TOTO USA INC. v. Akram Owida
Claim Number: FA0804001178653
PARTIES
Complainant is TOTO USA INC. (“Complainant”), represented by Caroline
L. Keller, of Pillsbury Winthrop Shaw Pittman LLP,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <totology.com> and <totology.net>,
registered with Schlund+Partner Ag.
PANEL
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.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on April 16, 2008; the
National Arbitration Forum received a hard copy of the Complaint on April 17, 2008.
On April 22, 2008, Schlund+Partner Ag confirmed by e-mail to the
National Arbitration Forum that the <totology.com> and <totology.net>
domain names are registered with Schlund+Partner
Ag and that the Respondent is the current registrant of the names. Schlund+Partner
Ag has verified that Respondent is bound by the Schlund+Partner Ag registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with
ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 30, 2008, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of May 20, 2008 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent via e-mail,
post and fax, to all entities and persons listed on Respondent’s registration
as technical, administrative and billing contacts, and to postmaster@totology.com and postmaster@totology.net by
e-mail.
A timely Response was received and determined to be complete on May 20, 2008.
On May 23, 2008, Complainant submitted an Additional Submission, which
was received in timely manner according to the National Arbitration Forum’s
Supplemental Rule #7.
On May 27, 2008, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain names be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
According to Complainant the Complaint is based on a number of federally registered marks assigned to and owned by Complainant and by the parent company of Complainant, Toto Ltd, a Japanese Corporation with a place of business at No. 1-1 Nakashima, 2-Chome, Kokurakita-ku, Kitakyushu-shi, Japan (“Toto Ltd”), which has licensed such registrations to Complainant, which have been in use by Complainant beginning at least as early as 1969, including the following:
1. TOTO, U.S. Registration No. 1,998,242, covering toilet seats made of fiber-glass reinforced plastic that facilitates automatic seat paper dispensing; automatic flushing systems for water closets and urinals that comprise sensors, automatic flush valves and controllers; prefabricated bathrooms that comprise furnishing panels including floor walls and ceiling, bathtubs, water closets, counters, lavatories, plumbing fixtures, mirrors, and accessories in international class 11;
2. TOTO, U.S. Registration No. 3,303,081, covering metal hooks in international class 6, bathroom fixtures, namely towel bars, toilet paper holders in international class 21, and repair of bathtubs, installation and repair of bathroom facilities, repair of toilet seats with washing function, repair of kitchen furniture, toilets, washstands and other interior furniture in international class 37;
3. TOTO, U.S. Registration No. 3,141,371, covering toilet bowls, toilet stool units, lavatory items, namely, hand-wash lavatory bowls, bidets, urinals, faucets, toilet and urinal flushometer valves, toilet stool units with a washing warm water squirter in international class 11 and bathroom fixtures, namely, towel bars, towel rings, robe hooks, toilet paper holders in international class 21;
4. TOTO, U.S. Registration No. 3,405,304, covering goods and services including antitarnishing chemicals for vehicle windows in international class 1, clear and pigmented coatings in international class 2, hand rails of metal, metal pipes in international class 6, machine parts in international class 7, measuring apparatus and instruments and their parts and accessories in international class 9, water closets, electric apparatus for bathroom for heating, drying and ventilating, accessories for bathtubs and bathroom, and plumbing and bathroom fittings in international class 11, tiles not of metal in international class 19, planning and conducting exhibitions for commercial or advertising purposes, in class 35, and engineering, in class 42;
5. TOTO’S ECOPOWER FLUSH VALVES, U.S. Registration No. 3,136,214, covering plumbing fittings, namely, flush valves for toilets in international class 11; and
6. ECOPOWER FLUSH VALVES BY TOTO, U.S. Registration No. 3,159,379, covering plumbing fittings, namely, flush valves for toilets in international class 11.
