WIPO Domain Name Decision: D2008-0731

WIPO

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Toyota Motor Credit Corporation v. Kilsoo Jung

Case No. D2008-0731

1. The Parties

The Complainant is Toyota Motor Credit Corporation, Torrance, California, United States of America.

The Respondent is Kilsoo Jung, Kuri, Kyungki, Republic of Korea.

2. The Domain Name and Registrar

The disputed Domain Name <toyotacard.com> is registered with YESNIC Co., Ltd.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on May 9, 2008 and in hard copy on May 14, 2008.

On May 13, 2008, the Center transmitted to YESNIC Co., Ltd. a request for registrar verification in connection with the Domain Name at issue. On May 14, 2008, YESNIC Co., Ltd. transmitted to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details and informing that the language of the registration agreement is Korean.

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 the Respondent of the Complaint, and the proceedings commenced on May 23, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 12, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 16, 2008.

The Center appointed Chunghwan Choi as the sole panelist in this matter on July 1, 2008. 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. Factual Background

The Complainant, as a wholly-owned subsidiary of Toyota Motor Corporation (“TMC”) which is the owner of the widely-known mark TOYOTA, is authorized by TMC to use the trade names and company names Toyota Motor Credit Corporation and Toyota Financial Services and the mark TOYOTA in the United States for financial and insurance services. In Toyota Motor Credit Corp. v. World Funding Group, Inc., WIPO Case No. D2001-0674, WIPO UDRP panel found that the complainant Toyota Motor Credit Corp. has rights in the marks TOYOTA and TOYOTA FINANCIAL SERVICES. See also Toyota Motor Credit Corporation v. Party Night Inc., WIPO Case No. D2003-0555. The Complainant is a provider of retail financing, retail leasing, wholesale financing and certain other financial services to authorized Toyota dealers and their customers in the United States (excluding Hawaii) and Puerto Rico. The Complainant has used the name and mark TOYOTA in the United States since 1983.

The Domain Name was first registered on May 31, 2005, and the Domain Name has been used for a web site advertising the Domain Name for sale.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to the mark TOYOTA which TMC has authorized the Complainant to use in the United States for financial and insurance services, and is otherwise identical to the mark TOYOTA, differing only in the additional term “card”; that the Respondent has no rights or legitimate interests in respect of the Domain Name; that the Respondent has no license or permission to use the name and mark TOYOTA by the Complainant or TMC; that the Respondent, not commonly known by the Domain Name, does not do business under the name and mark TOYOTA; and that the Respondent’s use of the domain name for a web site advertising for sale by creating a likelihood of confusion with the Complainant’s TOYOTA mark proves the Respondent’s bad faith registration and use of the Domain Name.

The Complainant requests that the Domain Name be transferred to the Complainant.

B. Respondent

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

6. Discussion and Findings

Language of Proceedings

The language of the registration agreement for the disputed domain name is Korean. Pursuant to the Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. The Complainant filed initially its Complaint in English. On May 15, 2008, the Center issued a Notice of Language of Proceedings. The Complainant submitted a translated Complaint in Korean by email on May 19, 2008 and in hardcopy on May 21, 2008, and the Center commenced the proceeding forwarding the Korean Complaint to the Respondent.

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally chosen by the Panel for the proceeding is not prejudicial to the parties in there ability to articulate the arguments for the case.

The Complainant, upon being notified by the Center that the language of the registration agreement is Korean, has promptly submitted a Korean translation of the Complaint to the Center. The Respondent has then been notified of the Complaint and its contents in the Korean language. The Complainant has alleged that the Respondent has no legitimate rights to the disputed domain name which is confusingly similar to the Complainant’s registered trademark and that the Respondent has registered and used the domain name in bad faith. However, the Respondent has failed to respond to the Complainant’s contentions. The Panel finds that the Respondent’s failure to respond to the Complaint is not the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response to the allegations contained in the Complaint.

In light of the fact that the Respondent has been notified of the Complaint in Korean and that the Respondent has chosen not to participate in these proceedings, the Panel is satisfied that taking these circumstances into consideration, the Panel may render its decision in English and that this may be considered fair to both parties in the circumstances of this case.

In accordance with the Policy, paragraph 4(a), to succeed in this proceeding, the Complainant must prove (i) that the Domain Name is identical or confusingly similar to marks in which the Complainant has rights, (ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name, and (iii) that the Domain Name was registered and are being used in bad faith. These requirements will be considered in turn.

A. Identical or Confusingly Similar to Marks in which the Complainant has Rights

The Panel recognizes that the Complainant has successfully enforced its rights to use the mark TOYOTA under the Policy in the past in the following decisions: Toyota Motor Credit Corp. v. World Funding Group, Inc., WIPO Case No. D2001-0674; Toyota Motor Credit Corporation v. Party Night Inc., WIPO Case No. D2003-0555; Toyota Motor Credit Corporation v. Digi Real Estate Foundation, WIPO Case No. D2005-1111; Toyota Motor Sales, U.S.A. Inc. and Toyota Motor Credit Corporation v. Wayne Craig d/b/a/ GMGL Marketing Services Inc., FA550216. The Panel is satisfied on the evidence that the Complainant has rights in the mark TOYOTA.

The Panel further finds that the Domain Name is confusingly similar to the mark TOYOTA. Apart from the generic top level domain, the Domain Name at issue consists of the Complainant’s trademark TOYOTA and the generic term “card.” The generic term “card” is of descriptive nature only and the distinctive element of the Domain Name is obviously the term “Toyota.” In these circumstances, Internet users finding <toyotacard.com> are likely to be misled into believing that the Complainant is the registrant or is otherwise affiliated or associated with the Domain Name.

The Panel finds that the first element of the Policy has been established.

B. No Rights or Legitimate Interests

The Respondent is neither an authorized dealer nor a distributor of Toyota products or services and it has not been licensed or otherwise been given permission to use the name and mark TOYOTA by the Complainant or TMC. The Panel is satisfied by the Complainant’s unchallenged evidence that the Domain Name has been used for a web site advertising the Domain Name for sale. The Respondent does not use the Domain Name in connection with a bona fide offering of goods and services within the meaning of the Policy paragraph 4(c)(i) because the Respondent does not use the Domain Name to sell its own wares and services, but merely advertised the Domain Name for sale. Based on the case file, the Panel is of the view that the Respondent has no rights or legitimate interests in respect of the Domain Name.

It seems that the Respondent changed his use of the Domain Name after he had received a cease and desist letter from Complainant. However, such discontinuance of the Respondent’s use of the Domain Name does not affect this Panel’s finding.

The Panel finds that the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The trademark TOYOTA is widely-known. It has been used world wide for many years and is probably one of the best known trademarks for motor vehicles. Therefore, the Respondent most likely knew of the trademarks prior to registering the Domain Name. This finding of the Panel is also evidenced by the fact that the Respondent has utilized the Domain Name for web site advertising the Domain Name for sale.

Such use of a domain name confusingly similar to a complainant’s mark for a web site advertising the domain name for sale is a common example of use in bad faith as referred to in paragraph 4(b)(iv) of the Policy and identified in many previous decisions: see e.g. Spadel S.A. v. Peter Kisters, WIPO Case No. D2000-0526; Trip.com, Inc. v. Daniel Demone, WIPO Case No. D2001-1066; Faconnable SAS v. Names4sale, WIPO Case No. D2001-1365.

The Panel concludes that the Domain Name was registered and is being used in bad faith.

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 <toyotacard.com> be transferred to the Complainant.

Chunghwan Choi
Sole Panelist

Dated: July 22, 2008