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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Toyota Motor Sales, U.S.A., Inc. v. John Zuccarini, Cupcake Patrol

Case No: D2002-0951

 

1. The Parties

The Complainant is Toyota Motor Sales, U.S.A., Inc., Torrance, California 90509-2991, United States of America, represented by Shaw Pittman LLP of United States of America.

The Respondent is John Zuccarini, Cupcake Patrol, Nassau, N.P., Bahamas.

 

2. The Domain Name and Registrar

The disputed domain name<toyoto.com> is registered with CSL Computer Service Langenbach GmbH dba Joker.com, Duesseldorf, Germany.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 15, 2002, at which date the Center transmitted by email to CSL Computer Service Langenbach GmbH dba Joker.com a request for registrar verification in connection with the domain name at issue.

On October 17, 2002, CSL Computer Service Langenbach GmbH dba Joker.com verified that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact.

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on October 18, 2002. The Complaint notification was sent to the Respondent in accordance with the prescribed measures in the Rules, paragraphs 2(a), via e-mail and registered mail to the contact addresses shown in the disputed domain names registration data in the Registrars Whois database.

In accordance with the Rules, paragraph 5(a), the due date for Response was November 7, 2002. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 8, 2002.

On November 8, 2002, the Respondent, via e-mail, contacted the Center stating he had not received the Complaint or any of its appendixes or any information whatsoever before the notification of Respondents default. On November 12, 2002, the Center confirmed that they had indeed notified the Respondent in accordance with the Rules to the correct e-mail address and the registered postal address and also resent the Complaint to the Respondents e-mail address.

On November 12, 2002, the Respondent, via e-mail, confirmed that he had received the Complaint "for the first time". Furthermore the Respondent on November 13, 2002, via e-mail, alleged that the Complainant had breached the Centers regulation by providing the Complaint in Adobe PDF-format instead of MS Word format and also alleged that this was a deliberate action to make it impossible for him to receive the Complaint as the large filesize would not be accepted by his mail account. The Respondent furthermore demanded that he should receive another 20 days to answer the Complaint.

On November 14, 2002, the Complainant commented on the Respondents communications.

The Center appointed Anders Janson as the sole panelist in this matter on November 19, 2002. 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.

The Panel independently determines and agrees with the assessment of the Center that the Complaint is in formal compliance with the applicable requirements. The Center has issued a notification of Complaint in accordance with the prescribed measures in the Rules, paragraphs 2(a), via e-mail and registered mail to the contact addresses shown in the disputed domain names registration data in the Registrars Whois database having performed this is an acceptable measure to notify a Respondent according to the Rules, which the Respondent has agreed to follow when registering the disputed domain name. Though these facts alone are enough to constitute a correct commencement of the proceedings the Panel would like to mention the following facts; The Respondent would be aware of any e-mail messages bouncing due to their size as notices of such e-mails are normally forwarded to the owner of the e-mail account with a message containing the sender of the refused e-mail and the subject line. Furthermore there is no obligation under the Rules to file a complaint in a Word-file format but merely a guideline. As long as the format used is a format easily accessible to the Respondent it is acceptable. Whether this format actually is Word, PDF, plain ascii text or other commonly used formats is not relevant. It is furthermore a fact that the Respondent has refused to accept the delivery of a letter from the Complainant sent via FedEx before the proceedings began. In all it is this Panels opinion that the Respondent seem to have actively avoided communication regarding the disputed domain name.

In conclusion no exceptional circumstances, which would enable the Panel to prolong the time span for the Respondent to produce a Response in accordance to the Rules, exist. As the Response from the Respondent was issued too late the Respondent is to be considered in Default. The Panel however takes arbitral notice, where applicable, of the Respondent contentions.

The Center transmitted to the parties on November 19, 2002, a Notification of Appointment of Panel and Projected Decision Date as of December 3, 2002. The Panel finds that it was properly constituted and appointed in accordance with the Policy, the Rules and the WIPO Supplemental Rules.