The Complaint is further based on a number of applications for federal trademark registrations for TOTOLOGY, which have been in use by Complainant since at least as early as April 2008 and include the following:
1. TOTOLOGY, U.S. Trademark Application No. 77/412,785, covering metal bathtub rails, grab bars, handrails, metal garment hooks in international class 6 (a copy of the Trademark Electronic Search System printout of this application is included in Exhibit “E”).
2. TOTOLOGY, U.S. Trademark Application No. 77/412,810, covering plumbing fixtures, namely, toilets, bidets, showers, bathtubs, sinks, faucets and lighting fixtures in international class 11 (a copy of the Trademark Electronic Search System printout of this application is included in Exhibit “E”).
3. TOTOLOGY, U.S. Trademark Application No. 77/412,825, covering medicine cabinets, bathroom shelving, mirrors and bathroom furniture in international class 20 (a copy of the Trademark Electronic Search System printout of this application is included in Exhibit “E”).
4. TOTOLOGY, U.S. Trademark Application No. 77/412,854, covering towel bars, towel rings, bathrobe hooks, towel holders, toilet tissue holders, soap dishes, soap dispensers, toothbrush holders in international class 21 (a copy of the Trademark Electronic Search System printout of this application is included in Exhibit “E”).
Complainant, in conjunction its
parent company, Toto Ltd., contends that it is the world’s largest plumbing
products manufacturer, offering a complete line of commercial and decorative
plumbing fixtures and fittings, faucets, accessories, shower and flush valves,
as well as lavatories, toilets, Air Baths™ and urinals. For over 90 years, Toto Ltd. has been
producing superbly designed, high performance lifestyle enhancing plumbing
products for residential bathrooms and commercial restrooms. Complainant is the
Toto Ltd. has been using its TOTO
marks in the world since at least 1917 and in the
The validity of the TOTO marks is
evidenced by multiple federal trademark and service mark registrations
including the word mark TOTO, which has been in use continuously in the
The strength of the TOTO mark is
evidenced by its uniqueness and its extensive use and promotion throughout the
Complainant contends that it has
also created and been using the trademark TOTOLOGY since at least April
2008. This trademark includes the house
mark TOTO as its dominant portion and capitalizes on the fame of that
mark. Complainant filed federal
trademark registrations for the TOTOLOGY marks in early March 2008. Complainant also registered the domains
<whatistotology.com> and <whytotology.com> in February 2008. Complainant has spent a large amount of money
promoting the TOTOLOGY mark at its annual trade show and on its website.
Complainant’s representative
attempted to contact Respondent to acquire the <totology.com> domain name.
He was put in touch with Akram Owida.
Mr. Owida stated that he “knew the power of this domain” and responded
by first asking that Complainant pay to rent or forward the website for
$500/month for the first three months, $750/month for the next three months and
after that for $1000/month. Complainant
asked how much it would cost to outright purchase the domain, and Respondent
responded with an offer of $100,000. On
information and belief, after this exchange, Mr. Owida and/or Respondent also
purchased the <totology.net>
domain name and linked both the <totology.net>
domain name and the <totology.com>
domain name to forward to the website located at <virtustan.com>. The website located at <virtustan.com>
is an adult-oriented site with graphic and offensive images and
animations. This website allows users to
download “virtual strippers” onto their computers via the “VirtuaGirl” computer
program, produced and sold by Totem Entertainment. Totem Entertainment offers compensation to
people and companies that promote its VirtuaGirl computer program.
Based on Complainant’s long-standing right, in conjunction with the rights of its parent company, Toto Ltd., to exclusive use of the TOTO mark, to use the mark TOTOLOGY, which includes the TOTO mark, Complainant contends that: (1) Respondent has registered the <totology.com> and <totology.net> domain names which contain terms that are identical to the TOTO and TOTOLOGY trademarks and service marks in which Complainant and its parent company have exclusive rights, (2) Respondent has no rights or legitimate interests in the <totology.com> and <totology.net> domain names, and (3) Respondent has registered and is using the <totology.com> and <totology.net> domain names in bad faith.
