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Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island [2004] GENDND 1492 (15 November 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Telephone Island

Case No. D2004-0711

1. The Parties

The Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation of Tokyo, Japan, represented by Shaw Pittman of McLean, Virginia, United States of America.

The Respondent is Telephone Island of Blakeslee, Pennsylvania, United States of America represented by Dwight Law Group of Costa Mesa, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <toshibastrata.com> is registered with Melbourne IT trading as Internet Name Worldwide.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 3, 2004. On September 7, 2004, the Center transmitted by email to Melbourne IT trading as Internet Name Worldwide a request for registrar verification in connection with the domain name at issue. On September 8, 2004, Melbourne IT trading as Internet Name Worldwide transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 September 14, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was October 4, 2004. The Response was filed with the Center on October 4, 2004.

The Center appointed Nathalie Dreyfus as the sole panelist in this matter on November 2, 2004. 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.

On October 8, 2004, the Complainant submitted a request for leave to reply to the answer of the Respondent:

“In particular, Complainant wishes to address the effect of Respondent’s disclaimer which was only added to Respondent’s web site after its receipt of the Complaint. In addition, Complainant wished to address Respondent’s nominative fair use defense, the full scope of which could not reasonably have been anticipated at the time the Complaint was filed.”

According to the Rules, paragraph 12, only the Panel may request further submissions: “In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” There is no provision in the Rules for a party to file an additional submission without authorisation from the Panel. The Complainant filed a further statement in order to seek consent from the Panel to submit its proposed Supplemental Submission which could not have been anticipated when the Complaint was filed, Custom Bilt Metals v. Conquest Consulting, WIPO Case No. D2004-0023, (April 6, 2004). It is clearly established that reasons to accept supplemental submissions may include the existence of new, pertinent facts that did not arise until after the submission of the Complaint, Top Driver, Inc. v. Benefits Benifits, WIPO Case No. D2002-0972, (January 7, 2003) or the need to rebut factual arguments that could not have been anticipated in the Complaint, Radan Corp. v. Rapazzini Winery, WIPO Case No. D2003-0353, (July 28, 2003).

The Panel in its sole discretion decided to admit and to consider the Supplemental Filing in rendering its decision. As a result, the Panel advised the Center that it wished to receive the Complainant’s Reply to the Response.

Having agreed to accept Complainant’s Supplemental Submission, the Panel must next decide whether to grant Respondent’s request to file a reply, in accordance with Paragraph 10(b) of the Rules which directs the Panel to treat the parties equally. The Panel concludes in its sole discretion that it is not appropriate to grant Respondent’s permission to file a reply to the Supplemental Submission.

The Panel has independently determined and agreed with the assessment of the Center that the Complaint meets the formal requirements of the Rules and the Supplemental Rules.

4. Factual Background

A. The Complainant

The Complainant was incorporated under the laws of Japan under the name of Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation. The Complainant has substantially and continuously used the trade name and the trademark TOSHIBA since at least 1952, throughout most of the world. It is the owner of eleven subsisting United States registrations of the mark TOSHIBA, some of which are in stylized form, covering a wide range of goods in classes 1, 7, 9, 10, 11, 12, 16, 21 and 25. The Complainant is also the owner of two subsisting United States registrations for STRATA for “electronic key telephones and key telephone unit” since at least 1979. The date of issue of each of these registrations is prior to the date of registration of the domain name at stake.

The Complainant learned of the existence of the domain name in the hands of the Respondent which resolves to a website selling TOSHIBA telephone systems, TOSHIBA telephones and related telephone equipment as well as installation, maintenance and service contracts.

On June 16, 2004, the Complainant sent a cease and desist letter via express mail to the Respondent requesting that it immediately cease and forever refrain from any and all use of the domain name and mark <toshibastrata.com> and promptly transfer ownership of the domain name. The Complainant did not receive any answer to its cease and desist letter from the Respondent.

B. The Respondent

The Respondent, a business based in Pennsylvania, registered the domain name on September 25, 2002. Said domain name resolves to a website which exclusively offers for sale Toshiba telephones, telephone systems and accessories. Respondent does not sell any other brand of telephones or telephone systems on its website.

After receiving the Complaint, Respondent published a disclaimer on its website stating that it has no affiliation with the Complainant’s marks.

5. Parties’ Contentions

A. The Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are applicable to the domain name subject of the dispute.

In relation to element (i) of paragraph 4(a) of the Policy, the Complainant contends that the domain name <toshibastrata.com> is confusingly similar to Complainant’s marks TOSHIBA and STRATA in that it is simply merges the Complainant’s two trademarks.

