Toyota drives away with ''

In Toyota Motor Corporation v Brummett, a National Arbitration Forum (NAF) panellist has ordered the transfer of '' to Toyota Motor Corporation.

In 2003 Japanese car manufacturer Toyota purchased the naming rights for a new downtown arena under construction in Houston, Texas. The Toyota Centre opened in October 2003 as the home of the NBA Houston Rockets, WBNA Houston Comets and AHL Houston Aeros. In anticipation of events being held at the arena, Bill Brummett, a Texas resident who operates a ticket resale operation known as Tickets To Go, registered '' and '' in June 2003.

Toyota filed a Uniform Domain Name Dispute Resolution Policy (UDRP) complaint against Brummett, claiming that Brummett had registered the domain names for the primary purpose of diverting consumers for commercial gain and profit from the Toyota Centre's business. Brummett agreed to voluntarily transfer '' (although as at the date of publication, this domain name still automatically directs customers to the Tickets To Go website).

With regards to the remaining domain name, '', Brummett alleged that consumers were not confused into thinking that it was the official website of Toyota Centre because it directed the potential ticket buying public to Brummett's alternative website Tickets To Go, which contained the following disclaimer:

"Tickets To Go is an independent ticket distributor that has been in business for over 10 years. We obtain Tickets on the secondary market. We are not connected with or sponsored by any of the venues, teams, performances, or organizations whose tickets we provide unless we expressly indicate that we are an official partner. If you want to buy tickets from the venue or organization box offices or their official distribution outlets, please inquire directly with the venues or organizations themselves."

Additionally, Brummett argued that his use of the disputed domain name was fair use because (i) the Toyota Centre was not readily identifiable without its name, and (ii) that name was used simply to identify the product or service that Tickets To Go provided. The primary reason for his registering the domain name was to notify potential customers that he sold tickets to events at the Toyota Centre.

NAF panellist Richard Hill found that Toyota had rights in the trademarks TOYOTA and TOYOTA CENTER. He held that the fact that Brummett's website displayed a disclaimer was not enough to avoid confusion, which is not limited to actual confusion under the UDRP. Hill noted that objective similarity of the disputed domain name was sufficient to establish confusing similarity. Incorporating the entirety of a distinctive mark in a domain name creates sufficient similarity.

Hill also rejected the descriptiveness argument, stating that Brummett's business does not sell tickets to the Toyota Centre itself, but to events at the Toyota Centre. This case was distinguished from the online ticket sales fair use case of '' in which the respondent was selling tickets to the NCAA Final Four event itself, not to a particular venue. Thus, it was impossible to sell tickets without use of the trademark. In contrast, the Toyota Centre is in direct competition with Tickets To Go for online ticket sales since it sells tickets via the Internet at ''.

Hill also found that Brummett had registered the domain name in bad faith. Brummett had acknowledged that he registered and used the domain name to divert potential ticket purchasers to his website. Because the Toyota Centre also maintained and operated its own website for online ticket sales, Brummett was intentionally attracting users for commercial gain, thereby creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the website.

Accordingly, Hill ordered the transfer of ''.

James L Bikoff and Patrick L Jones, Silverberg Goldman & Bikoff, Washington DC, with the assistance of Heather Sapp, an LLM candidate at George Washington University Law School

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