Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Nikolay Zhoukov
Claim Number: FA0610000812912
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (“Complainant”), represented by David
M. Kelly, of Finnegan, Henderson, Farabow, Garrett &
Dunner, L.L.P.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com>, registered with Go Daddy Software, Inc.
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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 12, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 1, 2006 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@toshiba-mobile.com, toshiba-mobiles.com, and toshiba-phone.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com> domain names are confusingly similar to Complainant’s TOSHIBA mark.
2. Respondent does not have any rights or legitimate interests in the <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com> domain names.
3. Respondent registered and used the <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Toshiba Corporation, is a global leader in the field of electronic and electrical products. In connection with the provision of these goods, Complainant holds several trademark registrations with the United States Patent and Trademark Office (“USPTO”), including the TOSHIBA mark (Reg. No. 1,490,719, issued June 7, 1988).
Respondent registered the <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com>
domain names on
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."
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(e), 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.”).
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.
Complainant asserts rights in the TOSHIBA mark through
registration with the USPTO. The Panel
finds that Complainant’s registration and extensive use of the TOSHIBA mark for
over eighteen years is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum
Complainant contends that Respondent’s <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com>
domain names are confusingly similar to Complainant’s mark. Respondent’s disputed domain name features
Complainant’s mark and the generic terms “mobile,” “mobiles,” and “phone.” The disputed domain names also feature a
hyphen between the Complainant’s mark and the generic names. The Panel finds that the addition of a
generic term and a hyphen to an otherwise identical mark fails to sufficiently
distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Quixtar Inv., Inc. v. Smithberger,
D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name
<quixtar-sign-up.com> incorporates in its entirety the complainant’s
distinctive mark, QUIXTAR, the domain name is confusingly similar); see also
Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights or
legitimate interests in the <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com>
domain names. In instances where
Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the
burden shifts to Respondent to set forth concrete evidence that it does not
possess rights or legitimate interests in the disputed domain name. See Compagnie Generale des Matieres
Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO
Complainant contends that Respondent is using the disputed
domain names to resolve to websites that feature links to various competing and
non-competing commercial websites from which Respondent presumably receives
referral fees. The Panel finds that
Respondent’s use is neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See
TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31,
2002) (finding that the respondent’s diversionary use of the complainant’s
marks to send Internet users to a website which displayed a series of links,
some of which linked to the complainant’s competitors, was not a bona fide
offering of goods or services); see also Computer Doctor Franchise Sys., Inc. v. Computer Doctor, FA 95396
(Nat. Arb. Forum
Furthermore, Complainant contends that Respondent is neither commonly known by the <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com> domain names nor authorized to register domain names featuring Complainant’s TOSHIBA mark in any way. In the absence of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com>
domain names to operate websites that provide Internet users with links to
various competing websites. The Panel
finds that Respondent’s use constitutes a disruption of Complainant’s business
and evinces bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO
Additionally, Respondent’s use will likely cause confusion as the Complainant’s sponsorship of and affiliation with the resulting websites. Complainant’s products and logo are featured on the resulting websites. The Panel finds that such use of a domain name for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004) (“Respondent [used “HP” in its domain name] to benefit from the goodwill associated with Complainant’s HP marks and us[ed] the <hpdubai.com> domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motivated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <toshiba-mobile.com>, <toshiba-mobiles.com>, and <toshiba-phone.com> domain names be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: November 21, 2006
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