In this regard Complainant contends
that it is licensed to use the TOTO trademarks owned by its parent company Toto
Ltd. Complainant further has common law
rights in its usage of the TOTO trademarks in the
Complainant contends that
Respondent’s domain names, <totology.com>
and <totology.net> contain
the term “TOTOLOGY,” which is identical to Complainant’s TOTOLOGY mark and
include as their dominant portion “TOTO,” which is identical to the TOTO
mark. As established above, Complainant
is licensed to use and/or owns the TOTO and TOTOLOGY trademarks. The domains <totology.com> and <totology.net
> are confusingly similar to the TOTOLOGY mark because they incorporate
the trademarks with the “.com” or “.net” domain extension and confusingly
similar to TOTO because they incorporate the trademarks with the generic ending
“logy” and the “.com” or “.net” domain extension.
According to Complainant adding the
generic ending “logy” to “TOTO” does not prevent a finding of confusing
similarity. The ending “ology” or “logy”
denotes a field of study or academic discipline. The ending also can be used in a more
whimsical sense, such as “Cokeology” or “beerology” to denote the study and
philosophy behind a product. A consumer
would therefore assume that <totology.com>
and <totology.net> were
websites promoting Complainant’s goods and services and the philosophies behind
Complainant’s goods and services.
Furthermore the addition of “.com”
or “.net” does not affect the likelihood of confusion between the TOTO and
TOTOLOGY marks and the domain names <totology.com>
and <totology.net>. The addition of a generic top-level domain
(“.com,” “.org,” or “.net”) is irrelevant in determining whether, as here, a
domain name is identical to another’s mark.
Finally, the finding of confusion
similarity is mandated here, regardless of the relationship between the goods
and services of Complainant and Respondent, because of the uniqueness of the
mark and its strength as evidenced by the extensive use and promotion of the
mark. The offending <totology.com> and <totology.net>
domain names are, therefore, identical and confusingly similar to Complainant’s
registered and common law marks.
Complainant further contends that
Respondent has no legitimate rights or interest with respect to the <totology.com> and <totology.net> domains for at
least the reasons that: (a) Respondent is not and has never been commonly known
by the domain names, has never acquired trademark rights in the domain names,
and has never been authorized by Complainant, its predecessors in interest, or
Toto Ltd. to use “TOTO” or “TOTOLOGY” in its domain names; (b) Respondent had
not been using the domain names in connection with a bona fide offering of goods or services prior to receiving notice
of this dispute; and (c) Respondent is not making a legitimate noncommercial or
fair use of the domain names.
Respondent is not and never has
been using the domains to offer any bona
fide goods or services. Respondent
is using the domains to redirect users to the adult-oriented website located at
<virtustan.com>. This website is
commercial, designed for purchasing the product of a third party, and therefore
the direction is in conjunction with adult-oriented services that are not
considered to be noncommercial or fair use.
Nor is such use a bona fide
offering of goods or services under Policy 4(c)(i).
In addition, Respondent is presumably obtaining compensation for redirecting users to the adult-oriented site, or at the very least for customers who click on the adult-oriented site to purchase the advertised program, because the company that produces and sells the VirtuaGirl computer program pays people to advertise the program. This is not a bona fide offering of goods or services. Nor is it a legitimate noncommercial or fair use of the domain name.
Respondent is not commonly known by the TOTO or TOTOLOGY name, mark, or domain name and could not, under any circumstances, acquire trademark or service mark rights in and to the name. Respondent is neither a licensee of Complainant or Toto Ltd. nor otherwise authorized to use the TOTO or TOTOLOGY mark. Respondent was not authorized to register the <totology.com> or <totology.net> domain names or any other domain names incorporating marks similar to Complainant’s marks or names. Further, Respondent could not possibly contend that it is known by or identified with the TOTO and TOTOLOGY mark or the <totology.com> or <totology.net> domain names. The TOTO mark is unique to Complainant, serving as a source identifier for goods and services marketed, endorsed, or offered by Complainant. It is well established that use of a domain name such as in the manner at issue here is illegitimate.
