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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corporation v. Atma Estate

Case No. D2006-1231

 

1. The Parties

The Complainant is Toyota Jidosha Kabushiki Kaisha a/k/a Toyota Motor Corporation, of Aichi-ken, Japan, represented by Doubinsky & Osharova Patent and Law Agency, Ukraine.

The Respondent is Atma Estate, Geroev Stalingrada, of Dnepropetrovsk, Ukraine, represented by Mr. Vladimir Gavryushin.

 

2. The Domain Name and Registrar

The disputed domain name at issue is <lexus-ukraine.com>. The domain name is registered with CSL Computer Service Langenbach GmbH dba Joker.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 25, 2006. On September 28, 2006, 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 September 28, 2006, CSL Computer Service Langenbach GmbH dba Joker.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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(a) and 4(a), the Center formally notified Respondent of the commencement of this proceeding on October 19, 2006.

On November 8, 2006, Respondent submitted its timely Response to the Complaint by e-mail; the hard copy Response was received on November 10, 2006.

On December 13, 2006, after clearing for potential conflicts, the Center appointed Miguel B. O’Farrell, Irina V. Savelieva and Ana Marнa Pacуn as panelists in this matter. The Panel finds that it was properly constituted. Each member of 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.

On December 20, 2006, Respondent filed supplemental information by which it informed the Center that it had filed in a Ukrainian court, a civil action objecting to Mr. Doubinsky’s power of attorney to act on behalf of Toyota Motor Corporation (Complainant).

Respondent alleges that the attorney who signed the Complaint on behalf of Complainant can not be considered as an authorized representative since his Power of Attorney (granted to Mr. Michael Doubinsky in Ukraine by the Latvian Agency Tria Robit) according to Respondent does not fulfill Ukrainian legislative requirements.

The Panel notes Respondent’s contention that it has submitted this question to a court in Ukraine. Neither the Policy nor the Rules contain express provisions to be complied with regarding Powers of Attorney. For the purpose of the present case this Panel does not find any reason to doubt that Mr. Doubinsky is, as he represents, the authorized representative of Complainant in the current proceedings.

 

4. Factual Background

Complainant is a global leader in the development and manufacturing of a variety of vehicles, including luxury passenger vehicles. Complainant’s luxury vehicles are marketed under the LEXUS mark. LEXUS & Design is a registered trademark in various countries, including Ukraine since March 15, 1994. Likewise, Complainant is the owner of several trademarks which contain the name “Lexus” registered in Ukraine since December 15, 2002 (Lexus LX470, Lexus LS400, Lexus LS430, Lexus GS300, Lexus GS430, Lexus RX300, Lexus IS200).

According to a printout of the WHOIS database of June 23, 2006, the disputed domain name <lexus-ukraine.com> has been registered initially on behalf of the company Reactor on September 22, 2004. It appears that the disputed domain name was subsequently transferred from Reactor to Atma Estate, both residents in Dnepropetrovsk, Ukraine.

The Registrar has in its email to the Center of September 28, 2006, confirmed the actual registrant of the disputed domain name as Atma Estate.

On the website “www.lexus-ukraine.com”, which is in the Ukranian language, there appears to be a statement to the effect that an entity named Art Motors is an official importer of LEXUS vehicles in Ukraine.

 

5. Parties’ Contentions

A. Complainant

Complainant alleges that:

Respondent’s registration and Art Motors’ use of the domain name <lexus-ukraine.com> violates Complainant’s rights in the well-known registered trademark LEXUS.

The domain name <lexus-ukraine.com> is confusingly similar to and incorporates an unauthorized use of the well-known LEXUS trademark, and that the only difference between its trademark and the domain name at issue is the addition of the word “Ukraine” which consists in a geographical name which is not sufficient to prevent the possibility of confusion with the LEXUS trademark.

Neither Respondent nor Art Motors have rights or legitimate interest in the domain name. Neither of them have trademark rights or any kind of authorizations to use the trademark LEXUS. In addition, Respondent has not been commonly known by the domain name. Neither Respondent nor Art Motors are official distributors of Lexus vehicles.

