toyota.com.mx (Mexico) - Transferencia del Dominio - 20 de Diciembre 2001
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation; Toyota Motor Sales, U.S.A., Inc. and Toyota Motor Sales De Mexico, S. De R.L. de C.V. v. Salvador Cobian
Case No. DMX2001-0006
1. The Parties
The Complainants are: 1. Toyota Jidosha Kabushiki Kaisha (a Japanese Corporation) d/b/a Toyota Motor Corporation located and doing business at 1, Toyota-cho, Toyota-shi, Aichi-ken, Japan; 2. Toyota Motor Sales, U.S.A., Inc. (a California corporation) located and doing business at 19001 South Western Avenue, Torrance, California 90509-2991, U.S.A.; and 3. Toyota Motor Sales de Mexico, S. de R.L. de C.V. (a corporation of Mexico) located and doing business at Paseo de los Tamarindos, 400B Piso 7, Col. Bosques de las Lomas, 05120 Mexico D. F.
The Complainants are represented by Eric T. Fingerhut, Esq., Shaw Pittman, 1650 Tysons Boulevard, McLean, Virginia 22102, U.S.A.
The Respondent is Salvador Cobian, an individual whose address is 11990 Jasmine Place, Fontana, California 92337, U.S.A.
2. The Domain Name and Registrar
The domain name in dispute is <toyota.com.mx>. The registrar for the disputed domain name is NIC-Mexico.
3. Procedural History
This dispute is to be resolved in accordance with the NIC-Mexico Policy for Domain Name Dispute Resolution (the Policy--"Politica de solución de controversias en materia de nombres de dominio para .MX") and the Rules (the Rules-"Reglamento del procedimiento administrativo relativo al registro abusivo de nombres de dominio en .MX") approved by NIC-Mexico on December 1, 2000.
The Complaint was filed on November 2, 2001, in hard copy. On November 5, 2001, the Center requested that Registrar NIC-Mexico check and report back on the registrant for the domain name <toyota.com.mx>. On November 5, 2001, NIC-Mexico reported to the Center that the registrant was the Respondent Salvador Cobian, that the domain name was "active", and that the Policy applied to the registration agreement.
On November 6, 2001, the Center informed the Complainants that they had misnamed the Respondent in their Complaint: the Complainants then submitted an amended Complaint on November 7, 2001, naming as Respondent Salvador Cobian per the NIC-Mexico database.
On November 7, 2001, the Center forwarded a copy of the Complaint to Respondent by registered mail and by e-mail and this proceeding officially began. The Respondent did not file a Response within 20 days per the Rules Art. 8, and on December 3, 2001, was declared in default. In accord with the Rules Art. 20, the Panel will proceed to a decision based on the Complaint alone.
The Administrative Panel submitted a Declaration of Impartiality and Independence on December 6, 2001, and the Center proceeded to appoint the Panel on December 7, 2001.
On December 17-19, 2001, in accordance with the Rules Art. 21, the Panel issued Procedural Order No.1 in this proceeding declaring the first stage, in which the parties submit filings, to be closed.
The Panel finds the Center has adhered to the NIC-Mexico Policy and Rules in administering this Case.
This Decision is due by December 24, 2001.
4. Factual Background
The Complainants import and distribute motor vehicles in the United States and Mexico. Complainant Toyota Motor Corporation has used the name and mark Toyota since at least 1958 throughout most of the world.
Complainant Toyota Motor Sales, U.S.A., Inc. is a wholly owned subsidiary of Toyota Motor Corporation and is the exclusive importer and distributor of Toyota automobiles throughout the United States (except the State of Hawaii), Puerto Rico and Mexico.
Complainant Toyota Motor Sales de Mexico, S. de R.L. de C.V. is a wholly-owned subsidiary of Toyota Motor Sales, U.S.A., Inc. and is the authorized distributor of Toyota-brand motor vehicles in Mexico.
