WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. s Jacob Brian Case No. D2009-0959 1. The Parties
The Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation of Minato-Ku, Tokyo, Japan represented by Howrey LLP, United States of America.
The Respondent is s Jacob Brian of Fort Archer, Washington, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with Melbourne IT Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 16, 2009. On July 17, 2009, the Center transmitted by email to Melbourne IT Ltd a request for registrar verification in connection with the disputed domain name. On July 22, 2009, Melbourne IT Ltd transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 24, 2009. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 27, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was August 16, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on August 17, 2009.
The Center appointed Dawn Osborne of Palmer Biggs Legal as the sole panelist in this matter on August 19, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. 4. Factual Background
The Complainant is the owner of registered trade marks for TOSHIBA in the United States and across the world and has used the mark in relation to computers and computing services in the United States since 1952.
The domain name was registered on September 4, 2002. The Respondent is not using the domain name. 5. Parties' Contentions A. Complainant
The Complainant's contentions can be summarised as follows:
The Complainant has expended millions of dollars in advertising the TOSHIBA trade mark in the United States. Toshiba was founded in 1875, and today operates a global network of more than 730 companies, with 199,000 employees worldwide and annual sales surpassing USD67 billion (FY 2008). Accordingly, the Complainant has rights in the mark TOSHIBA sufficient for the purpose of Policy.
The Complainant has registered its TOSHIBA trade mark and service mark and/or variations of this mark in more than 150 countries around the world. The Complainant owns United States Registration No. 1,663,232 of the mark TOSHIBA, which issued on November 5, 1991 for “floppy disks and lap top computers”. In addition, the Complainant is the owner of a number of registered trade marks in the United States for the mark TOSHIBA, covering a wide variety of goods and services including consumer electronic goods in International Class 9.
The Complainant has on numerous occasions successfully enforced its rights in the mark TOSHIBA under the UDRP. In each of these decisions the panels recognized the Complainant's rights in the mark TOSHIBA and ordered the domain names at issue transferred to the Complainant.
The domain name registered by the Respondent is confusingly similar to the Complainant's mark TOSHIBA, and is otherwise identical to the mark TOSHIBA, differing only in the addition of the descriptive term “laptops”. The Complainant has used the TOSHIBA mark for laptop computers for over twenty years, and laptop computers are a core product of the Complainant's business. Additionally, the Complainant owns United States Registration No. 1,663,232 of the mark TOSHIBA for laptop computers. Accordingly, the addition to the domain name of the word “laptops”, which has an obvious relationship to the Complainant's business, adds to the conceptual similarity between the domain name and the Complainant's TOSHIBA mark. In addition, the Respondent's domain name is both visually and phonetically similar to the TOSHIBA mark, further heightening the likelihood of confusion. The Respondent's use of the TOSHIBA name and mark in the domain name at issue erroneously leads the Complainant's customers to believe the domain name is somehow associated with, endorsed by or sponsored by the Complainant.
The Respondent has no rights or legitimate interests in respect of the domain name . the Respondent does not use the domain name for a world wide website, email, or any other commonly addressable Internet function. Instead, the Respondent “passively holds” the domain name and currently offers neither goods nor services through a website. There is no evidence the Respondent has made demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services. Panels have held such passive use “does not rise to a level, under Policy Section 4(c), to constitute a legitimate non-commercial or fair use without any intent to misleadingly divert consumers or tarnish the trademark or service mark at issue”. See Pfizer Inc. v. Order Viagra Online,WIPO Case No. D2002-0366 (July 11, 2002) (no rights or legitimate interests were found when the disputed domain name was inactive). See also Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (February 18, 2000).
The Respondent is neither an authorized dealer nor a distributor of TOSHIBA products or services and he has not been licensed or otherwise given permission to use the name and mark TOSHIBA by the Complainant.
Furthermore, the Respondent is not commonly known by the domain name , does not do business under the name and mark TOSHIBA, and cannot legitimately claim he is making a noncommercial or fair use of the domain name because it is being passively held.