Complainant further contends that Respondent has registered and is
using the <totology.com>
and <totology.net> domain names in bad faith. Respondent has shown bad faith by using a
domain name that contains as its dominant portion Complainant’s mark. Respondent registered a domain name comprising
Complainant’s mark TOTOLOGY, which is also Complainant’s house mark TOTO
followed by the generic ending “logy.” Thus,
it would be likely for a consumer to enter the combination when looking for
Complainant’s goods and services or the philosophy behind such. It would also be highly likely for a consumer
to click on the domains if they were retrieved as part of a search, because
they either think that Complainant is using the site based on its TOTOLOGY
advertising campaign or to promote its philosophy. Customers
who are unwilling to look further may give up trying to purchase Complainant’s
goods and services, costing Complainant the loss of substantial goodwill and/or
customers.
Moreover, Respondent’s use of the domain names disrupts the business of the Complainant, because it prevents the Complainant from appropriately promoting or advertising its product under a suitable domain name. Therefore, the registration and use of the domain name <totology.com> and <totology.net> by Respondent violates the bad faith action of the Policy.
Respondent has also shown bad faith by its attempt to hold the <totology.com> and <totology.net> domain names hostage to force Complainant to spend unnecessary money to obtain the domain name <totology.com> and <totology.net>. This included purchasing the domain name with the other highly recognized extension, .net, once Respondent knew that Complainant was interested in the .com domain. This is exactly the type of hostage-holding that the Policy was created to rectify. Such registration and use is indicative of bad faith pursuant to Policy ¶ 4(b)(i).
Respondent is using the <totology.com> and <totology.net> domain names to
redirect consumers to an adult-oriented website. This redirection was made only after
Complainant attempted to purchase the <totology.com>
domain, presumably to increase the purchase price of the domain and the urgency
for Complainant to purchase the domain.
Every day that consumers are redirected to this adult-oriented site
increases the harm to Complainant by tarnishing and diluting the TOTO marks and
undoing the many years of goodwill built up by Complainant.
Based on the circumstances, the only logical conclusion is that
Respondent registered the <totology.com>
and <totology.net> domain
names for at least one of the following purposes: (1) for the purpose of selling,
renting, or otherwise transferring the domain name to Complainant for valuable
consideration in excess of Respondent’s out-of-pocket costs directly related to
the domain names; and/or (2) to capitalize on the fame of Complainant’s marks. Given Complainant’s exclusive rights, any
conceivable use of the domains by Respondent would presumably be for the
purpose of attracting, for commercial gain, Internet users to the infringing
web site by creating a likelihood of confusion with Complainant’s mark. This, of course, is improper, proof of bad
faith, and sufficient to order the domain transferred.
According to Respondent the term Toto can be a Name
of somebody. Respondent did not know that Toto has to do with furniture or with
toilet seats. For Respondent and for the
most people on earth, toto is a football bidding game/system. People in
Respondent contends that the word toto is a part of thousands of URLs. Nearly all of them have nothing to do with Complainant. Nobody can think, that the Forum can arrange the transfer of all these URLs to the Complainant, just because Complainant alleges (1) that these domains are identical to Complainant’s TOTO mark and “including as their dominant portion the TOTO mark in which Complainant and its parent company have exclusive rights,” (2) that the owners “has no rights or legitimate interests” in the domain names, (3) that the domains are used “in bad faith” and not in their wished way.
Respondent further contends that it developed optimized Lotto systems, that are published on its site: <tolto.com>. The website is written in German. But the systems are for Lotto worldwide. Respondent has just to develop pages in other languages and Systems, not just with 49 or 45 wheels but also for Systems with e.c. 34 or 42 wheels and so on.
As <lottology.com> handles
with lotto systems, <totology.com>
is meant to handle with lotteries and toto: as a football/soccer
software and reduced systems for soccer betting games.
