page 1WIPO Arbitration and Mediation CenterADMINISTRATIVE PANEL DECISIONKabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu XindongCase No. D2003-04081. The PartiesThe Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation, Tokyo,Japan, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP,United States of America.The Respondent is Liu Xindong, Shandong, China.2. The Domain Name and RegistrarThe disputed Domain Name is registered with BulkRegister.com.3. Procedural HistoryThe Complaint was filed with the WIPO Arbitration and Mediation Center(the “Center”) on May 28, 2003. On the same day, the Center transmitted by email toBulkRegister.com a request for registrar verification in connection with the omainName at issue. On May 29, 2003, BulkRegister.com transmitted by email to the Centerits verification response confirming that the Respondent is listed as the registrant andproviding the contact details for the administrative, billing, and technical contact. TheCenter verified that the Complaint satisfied the formal requirements of the UniformDomain Name Dispute Resolution Policy (the “Policy”), the Rules for UniformDomain Name Dispute Resolution Policy (the “Rules”), and the WIPO SupplementalRules for Uniform Domain Name Dispute Resolution Policy(the “Supplemental Rules”). Payment in the required amount to the Center has beenmade by the Complainant.In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified theRespondent of the Complaint, and the proceedings commenced on June 5, 2003. Inaccordance with the Rules, paragraph 5(a), the due date for Response wasJune 25, 2003. The Respondent did not submit any response. Accordingly, the Centernotified the Respondent’s default on June 26, 2003.page 2The Center appointed Susanna H.S. Leong as the sole panelist in this matter onJuly 2, 2003. The Panel finds that it was properly constituted. The Panel has submittedthe Statement of Acceptance and Declaration of Impartiality and Independence, asrequired by the Center to ensure compliance with the Rules, paragraph 7.This dispute is properly within the scope of the UDRP as the registration agreement forthe Domain Name incorporates the UDRP.The language of this proceeding is English as the BulkRegister.com registrationagreement is in English.4. Factual BackgroundThe Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation, amultinational company in the field of electronic, electrical and telecommunicationsproducts. The Complainant designs, manufactures, distributes and sells a wide varietyof products under the trademark and trade name TOSHIBA. It has used its TOSHIBAtrademark and trade name for more than 60 years and it has invested substantialfinancial resources over the years to advertise and promote the company and itsTOSHIBA-branded products and services in countries all over the world.The Complainant has long maintained a significant presence in China. The name andmark TOSHIBA in Chinese is 东芝. The phonetic spelling of 东芝 in Chinese usingLatin characters is “dongzhi.” The Complainant has sold its TOSHIBA-branded and东芝-branded products in China for decades. Its Chinese website showcasing itsproducts and services, including telephones, is located at the Domain NameTOSHIBA.COM.CN. The Complainant has operated its Chinese website for manyyears and its 东芝 mark is displayed on its Chinese website in the upper left handcorner as “TOSHIBA 东芝”.The Complainant has registered its TOSHIBA mark and/or variations of that mark inmore than 150 countries around the world and in China, it has registered its marksTOSHIBA, TOSHIBA and Design, and 东芝. The Complainant’s registration for its东芝 mark in China covers electronic goods in International Class 9, paper goods inInternational Class 16 and house wares in International Class 21. Its trademarksTOSHIBA and 东芝have been widely promoted to the general consuming public inChina and the rest of the world for many years and therefore, the TOSHIBA and东芝marks are widely known and recognized in China and beyond.The Respondent has registered the Domain Name onFebruary 15, 2001.The Domain Name is the Chinese phoneticequivalent of the Complainant’s 东芝 mark because “东芝” is pronounced “dongzhi”and the phonetic spelling, or Latin transliteration, of 东芝 in China is “dongzhi”.Besides using the transliteration of the Complainant’s东芝 mark in the Domain Name,the Respondent also displays the 东芝 mark on his website in a trade name thattranslates into English as “Toshiba Network Online”.The Respondent’s “www.dongzhi.net” website promotes and/or offers products andservices that are directly competitive or closely related to those offered by theComplainant. In addition to advertising the Respondent’s software development,website development, and advertising services, the Respondent also sells directlypage 3competing telecommunications goods (i.e. telephones) on the “www.dongzhi.net”website and promotes a future website regarding the