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Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com [2005] GENDND 12 (31 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Marko Tusla d/b/a/ Toshiba-Club.com

Case No. D2004-1066

1. The Parties

The Complainant is Kabushiki Kaisha Toshiba doing business as Toshiba Corporation, Tokyo, Japan, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., United States of America.

The Respondent is Marko Tusla doing business as Toshiba-Club.com, Hrvatska, Croatia.

2. The Domain Name and Registrar

The disputed domain name <toshiba-club.com> (the “Domain Name”) is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 16, 2004. On December 17, 2004, the Center transmitted by email to eNom, Inc a request for registrar verification in connection with the Domain Name. On December 17, 2004, eNom, Inc provided a partial verification response confirming that the language of the proceedings is English and that the Domain Name would remain under Registrar Lock throughout the proceeding. In addition to eNom, Inc.’s partial response, the Center made WHOIS printouts, which showed that the disputed Domain Name was registered with eNom Inc., and that the Respondent was the current registrant of the disputed Domain Name. 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 December 22, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 11, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 12, 2005.

The Center appointed Richard Tan as the sole panelist in this matter on January 17, 2005. 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 avers that it is a large multinational company founded in 1875, and a global leader in the field of electronic and electrical products with annual sales of more than US$40 billion. It designs, manufactures, markets, and sells a wide variety of products under the trade mark and trade name TOSHIBA, and markets its products globally through authorized dealers throughout the world, including Croatia, where the Respondent is located.

The Complainant also claims to have extensively promoted its products and services under the TOSHIBA mark on the Internet via websites accessed via domain names incorporating “Toshiba”, such as <toshiba.com>, <toshiba-europe.com>, and <toshiba.co.jp>.

The Complainant has also filed and obtained trade marks for “TOSHIBA” in many parts of the world, with the earliest registrations dating back some 60 years ago.

In Croatia, where the Respondent is located, it has subsisting trade mark registrations for “TOSHIBA” including but not limited to

a. Registration No. Z920894, issued January 23, 1995, covering goods and services in International Classes 1, 3, 4, 6, 7, 8, 9, 10, 11, 12, 14, 16, 17, 21, and 28.

b. Registration No. Z920902, issued January 26, 1995, covering goods in International Classes 6, 7, 10, and 11.

The Respondent registered the disputed domain name with eNom, Inc on May 21, 2004. The disputed domain name resolves to a pornographic website displaying the trade name “Toshiba Club”.

5. Parties’ Contentions

A. Complainant

The Complainant contends primarily as follows:

(a) that the domain name <toshiba-club.com> is confusingly similar to the Complainant’s “TOSHIBA” mark in that it incorporates Complainant’s mark in its entirety combined with the generic word “club”, and that this is insufficient to distinguish the disputed domain name from Complainant’s mark, because the distinctive part of the disputed domain name is “Toshiba”.

(b) the Respondent has no rights or legitimate interests in respect of the disputed domain name, and that use of the same by the Respondent for a pornographic website would not constitute a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

The Complainant further avers that the Respondent was not commonly known by the Domain Name prior to its registration, nor was he making legitimate noncommercial or fair use of the Domain Name, without intending to mislead and divert consumers or to tarnish Complainant’s TOSHIBA mark for commercial gain.

(c) the Respondent’s registration and use of the Domain Name is in bad faith, and by registering the Domain Name with knowledge of the Complainant’s rights in its TOSHIBA mark, it sought to use the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous TOSHIBA mark as to the source, sponsorship, affiliation and/or endorsement of the Respondent’s pornographic website.

B. The Respondent’s Submissions

The Respondent has not filed any Response.

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the Domain Name:

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

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

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

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, Rule 5(e) provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Rule 14(b) further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings: Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favour of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, the requirements of the Policy: World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001, Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, Digital Vision, Ltd v. Advanced Chemill Systems, WIPO Case No. D2001-0827.

A. Identical or Confusingly Similar Domain Name

The Complainant has furnished prima facie evidence that it is the owner of a number of trade marks and pending trade mark applications in respect of TOSHIBA, and accordingly has rights in the same.

Whilst the Domain Name is not identical to the Complainant’s registered trade mark, this Panel finds that the Domain Name is confusingly similar to the Complainant’s TOSHIBA trade marks, notwithstanding the addition of the word “club”. This Panel also notes that this word is separated from the mark by a hyphen, further drawing attention to the mark itself as the most prominent part of the disputed domain name. It is well-established that a domain name composed of a trade mark coupled with a generic term may yet be regarded as confusingly similar to the trade mark: Yahoo! Inc. v. Hangzhou Hi2000 InfoTech Co. Ltd. a/k/a Hangzhou Shixin Info Tech Co. Ltd (NAF Claim No. FA0301000141825).

The Panel accordingly finds that the Domain Name is confusingly similar to the Complainant’s name and trademark, and that paragraph 4(a)(i) of the Policy has been satisfied.

B. Respondent’s Rights or Legitimate Interests in the Domain Name

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the Domain Name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

The Complainant asserts that the Respondent was not commonly known by the disputed domain name prior to the registration of that name. The Complainant also relies on the fame of the TOSHIBA mark worldwide, and the registration of the TOSHIBA trade mark in the Respondent’s home country, Croatia, in 1995, ie, some nine years prior to the registration of the Domain Name in 2004.