Totology can be defined as a mathematical, logical issue and as a science of toto, which has much to do with lotteries and football. The use of logy with toto is therefore a right connection. Logy in connection with toto as a worldwide betting system has more to do as with toto as a science of furniture or toilet seats.
Respondent developed optimized Toto systems that are not published yet. The domain names at dispute are registered for Respondent’s developed Totosystems. The two objective domain names are now more or less in a parking situation.
According to Respondent the right content will be published in the next few weeks.
While totology.com was created by Respondent on July 31, 2007, Complainant’s trademark Totology was registered on March 4, 2008.
Further Totology.com is thought to handle with Totosystems of many different countries and systems. It is for an international purpose. Therefore it is registered with the gTLD “.com.”
Complainant’s trademark TOTOLOGY is
only registered in the
Before the registration of TOTOLOGY as a Trademark, Respondent got an email from Complainant. Complainant was “looking for the domain for a short term advertising campaign.”
Respondent registered the domain name at dispute on July 31, 2007. Complainant asked for the domain on February 13, 2008. Complainant registered TOTOLOGY as a trademark on March 14, 2008. The registration of TOTOLOGY as a trademark on a later date can be explained as an attempt to (ab)use the National Arbitration Forum to arrange for them the transfer of the domain from Respondent to Complainant.
In summary Respondent contends that
(1)
TOTOLOGY
has more to do with mathematically, logically and scientifically with TOTO (as
a Lottery-system) as with Furniture and seats products of the Complainant.
(2)
Totology
as a domain was registered by Respondent long before the registration of TOTOLOGY as a trademark by the Complainant
(3)
The
registration of TOTOLOGY as a
trademark was done, because the Complainant did not get the domain from
Respondent “for short term advertising campaign.” Complainant was trying to
abuse the FORUM for a transfer decision of the domain from Respondent to
Complainant.
(4)
Respondent
thought about Totology as a word or phrase with meaning and content long before
the Complainant did.
(5)
Totology
is registered in and for the
(6)
Complainant
should register <totology.us>.
In reply to the Respondent’s Response Complainant stated in its Additional Submission as follows:
Complainant, in conjunction with its parent company, Toto Ltd. has been using the name TOTO worldwide for over 90 years. It is a well known mark in which Complainant and its parent company have created extensive goodwill. A search on <google.com> for TOTO immediately comes up with Complainant’s use of the term.
Respondent has asserted that its use of totology.com is legitimate, stating that it came up with the use of “logy” with “toto” as a worldwide betting system. Respondent has now linked the domain names <totology.com> and <totology.net> to its website at <tolto.com>, which appears to be a common typographical error for a user trying to enter <lotto.com> as it is just an interposition of the letters “l” and “t.” Nowhere on this site is the wording “totology” used or described. Nor is the term “toto” used by the Respondent anywhere on the <tolto.com> site. Respondent is not commonly known by the term “totology” or “toto” and is not offering any goods or services under either term, and is not even using either term on his site. Therefore, his statement that “toto” is a football bidding game/system is immaterial. The Respondent is not using the domains <totology.com> and <totology.net> for a legitimate purpose. This is neither a noncommercial or fair use.
Regardless of whether this current use is legitimate, under the Policy, legitimate use of a domain name that is commercial, and is not based on the domain name being the common name of the domain name owner, must occur before notice of a domain name dispute. Initially, prior to being contacted by Complainant regarding potential purchase of the <totology.com> domain name, the site located at <totology.com> was a parking site with a notice that domain name may be available for sale by its owner. When Complainant contacted Respondent to ask about purchase of the domain name, Respondent asked for an exceedingly large some of money ($100,000 for an outright purchase), well above any possible out-of-pocket costs of purchasing and maintaining the domain. As noted in the Complaint, Respondent stated that he “knew the power of this domain” when asking for this large some of money. The Respondent then purchased the <totology.net> domain, knowing that Complainant wanted to use “totology” as part of a domain name for an advertising campaign. In addition, Respondent then redirected his domain names <totology.com> and <totology.net> to a graphic adult-oriented site of a third party. These facts evidence Respondent’s bad faith in trying to extract money from Complainant. Since he knew that Complainant was intending to use the term “totology,” it follows that his redirection to the adult-oriented site was done to increase the price he could obtain. It is also clear that Respondent registered the <totology.net> domain solely to extract money from Complainant, because Respondent’s registration of this domain only occurred after Complainant approached him to ask about purchasing the <totology.com> domain.
