Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Huang Jia long
Claim Number: FA1906001846471
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Huang Jia long (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshibaqosmio.com>, registered with 1API GmbH.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 4, 2019; the Forum received payment on June 4, 2019.
On June 6, 2019, 1API GmbH confirmed by e-mail to the Forum that the <toshibaqosmio.com> domain name is registered with 1API GmbH and that Respondent is the current registrant of the name. 1API GmbH has verified that Respondent is bound by the 1API GmbH registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 27, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@toshibaqosmio.com. Also on June 7, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On June 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant uses its TOSHIBA trademark in connection with laptops and computer services. Complainant has rights in the TOSHIBA trademark based on its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,405,380, registered August 12, 1986). Respondent’s <toshibaqosmio.com> domain name is confusingly similar to Complainant’s TOSHIBA trademark, as it wholly incorporates the trademark, merely adding the term “qosmio” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <toshibaqosmio.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TOSHIBA trademark in any manner. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent is using the disputed domain name for a pornographic website.
Respondent registered and is using the <toshibaqosmio.com> domain name in bad faith. Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Respondent’s use of the disputed domain name for a pornographic website disrupts Complainant’s business. Respondent had actual knowledge of Complainant’s rights in the TOSHIBA trademark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,405,380 TOSHIBA (word), registered August 12, 1986 for goods in classes 9 and 10;
No. 1,663,232 TOSHIBA (word), registered November 5, 1991 for goods in class 9;
No. 1,923,358, TOSHIBA (word), registered October 3, 1995 for goods in classes 9, 10 and 11.
The disputed domain name was registered on March 28, 2019.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant claims rights in the TOSHIBA trademark based upon registration of the trademark with the USPTO (e.g. Reg. No. 1,405,380, registered August 12, 1986). Registration of a trademark with the USPTO is sufficient to establish rights in that mark. See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i).”). The Panel therefore holds that Complainant’s registration of the TOSHIBA trademark with the USPTO is sufficient to establish rights in the trademark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <toshibaqosmio.com> domain name is confusingly similar to the TOSHIBA trademark, as it wholly incorporates the trademark merely adding the term “qosmio” and the gTLD “.com.” Generally, the addition of descriptive terms and/or a gTLD is not sufficient to overcome a confusingly similar analysis per Policy ¶ 4(a)(i). See Vanguard Group Inc. v. Proven Fin. Solutions, FA 572937 (Forum Nov. 18, 2005) (holding that the addition of both the word “advisors” and the gTLD “.com” did not sufficiently alter the disputed domain name to negate a finding of confusing similarity under Policy ¶ 4(a)(i)). Here, Respondent added the term “qosmio,” which refers to a product sold by the Complainant and a gTLD to Complainant’s trademark when registering the disputed domain name. The Panel therefore agrees that the disputed domain name is confusingly similar to Complainant’s TOSHIBA trademark per Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant argues that Respondent has no rights or legitimate interests in the <toshibaqosmio.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the TOSHIBA trademark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). Additionally, lack of authorization from complainant to use its mark may be evidence that respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii). See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information of record in the present case identifies the owner of the disputed domain name as “Huang Jia long” and no information on record indicates that Respondent was authorized to register a domain name with Complainant’s trademark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <toshibaqosmio.com> domain name.
Complainant further argues that Respondent’s lack of rights and legitimate interests in the <toshibaqosmio.com> domain name is demonstrated by its failure to use the domain name to make a bona fide offering of goods and services or for a legitimate or noncommercial or fair use. Complainant instead contends that the domain name resolves to a pornographic website. Generally, use of a domain name to host a pornographic website is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Karen Koehler v. Hiroshi Ishiura/ Lifestyle Design Inc., FA1730673 (Forum June 1, 2017) (holding that “Respondent is not using the disputed domain name for any bona fide offering of goods or services or a legitimate non-commercial fair use because Respondent uses the domain name to host a pornographic website.”). Here, Complainant provides screenshot of the resolving website associated with the disputed domain name to support this contention. The Panel therefore determines that Respondent does not have rights or legitimate interests in the <toshibaqosmio.com> domain name per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent’s bad faith is indicated by its use of the <toshibaqosmio.com> domain name to host pornographic material. Referring to the conclusion above regarding rights or legitimate interests, the same can be said regarding registration and use in bad faith: Generally, use of a disputed domain name to host pornographic material may demonstrate bad faith under Policy ¶ 4(a)(iii). See H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”). The Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent’s bad faith is indicated by Respondent’s use of the disputed domain name for a pornographic website that disrupts Complainant’s business. Use of a disputed domain name to disrupt a complainant’s business may demonstrate bad faith under Policy ¶ 4(b)(iii). See Gen. Media Commc’ns, Inc. v. Vine Ent., FA 96554 (Forum Mar. 26, 2001) (finding bad faith where a competitor of the complainant registered and used a domain name confusingly similar to the complainant’s PENTHOUSE mark to host a pornographic web site). The Panel refer hereby again to the fact that Complainant has attached a screenshot of the resolving website associated with the disputed domain name to support this and related contentions. The Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).
Complainant further argues that Respondent’s registration and use the disputed domain constitutes bad faith because Respondent intentionally seeks to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s trademarks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Attraction for commercial gain can be evidence of bad faith under Policy ¶ 4(b)(iv). See Qwest Comm’ns Int’l Inc. v. Ling Shun Shing, FA 187431 (Forum Oct. 6, 2003) (“Respondent has attempted to commercially benefit from the misleading <qwestwirless.com> domain name by linking the domain name to adult oriented websites, gambling websites, and websites in competition with Complainant. Respondent’s attempt to commercially benefit from the misleading domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”). The Panel notes that the domain name as such is a combination of the Complainant’s trademark and a well-known product name related to the Complainant. Such construction makes it even more clear and obvious that Respondent wanted to attract Internet users that were looking for this specific product in the name of the Complainant. The Panel finds that Respondent is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Finally, Complainant argues that Respondent’s bad faith is demonstrated by its actual knowledge of Complainant’s rights in the TOSHIBA trademark prior to registering the disputed domain name. Generally, a Respondent’s actual knowledge of a complainant’s rights in a trademark demonstrates bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, Complainant asserts the international fame of the TOSHIBA trademark establishes actual knowledge. The Panel agrees with Complainant’s assertions, as said above – adding the fact that the disputed domain name is a combination of Complainant’s trademark and product name Toshiba Qosmio, and finds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshibaqosmio.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: July 7, 2019
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page