The Respondent is an individual whose professional activities are unknown. The Respondent registered the disputed domain name, <toyota.com.mx>, with NIC-Mexico on February 11, 1999 (Complaint Appendix B). On July 2, 2001, the Complainants mailed the Respondent a cease and desist letter alleging infringement of the Complainants' Toyota mark. The Complainants also sent the Respondent an e-mail to this effect on September 16, 2001(Complaint Appendix H).
The Respondent never replied to the Complainants' letters, and the Complainants now seek to take possession of the disputed domain name in this proceeding.
5. The Parties' Contentions
Complainants' Summarized Contentions:
- The Complainants are the owners of numerous United States Registrations of the mark Toyota covering a wide variety of goods and services (Complaint Appendix D).
- Complainant Toyota Motor Corporation is the owner of Mexican Registrations of the mark Toyota, covering a wide variety of goods and services (Complaint Appendix E).
- Complainant Toyota Motor Sales, U.S.A., Inc. serves the Spanish-speaking community and provides a Spanish version of its website at <toyota.com/espanol>.
- The domain name, <toyota.com.mx>, registered by Respondent, is identical and confusingly similar to Complainants' mark Toyota. Respondent's use of the Toyota mark in the domain name at issue erroneously leads Complainants' customers to believe it is associated with or sponsored by Complainants.
- Respondent has no rights or legitimate interests in the domain name <toyota.com.mx>. Respondent is neither an authorized dealer nor distributor of Toyota automobiles, nor has he been licensed by Complainants to use the mark Toyota.
- To the best of Complainants' knowledge, Respondent has not made any demonstrable preparations to use the domain name <toyota.com.mx> or the mark Toyota other than registering the domain name more than two years ago on February 11, 1999. The domain name does not resolve to an active website and is not linked to any active servers (ICANN/WIPO Mondich and American Vintage Wine Biscuits, Inc. v. Brown d/b/a Big Daddy's Antiques, D2000-0004, February 16, 2000).
- Respondent is not commonly known by the <toyota.com.mx> domain name and has no basis to claim that he is making a noncommercial or fair use of the domain name.
- Respondent's registration and use of the domain name <toyota.com.mx> in bad faith is further evidence of Respondent's knowledge of Complainants' rights in the mark Toyota and his willful disregard of these rights. For example, Respondent has failed to respond to Complainants' cease-and-desist letter of July 2, 2001, and follow-up email dated September 16, 2001 (Complaint Appendix H).
- Respondent is preventing Complainants from using the domain name that incorporates their famous and well-known mark Toyota in the commercial portion of Mexico's .MX country code top level domain. In this regard, Respondent's actions have unduly interfered with and disrupted Complainants' ability to promote their own products and services.
- The significant goodwill and value of the mark Toyota is understood by Respondent and undoubtedly is what prompted his registration of the domain name. Given the international fame of the mark Toyota, it is difficult to imagine that Respondent's motive in registering the domain name was other than to sell or transfer the domain name to Complainants for valuable consideration in excess of the Respondent's out-of-pocket costs.
- Whatever Respondent's motive in registering the domain name, it is clear that the registration intentionally trades off the significant good will and value in the mark Toyota, and can be used to divert traffic intended for Complainants.
- Respondent's conduct also prevents Complainants from promoting their own products and services directly to Mexican consumers. The result is that Internet traffic intended for Complainants will be diverted to Respondent. Respondent's use of the domain name <toyota.com.mx> clearly creates a likelihood of confusion with Complainants' mark. Since Respondent is not licensed to use the mark Toyota in this manner, Complainants are harmed because their valuable trademark and reputation are being placed in the hands of Respondent, over whom they have no control. The public is harmed because it is likely to be confused as to the source of any web page located at <toyota.com.mx>.
- The disputed domain name, <toyota.com.mx>, should be transferred to Complainants.
The Respondent is in default in this proceeding and thus did not file any contentions.
