DECISION

Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ToshibaDealer.com a/k/a John Taylor

Claim Number:  FA0407000297774

PARTIES

Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (“Complainant”), represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is ToshibaDealer.com a/k/a John Taylor (“Respondent”), Earls Court, London, NH N7 9PD, GB.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toshibadealer.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

James A. Crary as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on July 16, 2004; the Forum received a hard copy of the Complaint on July 19, 2004.

On July 16, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <toshibadealer.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On July 21, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 10, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@toshibadealer.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On August !6, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James A. Crary 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."  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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <toshibadealer.com> domain name is confusingly similar to Complainant’s TOSHIBA mark.

2. Respondent does not have any rights or legitimate interests in the <toshibadealer.com> domain name.

3. Respondent registered and used the <toshibadealer.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, is a global leader in the field of electronic and electrical products.  Complainant is a multinational company that designs, manufactures, markets and sells a wide variety of products under the trademark and trade name TOSHIBA. 

Complainant has used its TOSHIBA trademark and trade name for more than sixty years, including in the United Kingdom, where Respondent is purportedly located, marketing its products globally through an expansive network of authorized dealers located throughout the world.  Complainant also promotes its products and services under the TOSHIBA mark on the Internet.  For more than a decade, TOSHIBA has used its websites as worldwide information and distribution channels for its business. 

Complainant has registered its TOSHIBA mark and/or variations of its mark in more than 150 countries around the world, including in the United States and United Kingdom.  Complainant owns numerous trademark registrations for its TOSHIBA mark in the United Kingdom, including the following registrations, all of which long predate Respondent’s registration of the domain name on April 19, 2002 (Reg. No. 794,336 issued August 17, 1960, Reg. No. 794,337, issued August 17, 1960, Reg. No. 942,924, issued March 11, 1970, Reg. No. 972,500, issued March 7, 1973).

Respondent registered the <toshibadealer.com> domain name on April 19, 2002, more than sixty years after Complainant began using its TOSHIBA mark and many years after the mark became internationally famous and was registered by Complainant in the United States and United Kingdom.  Respondent has used the domain name for a website advertising numerous competing electronics and computer-related products manufactured by one of Complainant’s direct competitors, IBM.  Respondent is currently using the <toshibadealer.com> domain name to redirect Internet users to the <ibmdealer.com> website, which currently displays an error message and advertisements for Respondent’s domain name registration services. 

On April 9, 2004, Respondent sent an unsolicited e-mail to at least two of Complainant’s related companies, stating ownership of the <toshibadealer.com> domain name and offering to sell the domain name registration for an unspecified amount. 

DISCUSSION

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."

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

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.

Identical and/or Confusingly Similar

Complainant has established that it has rights in the TOSHIBA mark, as Complainant has registered its TOSHIBA mark and/or variations of its mark in more than 150 countries around the world, including in the United States and United Kingdom.  Complainant has also continuously used the TOSHIBA mark in commerce in connection with its electronics business for over sixty years.  See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).

Respondent’s domain name is confusingly similar to Complainant’s TOSHIBA mark because the domain name incorporates Complainant’s mark and only deviates with the addition of the generic or descriptive word “dealer” which describes Complainant’s business.  The mere addition of a generic or descriptive word that describes Complainant’s business does not negate the confusingly similarity of Respondent’s domain name pursuant to Policy ¶ 4(a)(i).  See Marriott Int’l, Inc. v. Café au lait, FA 93670, (Nat. Arb. Forum Mar. 13, 2000) (finding that Respondent’s domain name <marriott-hotel.com> is confusingly similar to Complainant’s MARRIOTT mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

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

Rights or Legitimate Interests

Complainant has alleged that Respondent has no rights or legitimate interests in the domain name that contains in its entirety the Complainant’s mark. Due to Respondent’s failure to respond to Complaint, the Panel will assume that Respondent lacks rights and legitimate interests in the disputed domain name. In fact, once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (holding that where Complainant has asserted that Respondent has no rights or legitimate interests with respect to the domain name it is incumbent on Respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name).

Moreover, where Complainant makes the prima facie showing and Respondent does not respond, the Panel may accept all reasonable allegations and inferences in the Complaint as true. See 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.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true).

Respondent is using the <toshibadealer.com> domain name to redirect Internet users to a website that advertises numerous competing electronics and computer-related products manufactured by one of Complainant’s direct competitors, IBM.  Respondent is currently using the <toshibadealer.com> domain name to redirect Internet users to the <ibmdealer.com> website, which currently displays an error message and advertisements for Respondent’s domain name registration services.  Respondent’s use of a domain name confusingly similar to Complainant’s TOSHIBA mark to redirect Internet users interested in Complainant’s products to a commercial website that offers identical or a competitor’s products is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that “it would be unconscionable to find a bona fide offering of services in a respondent’s operation of a website using a domain name which is confusingly similar to the Complainant’s mark and for the same business”); see also Am. Online Inc. v. Shenzhen JZT Computer Software Co., D2000-0809 (WIPO Sept. 6, 2000) (finding that Respondent’s operation of  a website offering essentially the same services as Complainant and displaying Complainant’s mark was insufficient for a finding of bona fide offering of goods or services); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan 10, 2003) (finding that Respondent had no rights or legitimate interests in the disputed domain name where it used Complainant’s mark, without authorization, to attract Internet users to its business, which competed with Complainant).

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

Registration and Use in Bad Faith

Respondent registered the domain name for commercial gain. Respondent’s domain name diverts Internet users wishing to search under Complainant’s well-known mark to Respondent’s commercial website through the use of a domain name confusingly similar to Complainant’s mark. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also America Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant); see also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where Respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant’s marks).

Furthermore, Respondent registered the domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website that directly competed with Complainant. Registration of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) (concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area); see also Hewlett Packard Co. v. Full Sys., FA 94637 (Nat. Arb. Forum May 22, 2000) (finding that Respondent registered and used the domain name primarily for the purpose of disrupting the business of Complainant by offering personal e-mail accounts under the domain name <openmail.com> which is identical to Complainant’s services under the OPENMAIL mark); see also Clear Channel Communications, Inc. v. Beaty Enters., FA 135008 (Nat. Arb. Forum Jan. 2, 2003) (finding evidence of bad faith use and registration where Respondent and Complainant both operated in the highly regulated field of radio broadcasting and Respondent registered a domain name incorporating Complainant’s call letters).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <toshibadealer.com> domain name be TRANSFERRED from Respondent to Complainant.

James A. Crary, Panelist

Dated:  August 30, 2004

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