 

4. Factual Background

The Complainant asserted, and provided evidence in support of, the following facts, which the Panel finds established:

Complainant is 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 except the State of Hawaii. Complainant is the owner of the domain name <toyota.com>. An existing Importer Agreement grants Complainant this right of distribution and also grants it a License to use Toyota’s trademarks, including the mark TOYOTA, in the distribution territory. Complainant has continuously used the name and mark TOYOTA in the United States since 1958.

Complainant has the right to use the name and mark TOYOTA in the United States and Complainant’s corporate parent is the owner of the following subsisting United States Registrations of the mark TOYOTA, covering a wide variety of goods and services:

Registration No. 843,138 of the mark TOYOTA, for automobiles and motor trucks, which issued January 30, 1968, and has been duly renewed;

Registration No. 1,274,261 of the mark TOYOTA, for automobiles, motor trucks, forklift trucks, towing tractors, and structural parts for said goods, which issued April 17, 1984, and has been duly renewed;

Registration No. 1,338,339 of the mark TOYOTA, for financing the purchases of vehicles by others, which issued May 28, 1985, and has been duly renewed;

Registration No. 1,589,552 of the mark TOYOTA, for brake fluid and transmission fluid for use in motor vehicles, and lubricating oils and lubricating greases for use in motor vehicles, which issued April 3, 1990, and has been duly renewed;

Registration No. 1,698,252 of the mark TOYOTA, for engine coolant and engine antifreeze for use in motor vehicles, which issued June 30, 1992;

Registration No. 1,72 1,365 of the mark TOYOTA, for a wide variety of automotive structural parts, automotive accessories and other products, which issued October 6, 1992; and

Registration No. 1,888,870 of the mark TOYOTA, for repair and maintenance services for automotive vehicles, which issued April 11, 1995.

The Panel notes that the registration dates of all of the above referenced registrations predate the date of registration of the Domain Name by the Respondent.

The Respondent is an individual with a stated contact address in Bahamas, operating under the name Cupcake Patrol.

The disputed Domain Name <toyoto.com> was registered by the Respondent with the Core Internet Council of Registrars, on May 3, 2000. On May 4, 2002, Respondent renewed its registration of the disputed domain name with the CSL Computer Service Langenbach GmbH dba Joker.com.

The disputed Domain Name is connected to a website called <yes-yes-yes.com> which contains a large amount of links to several other sites including MP3 downloading software, online gambling sites etc. The website also includes popup-windows which automatically opens up new browser windows with links to MP3 downloading sites and a site advertising prescription drugs.

The Panel takes arbitral notice of the multiple successful proceedings initiated against Respondent and his related companies in the past, under the Policy. See inter alia, Encyclopedia Britannica Inc. v. Zuccarini, WIPO Case No. D2000-0330 (June 7, 2000); Spiegel Catalog, Inc. v. Zuccarini, eResolution Case No. AF-0237 a-d (July 28, 2000); Diageo P.L.C. v. Zuccarini, WIPO Case No. D2000-0541 (August 22, 2000); Dow Jones & Co., Inc. v. Zuccarini, WIPO Case No. D2000-0578 (August 28, 2000); Yahoo!, Inc. v. Cupcake Patrol, WIPO Case No. D2000-0928 (Sept. 29, 2000); Shields v. Zuccarini, 89 F. Supp. 2d 634 (E.D. Pa. 2000); Electronics Boutique Holdings v. Zuccarini, 2000 WL 1622760 (E.D. Pa. Oct. 30, 2000); Abercrombie & Fitch Stores, Inc. v. Zuccarini, WIPO Case No. D2000-1004 (November 1, 2000); Minolta Co. v. Cupcake City, Case No. D2000-1291 (January 18, 2001); Kidman v. Zuccarini, WIPO Case No. D2000-1415 (January 23, 2001), AT&T Corp. v. John Zuccarini d/b/a Music Wave and RaveClub Berlin, WIPO Case No. D2002-0440 (August 28, 2002).

 

5. Parties’ Contentions

A. Complainant

Complainant contends that:

- the Domain Name is identical and confusingly similar to a trademark or service mark in which the Complainant has 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; and
- the Domain Name <toyoto.com> should be transferred to the Complainant.