6. Discussion and Findings
In order for Complainants to prevail and have the disputed domain name, <toyota.com.mx>, transferred to them, the Complainants must prove the following (the Policy, para 1.a.(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
Identical or Confusingly Similar
The Complainants have exhibited several exemplary copies of their "Toyota" trademark registrations in the United States and Mexico. In the United States, there are principal registry registrations no. 843,138 dated January 30, 1968, for automobiles and trucks, and no. 1,274,261 dated April 17, 1984, for automobiles, motor trucks and forklift trucks (Complaint Appendix D). In Mexico, the Complainants have registered mark no. 501386 on August 28, 1995, for vehicles and sea-air-land locomotion apparatus, and no. 479109 dated November 10, 1994, for lighting, heating, and steam generating apparatus (Complaint Appendix E). The domain level indicator <.com> and the country indicator <.mx> are not significant for determining mark similarity or identically.
In registering the disputed domain name, <toyota.com.mx>, the Respondent has appropriated the Complainants' mark as is. The Panel finds the disputed domain name is identical to the Complainants' mark and that the Complainants have met their burden of proof under this section of the Policy.
Legitimate Rights or Interests
The Complainants contend the Respondent is in no way authorized to use their Toyota mark. The Respondent is in default in this proceeding and thus has not attempted to show the Panel any legitimate rights or interests per the Policy at 1.c.(i-iii)
The Panel finds the Respondent has no legitimate rights or interests in the disputed domain name.
Registered and Used in Bad Faith
The Respondent in this proceeding has been silent both before and during this proceeding. It is thus not easy to discern what the Respondent had in mind when he registered the disputed domain name on February 11, 1999. However, the Panel agrees with the Complainants that from that date to the present is ample time for the Respondent to have made some use of the disputed domain name if he ever had any purpose in mind. The Panel also agrees with the Complainants that the Respondent can not have been unaware of the Complainants' good will in the Toyota mark, such is the strength and fame of the mark.
Hence, the Panel finds the Respondent's lengthy passive holding of the domain name containing the Complainant's famous mark to be registration and use in bad faith. (ICANN/WIPO Case No. D2000-0004, Mondich and American Vintage Wine Biscuits, Inc. v. Brown d/b/a Big Daddy's Antiques, February 16, 2000; ICANN/WIPO Case No. D2000-0003, Telstra Corporation Limited v. Nuclear Marshmallows, February 18, 2000).
Also, the Panel finds that the Complainants' Toyota mark belongs to the class of famous mark where the very act of unauthorized domain name registration constitutes registration and use in bad faith. The worldwide strength of the Complainants' mark is such that the Panel does not believe Respondent could possibly have been in good faith when he registered and held on to the disputed domain name (ICANN/WIPO Case No. D2000-0163 Veuve Clicquot Ponsardin v. The Polygenix Group, Co., May 1, 2000).
The Panel is aware that neither of the above bad faith grounds is specifically provided for in the Policy. However, the Rules Art. 23 allow the Panel to base its decision on legal grounds other than the Policy and the Rules where the Panel finds this appropriate.
The Panel finds the Respondent registered a domain name, <toyota.com.mx>, identical to the Complainants' famous Toyota mark. The Respondent is in default in this proceeding and thus made no attempt to demonstrate legitimate rights and interests in the domain name. The Panel further finds the Respondent registered and is using the domain name in bad faith because: 1. The Respondent has been holding the domain name for over two years without making any use of it; and 2. The fame and strength of the Complainants' mark is such that almost any unauthorized use of the mark as a mark is likely to be in bad faith.
Therefore, pursuant to the Policy 1.f., the Panel orders that the disputed domain name, <toyota.com.mx>, be transferred from the Respondent, Salvador Cobian, to the Complainants, Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation; Toyota Motor Sales, U.S.A., Inc. and Toyota Motor Sales de Mexico, S. de R.L.de C.V.
Dennis A. Foster
Dated: December 20, 2001