The Complainant's mark TOSHIBA is a coined term, and is well-known and famous throughout the world. The Respondent undeniably was aware of the Complainant's rights in the trade mark TOSHIBA when registering the domain name given that the domain name incorporates the TOSHIBA mark in its entirety in combination with the descriptive term “laptops”, which identifies core goods sold by the Complainant under the TOSHIBA mark. Accordingly, it can be inferred that the Respondent registered the domain name in bad faith in order to create an association with the mark as a means of attracting users to a future website.
In addition, it is well established a respondent's passive holding of a domain name may constitute bad faith use. The seminal decision on point is Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003 (February 18, 2000). In Telstra, the panel held that passive holding of a domain name may amount to bad faith use, stating:
“The relevant issue is not whether the Respondent is undertaking a positive action in bad faith in relation to the domain name, but instead whether, in all the circumstances of the case, it can be said that the Respondent is acting in bad faith. The distinction between undertaking a positive action in bad faith and acting in bad faith may seem a rather fine distinction, but it is an important one. The significance of the distinction is that the concept of a domain name ‘being used in bad faith' is not limited to positive action; inaction is within the concept. […] It is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith.”
The Complainant has used the mark TOSHIBA in the United States and throughout the world substantially and continuously for over 55 years. Many United States registrations of the mark TOSHIBA have become incontestable under United States law, which is further evidence of the strength of the mark throughout the United States. The significant goodwill and value of the mark TOSHIBA is understood by the Respondent and undoubtedly is what prompted his registration of the domain name . Given the fame of the mark TOSHIBA, it is clear the Respondent registered the domain name with full knowledge of the Complainant's rights in the TOSHIBA trade mark and it is difficult to imagine the Respondent's motive in registering the domain name was anything other than to disrupt the Complainant's business activities by frustrating its ability to place content about TOSHIBA-branded laptops at a website accessible via . Whatever the Respondent's motive in registering the domain name, it is clear he is trading off the significant good will and value in the TOSHIBA trade mark. Clearly, use of the domain name will create a likelihood of confusion with the Complainant's famous mark. Since the Respondent is not licensed or otherwise authorized to use the mark TOSHIBA, the Complainant is harmed because its valuable trademark and reputation are being placed into the hands of the Respondent over which the Complainant has no control. The public is harmed because it is likely to be confused as to the source of any future website developed under the domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(1) The domain name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(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. A. Identical or Confusingly Similar
Apart from the “.com” suffix which is not taken into account for the purposes of the Policy, the domain name consist of the Complainant's TOSHIBA registered mark and the generic word (in such context) “laptops” used as a prefix. The addition of the word “laptops” does not serve to distinguish the domain name from the Complainant's mark, but indeed compounds the likelihood of confusion between the domain name and the Complainant's trade mark as the Complainant sells computers including laptops. The Panel finds that the domain name is confusingly similar to the Complainant's registered trade mark TOSHIBA and as such satisfies paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
The Respondent has not filed a Response (i.e., it has not shown any circumstances under the Policy paragraph 4(c) which may apply to its favour) and does not appear to have any rights or legitimate interests in the domain name. The Complainant has indicated that it has not endorsed the Respondent in any way and the Respondent's business has no obvious connection with the designation “toshibalaptops”. As such the Complainant has satisfied paragraph 4(a)(ii) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Rules sets out four non-exclusive criteria which shall be evidence of the registration and use of a domain name in bad faith. This case does not fall within these criteria but they are non exclusive.
The reference to laptops in the domain name shows that the Respondent is aware of the Complainant and its business and by registering the name the Respondent is seeking to take advantage of the Complainant's trade mark. No doubt any website connected to the domain name would drive traffic to third party goods and services in a confusing manner for commercial gain and would be disruptive to the Complainant's business. The Panel agrees with the Complainant that passive use can amount to bad faith and it does in this case. Accordingly, the Panel finds that the domain name has been registered and used in bad faith and paragraph 4(a)(iii) of the Policy has been satisfied. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Dawn Osborne
Sole Panelist
Dated: August 27, 2009
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