Complainant contends that the disputed domain name has been registered and is being used in bad faith. In support of this assertion, Complainant argues that the domain name is not used directly by the Respondent, but by an entity called Art Motors, a seller of Lexus vehicles. Therefore it may be assumed that the disputed domain name was created for renting purposes.

Moreover, Complainant contends that the use of the disputed domain name by Art Motors is an intentional attempt to attract Internet users to the website “www.lexus-ukraine.com” for commercial gain, by creating a likelihood of confusion as to affiliation and/or endorsement with Complainant and its mark. The fact that Art Motors makes the false statement that they are official importers of Lexus vehicles in Ukraine reinforces the idea that the domain name is being used in bad faith.

Complainant contends that the domain name was initially registered by a company named Reactor. Complainant sent a cease and desist letter to both Reactor and Art Motors. While Art Motors rejected the letter, Reactor sent no response. However, the domain name registrant was changed from Reactor to the current Respondent and from the registrar from Arsys Internet, S.L. d/b/a Nicline.com to Computer Services Langenbach GMBH d/b/a Joker.com.

Finally, Complainant requests that the domain name <lexus-ukraine.com> be transferred to Complainant.

B. Respondent

In defense of its registration of the domain name, Respondent alleges that:

The attorney who signed Complaint on behalf of Complainant can not be considered as an authorized representative since its Power of Attorney (granted in Ukraine) does not fulfill requirements under Ukranian legislation.

Neither Respondent nor Art Motors violate Complainant’s trademark rights. The domain name is neither identical nor confusingly similar to Complainant’s rights since Complainant’s trademarks reproduce the stylised symbol “L”, which is not presented in the disputed domain name. The word “ukraine” in the domain name is not the second part of it because the domain name is only one word “lexus-ukraine”.

Complainant did not prove the international registration of the trademark LEXUS according to the Madrid Agreement.

The Complainant did not prove that Art Motors has no rights to trade in Lexus vehicles. In other words, the trade in Lexus vehicles by Art Motors cannot be considered as a violation of Complainant’s rights.

Respondent contends that it does not rent the domain name and obtains no profit from it.

Respondent submits that Complainant did not prove that Respondent has no rights or legitimate interest in the domain name.

Respondent states that it does not trade in Lexus goods.

Respondent submits that the statement on the website that Art Motors is an official importer of Lexus cars indicates that the vehicles showed on the website are officially imported Lexus cars by Art Motors.

Respondent states that it never offered the domain name for sale and is not a competitor of Complainant.

The website does not in Respondent’s view mislead Internet users. On the contrary, it offers the possibility to better recognize the Lexus product line and helps to promote Complainant’s goods in Ukraine.

 

6. Discussion and Findings

In order to succeed in its claim, Complainant must demonstrate that all of the elements listed in Paragraph 4(a) of the Policy have been satisfied:

(i) The disputed domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) The disputed domain name has been registered and is being used in bad faith.

In accordance with paragraph 15(a) of the Rules, the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

Complainant has proved that it is the owner of the trademark LEXUS in many countries around the world, including Ukraine, and that its rights predate Respondent’s registration of the disputed domain name.

It is evident that under the Policy the trademark LEXUS is confusingly similar to the domain name <lexus-ukraine.com>. The mere addition of the geographical term “Ukraine” and a hyphen to the LEXUS mark does not grant distinctiveness to the domain name in the present case. See Nike, Inc. v. Jaeik Jung, WIPO Case No. D2000-1471; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd) v. Jongchan Kim, WIPO Case No. D2003-0400; Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd) v. Baroli, S.L., WIPO Case No. D2005-0365. The consumer is likely to think that the contested domain name constitutes a variation of the trademark LEXUS owned by Complainant, which does business and has a base in Ukraine.