The current redirection of <totology.com> and <totology.net> to the <tolto.com> site only occurred after the present proceeding was instituted. Thus, it is not a bona fide use before notice of the dispute. Any assertion that Respondent was working toward a bona fide use of the site is contradicted by his actions taken to hijack the domains for a large sum of money.
In view of the above, Respondent’s registration and use prior to notice of the dispute was not a bona fide offering of goods or services, Respondent is not commonly known by the domain name and is not even using it or the mark TOTO on its website at all, and Respondent’s use is not a noncommercial, fair use. Thus, Respondent has no legitimate rights in the domain name.
Finally, in response to Respondent’s comments that the “registration of totology as a trademark on a late date can be explained as an attempt to (ab)use [sic] the National Arbitration Forum (the forum) to arrange for them to transfer of the domain from me to them,” Complainant strongly denies these allegations. Initially, Complainant notes that in the Complaint filed in connection with this proceeding, it clearly stated that it has used TOTOLOGY since April 2008 of this year. It also included copies of the TESS printouts of the TOTOLOGY applications showing their filing dates and included information about the related domains that had been registered by Complainant. TOTOLOGY is being used by Complainant as a trademark, which is why the trademark applications were filed. Complainant included this information in addition to the information on the well-known trademark TOTO, also owned by Complainant, in order to fully apprise the Forum of the rights of Complainant.
As evidenced by Complainant’s attempt to obtain the <totology.com> domain name in mid-February 2008, the use of TOTOLOGY as a trademark and in a marketing campaign was conceived of prior to learning that the <totology.com> domain name would be unavailable. As an alternative, Complainant registered the domain names <whatistotology.com> and <whytotology.com>. Trademark applications for TOTOLOGY were filed shortly after this, March 4, 2008. It was only after learning that Respondent had linked the <totology.com> and <totology.net> domain names to an adult-oriented site that Complainant instituted this action on April 16, 2008. By linking the domain names to an adult-oriented site, the Respondent caused people who would be interested in Complainant’s TOTOLOGY campaign and did the natural step of typing in the word “totology” followed by one of the most common extensions, “.com” or “.net,” to be confronted with sexually explicit and graphic material. As discussed above, this was clearly designed to extort additional money from Complainant for the transfer of the domains. Complainant had no choice but to pay an exorbitant fee or to institute the present action.
Based on the above discussion, on the discussion in the Complaint, and
on Complainant’s long-standing right to the TOTO mark, (1) Respondent has
registered the <totology.com>
and <totology.net> domain
names, identical to Complainant’s TOTOLOGY mark and including as their dominant
portion the TOTO mark in which Complainant and its parent company have
exclusive rights, (2) Respondent has no rights or legitimate interests in the <totology.com> and <totology.net> domain names, and
(3) Respondent has registered and is using the <totology.com> and <totology.net>
domain names in bad faith
FINDINGS
The Panel finds that:
1.
the
Domain Names <totology.com> and <totology.net> are confusingly similar to the
Complainant’s marks.
2.
the
Respondent has not established any right or legitimate interest in the Domain
Names <totology.com>
and
<totology.net> and
3. the Respondent has registered and is using the Domain Names <totology.com>
and
<totology.net> in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
Complainant registered the TOTO mark with the United States Patent and Trademark Office (“USPTO”) on September 3, 1996 (Reg. No. 1,998,242). The Panel is of the view that this registration is sufficient to establish Complainant’s rights in the TOTO mark under Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant also alleges common law rights in the
TOTOLOGY mark. Complainant filed for
registration of the TOTOLOGY mark with the USPTO on March 4, 2008 (Ser. No.