Respondent’s telephone modelsand pricing. The Respondent’s “www.dongzhi.net” website also advertises theRespondent’s installation services for ADSL, a type of broadband Internet connectionthat could be used with the Complainant’s computers. The Respondent’s“www.dongzhi.net” website allows Internet users to post questions or comments and atleast three Internet users have posted questions regarding the Complainant’s productson the “www.dongzhi.net” website.5. Parties’ ContentionsA. ComplainantThe Complainant contends that the Domain Name is confusingly similarto the Complainant’s 东芝 mark because it is the phonetic equivalent of theComplainant’s 东芝 mark in China and the transliteration of 东芝 mark into Latinscript.It is the Complainant’s contention that the Respondent is not and has not beencommonly known by the Domain Name. The Respondent’s use of a trade name thatincludes 东芝, which directly copies the Complainant’s famous 东芝 mark, in no waydemonstrates any legitimate interest of the Respondent in the Domain Name. TheRespondent cannot justify its misappropriation of the Complainant’s famous 东芝trademark in a Domain Name simply by also using the Domain Name as part of a tradename or business name. If that were the case, cybersquatters could freely pirate thetrademarks of others as domain names simply by also using the disputed domain nameas their trade name. The Respondent is not making legitimate noncommercial or fairuse of the Domain Name, without intending to mislead and divert consumers or totarnish the Complainant’s 东芝 mark for commercial gain. Because the Respondentregistered and uses the Domain Name to infringe the Complainant’s rights in its 东芝mark, to trade off of the Complainant’s goodwill, and to usurp Internet traffic rightlyintended for the Complainant, the Respondent’s registration and use of the DomainName do not and cannot constitute a bona fide offering of goods or services pursuant toSection 4(c)(i) of the UDRP. The Complainant further contends that the Respondent’s registration and use of theDomain Name meet the bad faith element set forth in Section 4(b)(iv) of the UDRP.Specifically, the Respondent uses the Domain Name to intentionally attract, forcommercial gain, Internet users to his website by creating a likelihood of confusionwith the Complainant’s 东芝 mark as to the source, sponsorship, affiliation, and/orendorsement of the Respondent’s website and the products advertised, promoted,and/or sold on Respondent’s website. The Respondent’s registration and use of theDomain Name also meets the bad faith element set forth in Section 4(b)(iii) of theUDRP. The Respondent registered and uses the Domain Name to sell directlycompeting products, which disrupts the Complainant’s business in bad faith. Finally,the Respondent acted in bad faith because he was on notice of the Complainant’s rightsin its 东芝 mark when he registered the Domain Name and used the Domain Name totrade on the Complainant’s goodwill. This is because the Respondent knew of theComplainant’s 东芝 mark, his unauthorized use of the Domain Name for commercialgain suggests opportunistic bad faith given the widespread use and fame of theComplainant’s 东芝 mark and name. page 4B. RespondentThe Respondent did not reply to the Complainant’s contentions.6. Discussion and FindingsGeneralAccording to paragraph 4(a) of the Policy, the Complainant must prove that: (i) The Domain Name is identical or confusingly similar to a trade mark orservice mark in which the Complainant has rights; and(ii) The Respondent has no rights or legitimate interest in respect of theDomain Name; and(iii) The Domain Name has been registered in bad faith and is being used in badfaith.Identical or confusingly similarThe Complainant is the registered owner of its TOSHIBA mark and/or variations ofthat mark in more than 150 countries around the world. The Complainant is also theregistered owner of its marks TOSHIBA, TOSHIBA and Design and 东芝 in China. Onthe evidence adduced before this administrative proceeding, the Panel finds that theChinese phonetic equivalent of the Complainant’s 东芝 mark is “dongzhi” as this is thehow the two Chinese characters “东芝” are pronounced in the Chinese language.Furthermore, the Panel also finds that the Latin script transliteration of “东芝” in Chinais “dongzhi”, according to the Han Yu Pin Yin (“汉语拼音”) way of transcribingChinese characters into the Latin script. Since the Complainant is the registered ownerof the mark “东芝” in China and this mark is widely known by the general consumingpublic in the Chinese market for many years, the Panel thus finds that the Complainantalso has rights to the transliteration of the mark “东芝” – “dongzhi” in China. Accordingly, the Panel finds that the Domain Name is confusinglysimilar to the Complainant’s 东芝 mark. This is because (1) the Domain Name indispute is identical to the transliteration of the mark 东芝, (2) the Domain Name indispute and the mark 东芝 is