In relation to element (ii) of paragraph 4(a) of the Policy, the Complainant contends that the Respondent has no rights or legitimate interests in respect of the domain name <toshibastrata.com>. The Complainant contends that the Respondent is neither an authorized distributor of TOSHIBA STRATA products nor has it been licensed to use the mark TOSHIBA STRATA. The domain name <toshibastrata.com> resolves to a website offering for sale a wide variety of TOSHIBA telephone equipment so that Complainant’s customers are likely to be confused as to the source of the Internet retailer and to believe the site is that of Complainant or an authorized dealer of Complainant’s products. Furthermore, the Complainant contends that the Respondent has not been granted permission to use the TOSHIBA and STRATA trademarks and cannot claim it is making a noncommercial or fair use of the domain name.

In relation to element (iii) of paragraph 4(a) of the Policy, the Complainant contends that evidence of bad faith registration and use is established by the following circumstances. By virtue of the Complainant’s substantial and continuous use worldwide of the marks TOSHIBA and STRATA, the Respondent had knowledge of the Complainant’s rights in the marks. In addition, by registering and using the domain name, the Respondent prevented the Complainant from using the domain name that incorporates its marks TOSHIBA and STRATA, thus interfering with and disrupting Complainant’s ability to promote its own products. In addition, Respondent’s failure to respond to a demand letter sent on behalf of the Complainant and its subsidiary is another element establishing bad faith. By using the domain name to resolve to a web page, the Respondent prevented Complainant from promoting its own products and created a likelihood of confusion with Complainant’s marks. Since Respondent is not licensed to use the marks, on the one hand, the Complainant is harmed as it has no control over the use of the marks; on the other hand, the public is likely to be confused as to the source of the goods offered.

B. The Respondent

The Respondent filed a response requesting the panel to deny the remedies requested by the Complainant and disputes that the three elements requested by paragraph 4(a) of the Policy are established.

In relation to element (i) of paragraph 4(a) of the Policy, the Respondent does not dispute Complainant’s rights in the marks TOSHIBA and STRATA. In addition, Respondent concedes that it is not an authorized dealer of the Complainant. Respondent contends that it is fairly using the domain name to identify products offered for sale on its web site and especially as the web site contains a disclaimer of any affiliation with the Complainant in order to avoid any risk of confusion.

In relation to element (ii) of paragraph 4(a) of the Policy, the Respondent asserts legitimate interests in the domain name on two grounds. The first ground is that Respondent made use of the domain name since September 2002, and thus prior to notice of a dispute in connection with a bona fide offering of goods, especially TOSHIBA telephones, telephone systems and accessories. The second ground is that Respondent is making a fair use of Complainant’s marks when using the domain name to offer genuine products.

In relation to element (iii) paragraph 4(a) of the Policy, Respondent contends that its web site is devoted entirely to the sale of Complainant’s products. Besides, Respondent is not known as a “cybersquatter” as it has never offered to sell the domain name to the Complainant nor to anyone else and is not engaged in a pattern of cybersquatting by registering and preventing trademark owners from reflecting their marks in corresponding domain names. In addition, immediately after receiving the Complaint, Respondent published a disclaimer on the first page of its web site stating that “www.toshibastrata.com is not affiliated with Toshiba America/TAISsd/Toshiba America Information Systems INC.”

Said disclaimer was a diligent effort to avoid any risk of confusion with the Complainant’s mark. Finally, the Respondent contends that it did not register the domain name to block the Complainant from reflecting its marks in a corresponding domain name, as the later owns the domain names <toshiba.com> and <strata.com>.

C. Complainant’s Supplemental Submission

The Complainant contends that Respondent relies on the fact that it added a disclaimer to its website in order to dispel confusion, but that said disclaimer was only added after Respondent received the Complaint. As a result, Respondent cannot rely upon the disclaimer to support its defense. In addition, said disclaimer is placed at the bottom of Respondent’s home page following the products, which makes it ineffective.

6. Discussion and Findings

The Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondent of the filing of the Complaint and commencement of this administrative proceeding.

According to paragraph 4(a) of the Policy, the Complainant must assert and prove each of the following:

(i) that Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that Respondent has no rights or legitimate interests in respect of the domain name; and

(iii) that the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The two components of the disputed domain name are identical to the marks TOSHIBA and STRATA of the Complainant in that its simply merges Complainant’s marks. The Panel considers that the domain name <toshibastrata.com> is confusingly similar to the Complainant’s marks.

