Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Mgqxdgjrx Xmdslioukk / Joni Decker
Claim Number: FA1606001680268
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 Mgqxdgjrx Xmdslioukk / Joni Decker (“Respondent”), Florida, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <china-toshiba.com>, registered with Domain.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 20, 2016; the Forum received payment on June 20, 2016.
On June 21, 2016, Domain.com, LLC confirmed by e-mail to the Forum that the <china-toshiba.com> domain name is registered with Domain.com, LLC and that Respondent is the current registrant of the name. Domain.com, LLC has verified that Respondent is bound by the Domain.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 June 21, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 11, 2016 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@china-toshiba.com. Also on June 21, 2016, 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 July 20, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
i) Complainant's TOSHIBA mark enjoys unquestionable fame as a result of favorable public acceptance and recognition worldwide. Complainant owns numerous registrations for its TOSHIBA mark and/or variations thereof in more than 170 countries around the world, inter alia, U.S. registration number 1,405,380, registered on August 12, 1986. Complainant's U.S. registrations evidence Toshiba’s rights in the TOSHIBA mark as required by the UDRP. The disputed domain name <china-toshiba.com> is confusingly similar to Complainant’s famous and federally registered TOSHIBA mark because it contains Complainant’s mark in its entirety. Further, the addition of the geographic term “China” to Complainant’s TOSHIBA mark in the disputed domain name is insufficient to distinguish the disputed domain name because the dominant portion of the disputed domain name is Complainant’s famous TOSHIBA mark.
ii) Respondent registered the disputed domain name in January 2016, without Complainant's authorization and long after Complainant began using its TOSHIBA mark; long after Complainant registered its mark in the U.S. (and elsewhere); and long after the TOSHIBA mark became internationally famous. First, Respondent’s registration and use of the disputed domain name for a pornographic website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. Second, Respondent’s use of the disputed domain name to host malware constitutes additional evidence that Respondent lacks any rights in the disputed domain name. Third, Respondent is not and has not been commonly known by TOSHIBA or the disputed domain name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name.
iii) First, Respondent’s registration and use of the disputed domain name for a website featuring adult content and malware constitute bad faith under UDRP ¶ 4(b)(iii) because Respondent’s activities disrupt Complainant’s business and tarnish Complainant’s TOSHIBA mark. Second, Respondent’s use of the disputed domain name for a pornographic website constitutes an independent ground of bad faith under prior UDRP decisions. Third, Respondent’s registration and use of the disputed domain name constitute bad faith under UDRP ¶ 4(b)(iv) because Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous TOSHIBA mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. Finally, there is no question that Respondent registered the disputed domain name in bad faith with knowledge of Complainant’s rights in the TOSHIBA mark given the international fame of Complainant’s TOSHIBA mark and the fact that the disputed domain name contains Complainant’s mark in its entirety.
B. Respondent
Respondent has not submitted a Response in this proceeding. The Panel notes that the disputed domain name was registered on January 13, 2016.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 (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.”).
Complainant asserts that Complainant's TOSHIBA mark enjoys unquestionable fame as a result of favorable public acceptance and recognition worldwide. Complainant contends that it owns numerous registrations for its TOSHIBA mark and/or variations thereof in more than 170 countries around the world, inter alia, U.S. registration number 1,405,380, registered on August 12, 1986. Complainant's U.S. registrations evidence Toshiba’s rights in the TOSHIBA mark as required by the UDRP. Panels have found that a registration with the USPTO is sufficient to establish rights in a trademark. See BGK Trademark Holdings, LLC & Beyoncé Giselle Knowles-Carter v. Chanphut / Beyonce Shop, FA 1626334 (Forum Aug. 3, 2015) (asserting that Complainant’s registration with the USPTO (or any other governmental authority) adequately proves its rights under Policy ¶ 4(a)(i).). Therefore, the Panel concludes that Complainant has demonstrated rights in the TOSHIBA mark under Policy ¶ 4(a)(i).
