Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Fabio Martinez Salinas / Fabio Martinez
Claim Number: FA1609001695420
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation ("Complainant"), represented by David M. Kelly of Kelly IP, LLP, Washington D.C., United States. Respondent is Fabio Martinez Salinas / Fabio Martinez ("Respondent"), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshiba.club>, registered with GoDaddy.com, LLC.
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.
David E. Sorkin as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 26, 2016; the Forum received payment on September 26, 2016.
On September 27, 2016, GoDaddy.com, LLC confirmed by email to the Forum that the <toshiba.club> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 September 28, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 18, 2016 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@toshiba.club. Also on September 28, 2016, the Written Notice of the Complaint, notifying Respondent of the email 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 October 26, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David E. Sorkin 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 is a global electric/electronic manufacturer with 188,000 employees worldwide. Complainant has used the TOSHIBA trademark and trade name in connection with this business for more than sixty years. Complainant owns registrations for TOSHIBA and related marks in more than 170 countries, and claims common-law rights acquired through extensive use of the mark.
Respondent registered the disputed domain name <toshiba.club> in August 2015. The domain name is being used to redirect Internet users to commercial websites that display adult content and promote escort services. Complainant states that it has not authorized Respondent's use of its mark.
Complainant contends on these grounds that the disputed domain name is identical or confusingly similar to a mark in which Complainant has rights; that Respondent has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Panel finds that the disputed domain name is identical to a mark in which Complainant has rights; that Respondent lacks rights or legitimate interests in respect of the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.
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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
The disputed domain name <toshiba.club> corresponds to Complainant's registered TOSHIBA mark, adding only the ".club" top-level domain. For purposes of the Policy, the domain name is identical to Complainant's mark. See, e.g., Vanguard Trademark Holdings USA LLC v. ZhuangLiangji, FA 1682644 (Forum Aug. 22, 2016) (finding <alamo.club> identical to ALAMO); Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Rose Jayaseelan d/b/a Penguin Computers LLC, FA 1242943 (Nat. Arb. Forum Mar. 9, 2009) (finding <toshiba.pro> identical to TOSHIBA); Kabushiki Kaisha Toshiba v Shan Computers, D2000-0325 (WIPO June 27, 2000) (finding <toshiba.net> identical to TOSHIBA). The Panel finds that the disputed domain name is identical to Complainant's registered TOSHIBA mark.
Under the Policy, the Complainant must first make a prima facie case that the Respondent lacks rights and legitimate interests in the disputed domain name, and then the burden shifts to the Respondent to come forward with concrete evidence of such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006).
Respondent registered a domain name corresponding to Complainant's well-known TOSHIBA mark, and its only apparent use has been to redirect Internet users to commercial websites that display adult content and promote escort services. Such use does not give rise to rights or legitimate interests under the Policy. See, e.g., Sigourney Weaver v. Stephen Gregory a/k/a 'THIS DOMAIN NAME IS FOR SALE,' FA 1256394 (Nat. Arb. Forum May 22, 2009).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the domain name, and Respondent has failed to come forward with any evidence of such rights or interests. Accordingly, the Panel finds that Complainant has sustained its burden of proving that Respondent lacks rights or legitimate interests in respect of the disputed domain name.
Finally, Complainant must show that the disputed domain name was registered and has been used in bad faith. Under paragraph 4(b)(iv) of the Policy, bad faith may be shown by evidence that "by using the domain name, [Respondent] intentionally attempted to attract, for commercial gain, Internet users to [Respondent's] web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of [Respondent's] web site or location or of a product or service on [Respondent's] web site or location."
Respondent registered a domain name that corresponds to Complainant's well-known mark, and is using it to redirect Internet users to unrelated commercial websites. See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corp. v. Marko Tusla d/b/a/ Toshiba-Club.com, D2004-1066 (WIPO Jan. 31, 2005) (finding bad faith based upon registration and use of <toshiba-club.com> for a pornographic website). The Panel finds that the disputed domain name was registered and is being used in bad faith.
Having considered the three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshiba.club> domain name be TRANSFERRED from Respondent to Complainant.
David E. Sorkin, Panelist
Dated: October 31, 2016
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