77/412,854). The registration information
does not indicate a date of first use in commerce, however, Complainant
contends that it has been using the mark in commerce since April 2008. Therefore, the Panel finds that Complainant
has established secondary meaning sufficient to demonstrate common law rights
in the TOTOLOGY mark under Policy ¶ 4(a)(i).
See
Complainant asserts that the <totology.com> and <totology.net> domain names are confusingly similar to its TOTO mark. Complainant contends that the disputed domain names wholly incorporate the TOTO mark, and differ only by the addition of the generic suffix “logy” and the generic top-level domains (“gTLDs”) “.net” and “.com.” Complainant notes that “ology” or “logy” is used to denote a field of study or the study and philosophy behind a product. Complainant also contends that the additions of the gTLDs do not affect the likelihood of confusion between Complainant’s mark and the disputed domain names because gTLDs are irrelevant in determining whether a disputed domain name is confusingly similar to a mark. The Panel finds that the <totology.com> and <totology.net> domain names are confusingly similar to Complainant’s TOTO mark under the Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
Complainant also contends that the
disputed domain names are identical to its TOTOLOGY mark. Complainant notes that the disputed domain
names incorporate the trademark and differ only by the additions of the gTLDs
“.com” and “.net.” Since the Panel finds
that Complainant has additionally established common law rights in the TOTOLOGY
mark, it also finds that the disputed domain names are identical to the mark
pursuant to Policy ¶ 4(a)(i). See Little
Six, Inc. v. Domain For
The Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He
has made preparations to use the domain name or a name corresponding to the
domain name in connection with a bona
fide offering of goods or services prior to the dispute;
(b) He is commonly
known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make
a legitimate, non-commercial or fair use of the domain name without intent for
commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of proof for the second criterion: The Respondent has failed to demonstrate any legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the position that while Complainant has the burden of proof on this issue, once the Complainant has made a prima facie showing, the burden of production shifts to the Respondent to show by providing concrete evidence that it has rights to or legitimate interests in the domain name at issue. See Document Techs., Inc. v. Int’l Elec. Commc’ns, Inc., D2000-0270 (WIPO June 6, 2000); see also Inter-Continental Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the Complainant has asserted that the Respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the Respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent.”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Complainant contends that Respondent has no rights or interests legitimate in the <totology.com> and <totology.net> domain names. Complainant maintains that Respondent is not and has never been commonly known by the disputed domain names, and that Complainant has never authorized or licensed Respondent to use the TOTO or TOTOLOGY marks. Moreover, the WHOIS information does not indicate that Respondent has been commonly known by the disputed domain names. Thus, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Complainant alleges that Respondent is using the disputed domain name to redirect Internet users to an adult-oriented third-party website where the VirtuaGirl computer program is advertised and may be purchased. Complainant also asserts that Respondent is being compensated for redirecting Internet users, and that this use does not demonstrate rights or legitimate interests in the disputed domain names. Since the Panel finds that the evidence supports Complainant’s allegations, it concludes that such use is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to an adult-oriented website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)); see also Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to [adult-oriented material] is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”).
Complainant also alleges that
Respondent attempted to sell the disputed domain names to Complainant in excess
of out-of-pocket costs. The Panel finds
that this is additional evidence of Respondent’s lack of rights and legitimate
interests under Policy ¶ 4(a)(ii). See Am. Nat’l Red Cross v. Domains, FA
143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and
legitimate interests in the domain name is further evidenced by Respondent’s
attempt to sell its domain name registration to Complainant, the rightful
holder of the RED CROSS mark.”); see also
Mothers Against Drunk Driving v.
Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding
that under the circumstances, the respondent’s apparent willingness to dispose
of its rights in the disputed domain name suggested that it lacked
rights or legitimate interests in the domain name).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <totology.com> and <totology.net> domain names be TRANSFERRED
from Respondent to Complainant.
Dr. Reinhard Schanda,
Panelist
Dated: June 10, 2008
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