phonetically similar in the Chinese language and (3) theComplainant has adduced evidence before this Administrative Proceedings to show thatthe Complainant’s mark TOSHIBA is widely recognized as “东芝” by the public andInternet users in China. See Bunkasha Publishing Co. Ltd. v. Xman Productions (WIPOCase No. D2002-0781).Respondent’s Rights or Legitimate InterestsParagraph 4(c) of the Policy sets out a non-exhaustive list of circumstances, any one ofwhich if found by the Panel to have been proved shall demonstrate the Respondent’srights or legitimate interests in respect of the domain names.However, the need for the Respondent to demonstrate anything only arises once theComplainant has shown a prima facie case, the burden of proof under paragraph 4(a)being on the Complainant.page 5The essence of the Complainant’s case is that the wide spread fame of its TOSHIBAand 东芝 marks in China at the date of registration of the Domain Name was such thatthe Respondent must have been aware of it. Given this fact, the act of the Respondentregistering and using the Domain Name constitutes an infringement ofthe Complainant’s rights in its 东芝 trade mark and cannot constitute a bona fideoffering of goods or services pursuant to Section 4(c)(i) of the UDRP. Accordingly, theRespondent had the Complainant in mind at all material times and has done what he hasdone with a view to trading on the back of the Complainant’s goodwill, leadingconsumers to believe that the website to which the Domain Name is connected isassociated with the Complainant in some way. Furthermore, the Respondent is not andhas not been commonly known by the Domain Name. The Respondent did not adduceevidence to show or explain his choice in the Domain Name. The Panel finds the Complainant’s case persuasive. The Respondent has a case toanswer. However, the Respondent has failed to submit a Response to the Complaint filedagainst him. In particular, the Respondent has failed to make submissions todemonstrate that he has rights or legitimate interests to the domain names. Inaccordance to the Rules for Uniform Domain Name Dispute Resolution Policy,paragraph 14, the Panel thus draws such inferences as she considers appropriate, whichare that the Respondent is unable to adduce evidence to show cause that he has rights orlegitimate interests to the said Domain Name.Accordingly, the Panel finds that no evidence has been adduced to demonstrate that theRespondent has rights or legitimate interests to the Domain Name in dispute,particularly in relation to:(i) prior use of or demonstrable preparations to use the domain name or a namecorresponding to the domain name in connection with a bona fide offeringof goods or services by the Respondent;(ii) the Respondent having been commonly known by the domain name, even ifno trademark or service rights have been acquired;(iii) the Respondent is making a legitimate noncommercial or fair use of thedomain name, without intent for commercial gain to misleadingly divertconsumers or to tarnish the trademark or service mark at issue.The Panel thus concludes that the Respondent does not have any rights or legitimateinterests in the Domain Name in question. Registered and Used in Bad FaithFor the same reasons the Panel finds that the overwhelming probability is that theRespondent selected the Domain Name because of its widespread fame in the field ofelectronic, electrical and telecommunications products in China and specifically to usethe Domain Name to attract, for commercial gain, Internet users to his website bycreating a likelihood of confusion with the Complainant’s 东芝 mark as to the source,sponsorship, affiliation and or endorsement of the Respondent’s website and theproducts advertised, promoted and or sold on the website. This is substantiated by thefollowing:page 6(i) The Respondent has notice of the Complainant’s rights in its 东芝 mark when heregistered the Domain Name and used the Domain Name;(ii) The Respondent sells products that are similar and are in direct competition withthe Complainant using the Domain Name in question;(iii) The Respondent has not offered any plausible explanations on his choice of theDomain Name;(iv) There is evidence, adduced by the Complainant before this AdministrativeProceeding, which shows Internet users have mistakenly believed that theRespondent’s site is affiliated or connected to the Complainant as they haveposted questions regarding the Complainant’s products on the Respondent’s“www.dongzhi.net” website. Accordingly, the Panel finds that the Respondent registered the Domain Name in badfaith and is using it in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv)of the Policy. 7. DecisionFor all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15of the Rules, the Panel orders that the Domain Name be transferred tothe Complainant. Susanna H.S. LeongSole PanelistDated: July 11, 2003
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