The Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland (“UK”).
The Respondent is Kristen Jackson of Murfreesboro, Tennessee, United States of America (“US”). 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with Network Solutions, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 23, 2014. On May 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On May 23, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
The Center verified that 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 May 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was June 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 17, 2014.
The Center appointed Linda Chang as the sole panelist in this matter on July 7, 2014. 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 a Japanese company founded in 1875 and a member of the Toshiba Group, which engages in a wide variety of businesses ranging from information processing and telecommunications to industrial machinery, electronic components and materials, medical equipment, plant engineering, and home appliances.
The Complainant has registered its TOSHIBA mark and/or variations of that mark in more than 170 countries around the world, inter alia, US Trademark Registration No. 1663232, US Trademark Registration No. 1923358, UK Trademark Registration No. 1177788, European Union (“EU”) Trademark Registration No. 000185264, China Trademark Registration No. 1000143, and Japan Trademark Registration No. 1252478.
The Domain Name was registered on March 13, 2014 and is directing to an adult website. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical to a trademark or service mark in which it has rights. The Complainant has trademark rights in the TOSHIBA mark, and the word “toshiba” contained in the Domain Name is identical to the TOSHIBA mark.
The Complainant further contends that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant claims that the Respondent is in no way authorized by or affiliated with the Complainant. The Respondent does not use the Domain Name for bona fide offering of goods or services, and the use is neither legitimate nor noncommercial. The Respondent has not been commonly known by the Domain Name on any legitimate grounds.
The Complainant finally contends that the Domain Name was registered and is being used in bad faith. The Complainant asserts that the Respondent had constructive and/or actual notice of the Complainant’s rights to the TOSHIBA mark at the time of registration. By the use of the mark TOSHIBA in the Domain Name, the Respondent intentionally attempted to use the reputation of the Complainant so that Internet users may be deceived. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar
Trademark registrations of the TOSHIBA mark held by the Complainant includes, without limitation, the followings:
- US Trademark Registration No. 1663232, registered on November 5, 1991;
- US Trademark Registration No. 1923358, registered on October 3, 1995;
- UK Trademark Registration No. 1177788, registered on July 2, 1982;
- EU Trademark Registration No. 000185264, registered on July 22, 1999;
- China Trademark Registration No. 1000143, registered on May 7, 1997;
- Japan Trademark Registration No. 1252478, registered on February 21, 1977.
The Panel is satisfied that the Complainant has trademark rights in the TOSHIBA mark and its trademark rights long predate the Respondent’s registration of the Domain Name.
The Domain Name consists of “toshiba”, hyphen “-”, “vcb” and “.com”. The Panel views that “toshiba” is identical to the Complainant’s TOSHIBA trademark, and the addition of the hyphen “-” and a meaningless term “vcb” could not avoid a finding of confusing similarity.
As “.com” being the generic Top-Level Domain (gTLD) could generally be ignored when making the comparison, the Panel accordingly finds the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy and the Domain Name is confusingly similar to the Complainant’s TOSHIBA trademark. B. Rights or Legitimate Interests
Based on the evidence presented on record, the Panel agrees that there is no indication that the Respondent is making legitimate noncommercial or fair use of the Domain Name, or that the Respondent demonstrated, before notice to it of the dispute, use of or demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services.
In the circumstances where the Respondent seems to have no trademark rights in the TOSHIBA mark, and the Complainant contends that the Respondent is not licensed to use its trademarks, nor is the Respondent in any way associated with the Complainant or other of the Complainant’s group of companies, the Panel is satisfied that the Respondent does not have rights or legitimate interests in respect of the Domain Name.
It is well-established by UDRP precedents that once a complainant establishes a prima facie case that a respondent lacks rights or legitimate interests in a domain name, the burden of production shifts to the respondent. See International Hospitality Management - IHM S.p.A. v. Enrico Callegari Ecostudio,WIPO Case No. D2002-0683. The Respondent however has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the Domain Name.
The Panel therefore holds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy and the Respondent has no rights or legitimate interests in the Domain Name. C. Registered and Used in Bad Faith
The Panel agrees that the TOSHIBA mark is distinctive and enjoys unquestionable fame worldwide. The Panel finds it highly unlikely that the Respondent would not have had actual notice of the Complainant’s trademark at the time of registering the Domain Name, and thus concludes that the Respondent’s awareness of the TOSHIBA mark at the time of registration amounts to opportunistic bad faith registration. See Deutsche Bank AG v. Diego-Arturo Bruckner,WIPO Case No. D2000-0277.
The Complainant has introduced sufficient evidence to demonstrate that the Respondent is using the Domain Name in bad faith, including using the Domain Name to host an adult website. The Panel holds that the Respondent, by using the Domain Name, is trying to profit from the diversion of Internet users by confusion between the Domain Name and the Complainant. The Respondent’s purpose of registering the Domain Name is to trade on the fame of the TOSHIBA trademark, in order to attract, for commercial gain, Internet users to the corresponding websites under the Domain Name, by creating a likelihood of confusion with the Complainant and the TOSHIBA trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or of a product or service on the Respondent’s website.
Based on the above facts and reasons, the Panel finally concludes that the Respondent registered and is using the Domain Name in bad faith. 7. Decision
For 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.
Linda Chang
Sole Panelist
Date: July 29, 2014
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