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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Toyota Motor Sales, U.S.A., Inc. v. Antonio R. Diaz, d.b.a. Dnamesforsale.com
Case No. D2001-1133
1. The Parties
1.1 The Complainant is Toyota Motor Sales, U.S.A., Inc., a corporation organized under the laws of the State of California, United States of America, having its principal place of business at 19001 South Western Avenue, Torrance, California, United States of America.
1.2 The Respondent is Antonio R. Diaz, doing business as Dnamesforsale.com, giving an address at 2735 N. Clark Street #143, Chicago Illinois, United States of America.
2. The Domain Name and Registrar
The domain name at issue is <toyotaenespanol.com>, which domain name is registered with Network Solutions, Inc., based in Herndon, Virginia, United States of America ("NSI").
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on September 17, 2001, and the signed original together with four copies was received on September 19, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated September 19, 2001.
3.2 On September 20, 2001, a Request for Registrar Verification was transmitted to the registrar, NSI, requesting it to: (1) confirm that the domain name at in issue is registered with NSI; (2) confirm that the person identified as the Respondent is the current registrant of the domain name; (3) provide the full contact details (i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)) available in the registrar’s Whois database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain name.
3.3 On September 25, 2001, NSI confirmed by reply e-mail that the domain name is registered with NSI, is currently in active status, and that the Respondent Dnamesforsale.com is the current registrant of the name, and that the Administrative and Billing Contact is Antonio R. Diaz. The registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and the Supplemental Rules. The required fees for a sole Panelist were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on September 25, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of October 15, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail to the e-mail addresses indicated in the Complaint and specified in NSI’s confirmation. In addition, the Complaint was sent by express courier to the postal address given. Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.6 On October 21, 2001, not having received any Response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.7 On October 25, 2001, in view of the Complainant's designation of a single Panelist, the WIPO Center appointed M. Scott Donahey to serve as sole Panelist.
4. Factual Background
4.1 Complainant's ultimate corporate parent, Toyota Motor Corporation, registered the trademark TOYOTA in connection with automobiles and motor trucks with the United States Patent Office ("USPTO") on January 30, 1968, and has subsequently registered the mark in connection with numerous other goods and services connected to the automotive industry. Complaint, Annex C. Complainant is authorized to use the TOYOTA mark in the United States.
4.2 Complainant has used the TOYOTA mark in the Spanish-speaking community in the United States and elsewhere and provides a Spanish version of its web site at www.toyota.com/espanol.
4.3 Complainant has, over a period of some forty-plus years, expended substantial sums of money advertising and promoting its goods and services under the TOYOTA mark, and since 1958, Complainant has sold automotive related goods, receipts for which have been in excess of Ninety Billion U.S. Dollars.
4.4 On February 28, 2000, Respondent Dnamesforsale.com registered the domain name <toyotaenespanol.com> showing the Respondent Antonio R. Diaz as Administrative and Billing Contact. Complaint, Annex A.
4.5 To date, Respondent has not used the domain name to develop a web site. Complaint, Annex E.
4.6 Respondent has in the past registered numerous trademarks and service marks and appended "enespanol" (a Spanish language phrase, meaning "in Spanish") to the marks and then registered the combined terms as domain names. See, America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460, attached as Annex F to the Complaint.
4.7 Complainant has sent Respondent two letters requesting transfer of the domain name at issue. Respondent did not respond to the requests. Complaint, Annex G.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered a domain name which is identical confusingly similar to the trademarks and service marks registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issue, and that Respondent has registered and is using the domain name at issue in bad faith.
5.2 Respondent has not contested the allegations of the Complaint.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules, and any rules and principles of law that it deems applicable."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain name; and,
3) that the domain name has been registered and is being used in bad faith.
6.4 It is clear that the domain name at issue is either confusingly similar or identical to the trademarks and service marks in which the Complainant has rights and that the addition of a descriptive phrase does not alter this fact. America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
6.5 Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the domain name at issue. Alcoholics Anonymous World Services, Inc. v. Raymond, WIPO Case No. D2000-0007; Bronson Plc v. Unimetal Sanayai ve Tic. A.S., WIPO Case No. D2000-0011. Thus, the Panel may infer that Respondent has no rights or legitimate interests in respect of the domain name at issue.
6.6 Complainant has presented evidence that Respondent has engaged in a pattern of adding "enespanol" to recognized registered trademarks and registering the resulting strings as domain names. This has occurred on at least 30 occasions. America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.
6.7 The Panel believes that such conduct effectively constitutes the bad faith registration and use set out in Paragraph, 4(b)(ii) of the Policy.
6.8 Moreover the name was registered by a registrant designated "Dnamesforsale.com." This constitutes an offer to sell the domain name at issue and is evidence of bad faith registration and use under paragraph 4(b)(i) of the Policy. Microsoft Corporation v. Amit Mehrotra, WIPO Case No. D2000-0053.
For all of the foregoing reasons, the Panel decides that the domain name registered by Respondent is identical or confusingly similar to the trademarks and service marks in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name at issue, and that the Respondent's domain name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <toyotaenespanol.com> be transferred to the Complainant.
M. Scott Donahey
Dated: November 7, 2001