Therefore, the Panel finds that Complainant has proved the first element required in paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

As a preliminary matter, while the precise nature of any dealings between Atma Estate and Art Motors remains unclear, the Panel in addressing Respondent’s actions is prepared to infer the existence of a relationship in the current proceedings.

As found in previous cases, Complainant is required to make out a prima facie case that Respondent lacks rights or legitimate interests. Once such prima facie case is made, Respondent carries the burden of demonstrating rights or legitimate interests in the domain name. See Croatia Airlines d.d. v. Modern Empire Internet Ltd, WIPO Case No. D2003-0455, Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

On the evidence before it, the Panel finds that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.

In those previous cases where resellers have been found to have rights or legitimate interests in a domain name containing a complainant’s trademark in a format comparable to the present case, the reseller has tended to be an authorized reseller of complainant’s products. The available evidence indicates that while the site does apparently offer Lexus vehicles for sale, there has been no attempt at accurate disclosure of Respondent’s relationship (or lack thereof) with Complainant. In fact, while there is no evidence before the Panel of any official relationship or affiliation between Atma Estate (or Art Motors) and Complainant, it is not disputed by Respondent that the website at the domain name contained a statement to the effect that Art Motors is an official importer of LEXUS vehicles in Ukraine. The Panel finds Respondent’s contention that this statement is not intended to imply any official relationship with Complainant to be unconvincing, particularly as Complainant’s mark appears both in the disputed domain name (in combination with a geographical term) and on the website. The Panel finds such use to be inconsistent with a bona fide offering of goods under the Policy.

Nor has Respondent sufficiently explained or proved any other bases on which rights or legitimate interests could be found in the domain name. Respondent has neither showed rights in the trademark LEXUS nor provided any evidence of authorization to use the trademark in the domain name or otherwise, nor proved any of the other circumstances enumerated in paragraph 4(c) of the Policy.

The fact that the disputed domain name is being used by a Lexus vehicle seller in Ukraine ^__ Art Motors ^__ does not in the circumstances create rights or legitimate interests for Respondent in the domain name. The Panel considers that the mere fact of reselling certain goods identified with a trademark which belongs to a third party does not in the absence of additional factors (such as for example authorization) give rise to rights or legitimate interests in a domain name containing such trademark.

In view of the foregoing, the Panel finds that Complainant has proved the second element required in paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Although Respondent is in a position to explain why it registered or more precisely acquired the registered domain name from Reactor and the nature of its relationship with Art Motors, it has failed to do so. As stated above, Respondent does not sufficiently explain or prove any rights or legitimate interests in the disputed domain name.

In relation to the third element of the Policy, Respondent indicates in its Response that it obtains no commercial benefit from the disputed domain name. In the absence of a legitimate explanation for Respondent choosing the domain name <lexus-ukraine.com>, the Panel finds it more likely than not that Respondent acquired the domain name with the intention of using it for profit, if not directly then through a third party, or otherwise benefiting from the confusing similarity between Complainant’s well-known mark and the domain name <lexus-ukraine.com>.

It is also reasonable in the circumstances to conclude that Respondent knew that the trademark LEXUS belonged to the Complainant. The fact that the domain name contains a well-known trademark registered in Ukraine since 1994, together with the country in which Respondent is domiciled, also confirms this point.

The domain name is being used to prominently display the LEXUS trademark without apparent authorization, and to sell Lexus vehicles without apparent attempt to disclose accurately the relationship (or lack thereof) with Complainant. The Panel finds that such use creates a clear likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the website, and it is reasonable in the circumstances to assume that the Respondent or related third parties hope to profit commercially from this. The Panel finds such use to be in bad faith.

The fact that the apparent operators of the website also indicate that they are official importers of Complainant’s car, a status which is denied by that very Complainant, reinforces a finding of bad faith. The Panel has also noted that the domain name was transferred from Reactor to the Respondent after the Complainant sent a cease and desist letter to Reactor and Art Motors.

In view of the above-given reasons, the Panel finds that the Complainant has proved the third element required in paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <lexus-ukraine.com> be transferred to the Complainant.