances, the Panel finds that all four of the disputed domain names have been registered and are being used in bad faith.

8. 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 <jimfalklexus.com>, <lexusoftoledo.com>, <toyota-lexus.parts>, and <turnersvilletoyota.com>, be transferred to the Complainant.

Steven A. Maier
Sole Panelist
Date: August 13, 2021