These matters would clearly suggest that the Respondent has no rights or legitimate interests in the Domain Name but, even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Domain Name, namely:

“(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or 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; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue”.

If any of the above circumstances are established, the Registrant may be said to have rights to or legitimate interests in the domain name for the purposes of Paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

In the absence of a Response, the Panel accepts that the purpose of the Respondent having registered the Domain Name was to rely on the fame of the “TOSHIBA” mark to divert users to the Respondent’s pornographic website.

There is established authority that a respondent’s registration and use of a domain name for a pornographic website generally does not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy: Yahoo! Inc. v. Denis Jalbert (NAF Claim No. FA0307000166020) (“Resolving the disputed domain names to an adult oriented website is evidence that [r]espondent’s use of the disputed domain names is neither a bona fide offering of goods or services pursuant to Policy, paragraph 4 (c)(i) nor a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii).”); Yahoo! Inc. v. Christopher L. Hannah d/b/a DailyCrossword.com (NAF Claim No. FA0404000250785) (holding respondent’s use of the disputed domain name for a pornographic website “has a tendency to tarnish Complainant’s mark and thus is not a bona fide offering of goods or services”)

Since the Respondent has not filed a Response, the Panel would also infer that the Respondent has no trade marks or service marks identical to TOSHIBA (See National Academy of Recording Arts & Sciences Inc. v. Lsites, NAF Claim No. FA00103059. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.

Indeed, because of the fame of the Complainant’s TOSHIBA mark, the Respondent’s use of the name “Toshiba-Club” on its website does not demonstrate Respondent’s legitimate interest in the Domain Name: Compaq Information Technologies Group, L.P. v. Express Technology, Inc. (NAF Claim No. FA0201000104186) (holding that a respondent’s use of the domain name was not legitimate pursuant to Policy, paragraph 4(c)(ii) as “due to the distinct nature of [c]omplainant’s COMPAQ mark it is not possible for [r]espondent to be commonly known as <compaqspares.com>“).

Accordingly, paragraph 4(c)(ii) of the Policy does not apply.

There are also numerous authorities which find that the registration of a disputed domain name to a pornographic website constitutes tarnishment in contravention of paragraph 4(c)(iii) of the Policy Yahoo! Inc. v. Cupcake Patrol and John Zuccarini (WIPO Case No. D2000-0928); and does not establish any rights or legitimate interest in the domain name but instead constitutes bad faith The Boeing Company v. H3A H3A (NAF Claim No. FA99669). In the absence of any submissions to the contrary, this Panel also finds that paragraph 4(c)(iii) of the Policy is not applicable.

Based on the information available to the Panel in the Complaint, there is nothing to suggest that the Respondent has any rights or legitimate interests in the Domain Name. In the circumstances, the Panel finds that the Complainant has sufficiently discharged the burden of establishing that the Respondent has no rights or legitimate interests in respect of the Domain Name, and that accordingly, paragraph 4(a)(ii) of the Policy has been satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, further demonstrate that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

“(i) circumstances indicating that you [the Respondent] 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 web site 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 web site or location or of a product or service on your web site or location”.

The Complainant asserts that given the fame of its TOSHIBA mark, there is no question that the Respondent had knowledge of the Complainant’s rights in the same when it registered the Domain Name, and the Respondent was thus acting in bad faith.

Further, it could be inferred that the Respondent used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s famous TOSHIBA mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s pornographic website, and the Respondent’s activities also disrupted the Complainant’s business and tarnished it and its famous TOSHIBA mark.

The Respondent has not submitted any evidence to rebut the Complainant’s claims.

Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the Policy: See, e.g., Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong (WIPO Case No. D2003-0408) (finding the respondent registered the disputed domain name in bad faith because it was on notice of the complainant’s rights); Yahoo! Inc. v. Kelvin Pham (NAF Claim No. FA0204000109699).

Further, registration of the complainant’s well-known mark as a domain name could not have been for any plausible reason other than to trade on the goodwill of the trade mark owner: Telstra Corporation Limited. v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Yahoo! Inc. v. Yahoo-Asian Company Limited (WIPO Case No. D2001-0051), and this would evidence bad faith, particularly where the use is in connection with a pornographic site: Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc. (NAF Claim No. FA0205000113974) (finding respondent’s use of the disputed domain name for a pornographic website constituted bad faith under paragraph 4(b)(iv) of the Policy); General Electric Company v. Basalt Management (WIPO Case No. D2000-0925) (finding bad faith in respondent’s use of the disputed domain name because respondent “clearly saw a commercial benefit to be gained by using the [c]omplainant’s trade mark and in a manner (namely connected to a pornographic site) which could only tarnish the distinctiveness and repute of the trade mark.”); Yahoo! Inc. v. Moldes Matrices y Diseno (NAF FA0211000133764) (finding bad faith in respondent’s use of the disputed domain name for a pornographic website).

In the circumstances, the Panel finds that the Domain Name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

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 <toshiba-club.com> be transferred to the Complainant.

Richard Tan
Sole Panelist

Dated: January 31, 2005