Complainant submits that the disputed domain name <china-toshiba.com> is confusingly similar to Complainant’s famous and federally registered TOSHIBA mark because it contains Complainant’s mark in its entirety. Complainant further alleges that the addition of the geographic term “China” to Complainant’s TOSHIBA mark in the disputed domain name is insufficient to distinguish the disputed domain name because the dominant portion of the disputed domain name is Complainant’s famous TOSHIBA mark. The Panel notes that the disputed domain name also contains a hyphen and the gTLD “.com.” Prior panels have specifically determined that the addition of a geographic term or abbreviation fails to distinguish the resulting domain name from the incorporated mark. For example, in Dollar Fin. Grp., Inc. v. Jewald & Assocs. Ltd., FA 96676 (Forum Apr. 6, 2001) the panel stated, “The addition of ‘US’ or ‘USA’ does not alter the underlying mark held by the complainant.” Prior panels have also concluded that the affixation of a gTLD is not a distinguishing feature in domain names as all domain names require some top-level domain. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). As the disputed domain name incorporates the mark in full and merely adds the geographic descriptor “China,” "hyphen," and non-distinguishing “.com” gTLD, the Panel finds the <china-toshiba.com> domain name confusingly similar to the TOSHIBA mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant avers that Respondent is not and has not been commonly known by TOSHIBA mark or the disputed domain name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on WHOIS information and a lack of evidence in the record indicating the contrary. See Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name.
Complainant alleges that Respondent registered the disputed domain name in January 2016, without Complainant's authorization and long after Complainant began using its TOSHIBA mark; long after Complainant registered its mark in the U.S. (and elsewhere); and long after the TOSHIBA mark became internationally famous. Complainant asserts that Respondent’s registration and use of the disputed domain name for a pornographic website does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under the UDRP. Complainant also asserts that Respondent’s use of the disputed domain name to host malware constitutes additional evidence that Respondent lacks any rights in the disputed domain name. The Panel observes that a respondent’s domain resolving to an adult-oriented website has been found to not be a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Dipaolo v. Genero, FA 203168 (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).) Panels have also found the use of the disputed domain name to host malware by a respondent to evince neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Ceridian Corp. v. Versata Software, Inc., FA 1259927 (Forum June 23, 2009) (finding that a respondent’s use of a disputed domain name to direct Internet users to a website which attempts to download computer viruses “failed to create any semblance of a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)”). Therefore, this Panel agrees that Respondent’s <china-toshiba.com> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii).
Therefore, the Panel concludes that Complainant has satisfied the requirement under Policy ¶¶ 4(a)(ii).
Complainant asserts that Respondent’s registration and use of the disputed domain name for a website featuring adult content and malware constitute bad faith under UDRP ¶ 4(b)(iii) because Respondent’s activities disrupt Complainant’s business and tarnish Complainant’s TOSHIBA mark. Complainant also asserts that Respondent’s use of the disputed domain name for a pornographic website constitutes an independent ground of bad faith under prior UDRP decisions. The Panel finds that Complainant's allegations are supported by the screenshots of the web pages to which the disputed domain name has been resolved. Panels have held that a respondent’s use of a domain to feature adult-oriented content is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). Accordingly, the Panel finds Respondent has acted in bad faith under Policy ¶ 4(b)(iv). Panels have also seen the use of the disputed domain name to distribute malware as evidence of bad faith. See Twitter, Inc. v. Moniker Privacy Services/ accueil des solutions Inc., D2013-0062 (WIPO April 1, 2013) (finding that the “distribution of malware through a deceptive domain name is in this Panel’s view to be regarded as deceptive and malicious conduct sufficient to show that a domain name has been registered and is being used in bad faith”). Therefore, the Panel sees that Respondent’s alleged use of malware is non-exclusive evidence of Respondent’s bad faith registration and use of the <china-toshiba.com> domain name pursuant to Policy ¶ 4(a)(iii).
Next, Complainant contends that Respondent’s registration and use of the disputed domain name constitute bad faith under UDRP ¶ 4(b)(iv) because Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous TOSHIBA mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website. As the Panel finds Complainant's evidence sufficient to show Respondent attempts to profit by creating such confusion, it finds that Respondent uses the <china-toshiba.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website).
Finally, Complainant contends that there is no question that Respondent registered the disputed domain name in bad faith with knowledge of Complainant’s rights in the TOSHIBA mark given the international fame of Complainant’s TOSHIBA mark and the fact that the disputed domain name contains Complainant’s mark in its entirety. Panels have found that when a respondent has actual knowledge of a complainant’s rights in a mark, the registration of a confusingly similar domain name is done in bad faith under Policy ¶ 4(a)(iii). See Bluegreen Corp. v. eGo, FA 128793 (Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights). The Panel infers from the fame of the Complainant's mark and the manner of use of the disputed domain name by Respondent that Respondent had actual knowledge of Complainant’s rights in the TOSHIBA mark at the time the disputed domain was registered, 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 <china-toshiba.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: July 28, 2016
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