B. Respondent

Respondent has not submitted any viable Response and is to be considered in Default.

 

6. Discussion and Findings

Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:

(i) 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

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the domain name has been registered and is being used in bad faith."

A. Identical or Confusingly Similar

The domain name at issue is <toyoto.com>. Complainant is the holder of several registered trademarks of the word "TOYOTA". The Complainant has provided statements to support the supposition that the disputed domain name and the name and marks of the Complainant are confusingly similar. The Respondent does not contest this supposition.

The fact that the disputed domain name includes a misspelling of the registered trademark does not necessarily mean that it is confusingly similar to the trademark. In this case however, the Panel regards it obvious that the disputed domain name and trademark, which differ in only one letter, is confusingly similar both visually and phonetically. This is particularly the case regarding such a famous and well-known trademark as "TOYOTA". The Panel therefore holds that the Complainant has established element (i) of the Policy's Paragraph 4(a).

B. Rights or Legitimate Interests

As mentioned above the Respondent has not filed a Response in accordance with the Rules, Paragraph 5. In those circumstances when Respondent clearly has no obvious connection with the disputed domain name the mere assertion from Complainant that the Respondent has no right or legitimate interest is enough to shift the burden of proof to the Respondent to demonstrate that such a right or legitimate interest exists.

Though the Respondent has not filed a viable Response in accordance with the Rules he has claimed that the disputed domain name is a generic term, but not further elaborated in what way or in what language the disputed domain name would constitute a generic term. To the Panels knowledge the disputed domain name is not a generic term. Even if this were the case there is still no discernable right or legitimate interest for the Respondent to the disputed domain name. Indeed the web-sites connected to the disputed domain name does not in any way identify any product, person or service or any other obvious connection to the disputed domain name.

In conclusion the Respondent has not presented any evidence of rights or legitimate interests in using the disputed Domain Name and has no obvious connection to it. The Panel therefore holds that the Complainant has established element (ii) of the Policy's Paragraph 4(a).

C. Registered and Used in Bad Faith

Finally the Panel has to consider the question of the disputed Domain Name having been registered and used in "bad faith".

Paragraph 4(b) states four (non-exclusive) circumstances which, if found to be present, are deemed to provide evidence of bad faith in registering and using the Domain Name. Paragraph 4(b)(iv) states that a circumstance indicating bad faith is using of a domain to intentionally attempt to attract, for commercial gain, internet users by creating a likelihood of confusion with complainants mark.

The Respondent is the registered owner of several hundred domain names, the majority of which is typos of various more or less famous trademarks, movie titles, game titles or generic word. The Respondent is obvious engaged in what has been named "typosquatting" a practice that in similar cases under the Policy has been considered registered and used in bad faith especially if the websites connected to the disputed domain is used for advertising or other commercial means (inter alia Time Warner Entertainment Company LP and Hanna-Barbera Productions Inc v. John Zuccarini, Cupcake Patrol, WIPO Case No. D2001-0184; Autosales Inc dba Summit Racing Equipment v. John Zuccarini dba Cupcake Patrol, WIPO Case No. D2001-0230; General Electric Company v. Fisher Zvieli, a/k/a Zvieli Fisher, WIPO Case No. D2000-0377).

Furthermore the Respondent has not presented any viable reasons or evidence or arguments of a legitimate interest in using the disputed Domain Name. It is not possible to conceive an obvious reason in which the Respondent could legitimately use the domain name.

The Panel therefore concludes that the Complainant has proved that the Respondent was acting in bad faith pursuant to Paragraph 4(a)(iii) of the Policy.

 

7. Decision

In view of the circumstances and facts discussed above, the Panel decides that the disputed domain name is identical and confusingly similar to the registered trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name, and that the domain name has been registered and is being used in bad faith.

Consequently the Panel decides that the Domain Name <toyoto.com> shall be transferred to the Complainant.

 


 

Anders Janson
Sole Panelist

Date: December 3, 2002

 

Источник информации: https://internet-law.ru/intlaw/udrp/2002/d2002-0951.html

 

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