The Panel finds that Policy, paragraph 4(a)(i) has been satisfied.

B. Rights or Legitimate Interests

The Policy, paragraph 4(c)(i) provides that a use is legitimate if, before any notice of the dispute, Respondent used, or made demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.

The Complainant has not authorized Respondent to use its distinctive marks TOSHIBA and/or STRATA; therefore, Respondent is not an authorized distributor nor has it been licensed to use the marks TOSHIBA and/or STRATA. Rights or legitimate interests are not established when reselling or promoting genuine goods by reference to the mark, but without the authorization of the mark’s owner.

In Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, (November 6, 2001) and Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946, (February 13, 2003), the Panel established the conditions to comply with in order to establish a bona fide offering of goods or services pursuant to paragraph 4(c)(i).

The minimum cumulative requirements are as follows:

- Respondent must actually be offering the marked goods or can show demonstrable preparations to use the domain name in connection with a bona fide offering. World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306, (January 24, 2001). Respondent has complied with this requirement; and

- Respondent must use the website to promote and sell only the marked goods to the exclusion of other marked goods in order to avoid baiting Internet users and then switching them to other goods. Kabushiki Kaisha Toshiba d/ba Toshiba Corporation v. ToshibaDealer.com a/k/a John Taylor, NAF Case No. FA0407000297774, (August 30, 2004). Respondent’s website is devoted entirely to the sale of Complainant’s products, thus Respondent has complied with this requirement; and

- the website must accurately disclose the registrant’s relationship with the mark’s owner; it may not, for example, falsely suggest that it is the trademark owner or that the website is the official site if, in fact, it is only one of many sales agents. Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211, (April 25, 2001).

As a result, there is no bona fide offering where a website’s use of Complainant’s logo, and lack of any disclaimer, suggest that the website is the official website. The Panel is of the opinion that the presentation of Respondent’s website is likely to mislead consumers into believing the site is operated or endorsed by or affiliated with Complainant. In particular, the dominant position of the representation of a telephone, together with the term “Toshiba Strata,” without any statement on the first page of the website as to the true ownership of the site, create a strong impression that the site is an official site of Complainant for TOSHIBA STRATA products.

Turning to the disclaimer, the Panel finds that Respondent’s disclaimer is not sufficient to form an effective defence. The disclaimer is to be found towards the bottom of the home page, itself, but nevertheless, the disclaimer is still below the place where a customer would click to order Respondent’s products and is not perceptible immediately by the public. Said disclaimer is not effective. Pliva, Inc. v. Eric Kaiser, WIPO Case No. 2003-0316, (June 9, 2003). In addition, the disclaimer was published only after the receipt of the Complaint. Respondent cannot argue that he did not intentionally adopt the domain name so as to benefit from the goodwill of the TOSHIBA and STRATA marks.

- Respondent must not try to corner the market on all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525, (January 29, 2001). Complainant could easily have the ambition to promote and sell its products through a domain name reflecting the association of the two marks TOSHIBA and STRATA.

The Panel finds that Policy, paragraph 4(a)(ii) has been satisfied.

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:

For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.

It should be noted that the circumstances of bad faith are not limited to the above.

Respondent has registered the domain name in order to prevent the Complainant from reflecting the marks TOSHIBA and STRATA in a corresponding domain name. The fact that Complainant already owns many domain names and, in particular, <toshiba.com> and <strata.com> is irrelevant, as Complainant is the owner of said trademarks. Such use of the disputed domain name is not a fair use of Complainant’s mark. Pursuant to Policy, paragraph 4(b)(ii), this constitutes evidence of both bad faith registration and bad faith use.

Respondent has offered no evidence that it has been commonly known by the domain name. Besides, Respondent has no prior business association with Complainant. The Panel is satisfied that Respondent is using the disputed domain name intentionally to attempt to attract, for commercial gain, consumers to its website by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation or endorsement of his website. Respondent’s domain name diverts Internet users wishing to search Complainant’s well known marks to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’s marks. Pursuant to Policy, paragraph 4(b)(iv), this constitutes evidence of both bad faith registration and bad faith use, for the purposes of paragraph 4(a)(iii).

The Panel finds that Policy, paragraph 4(a)(iii) 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 <toshibastrata.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist

Dated: November 15, 2004