Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. chenxiao lei / chen xiao lei
Claim Number: FA2008001909237
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is chenxiao lei / chen xiao lei (“Respondent”), 中国.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshibagulf.com>, registered with Xin Net Technology Corporation.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 20, 2020; the Forum received payment on August 20, 2020.
On August 21, 2020, Xin Net Technology Corporation confirmed by e-mail to the Forum that the <toshibagulf.com> domain name is registered with Xin Net Technology Corporation and that Respondent is the current registrant of the name. Xin Net Technology Corporation has verified that Respondent is bound by the Xin Net Technology Corporation registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On August 24, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 14, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@toshibagulf.com. Also on August 24, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On September 21, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant offers world-class capabilities in advanced electronic and electrical product systems.
Complainant has rights in the TOSHIBA mark through its registration of the mark with numerous trademark authorities around the world e.g. United States Patent and Trademark Office.
Respondent’s <toshibagulf.com> domain name is identical or confusingly similar to Complainant’s mark as it consists of Complainant's mark it its entirety, adding the geographic term "gulf" and the ".com" generic Top-Level Domain ("gTLD").
Respondent lacks rights or legitimate interests in the <toshibagulf.com> domain name. Respondent is not and has not been commonly known by the at-issue domain name and Complainant has not authorized Respondent to use the TOSHIBA mark. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name for a pornographic website.
Respondent registered and uses the <toshibagulf.com> domain name in bad faith. Respondent disrupts Complainant's business and tarnishes Complainant's reputation by using the disputed domain name for fraudulent activities and a pornographic website. Respondent also attracts Internet users to the at-issue domain name for commercial gain by creating a likelihood of confusion with Complainant. Respondent registered the disputed domain name with knowledge of Complainant's rights in the mark given the international fame of the TOSHIBA mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has trademark rights in TOSHIBA.
Respondent is not affiliated with Complainant and is not authorized to use the TOSHIBA mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in TOSHIBA.
Respondent uses the domain name for a pornographic website and to impersonate a third party entity.
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."
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.
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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Preliminary Issue: Language of Proceeding
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language ‑to wit, the Respondent’s <toshibagulf.com> domain name contains the English word “gulf” and the registration record likewise is made up of English characters and terms. See Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO October 15, 2008) (holding that proceedings could be conducted in English even though the registration agreement was in Chinese where “the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English”);see also, BMW v. Yang Rongdai (WIPO D2017-1758) (allowing complainant’s request to conduct the UDRP proceeding in English because the disputed domain name <bmwnavipro.com> consists of Latin letters, not Chinese characters; respondent used English on the associated website; and complainant may be unduly disadvantaged by having to conduct the proceeding in the Chinese language);
Therefore, after considering the circumstance of the present case and in light of Respondent’s failure to respond, the Panel decides that the proceeding should be in English.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the TOSHIBA mark with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant’s ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Further, Respondent’s <toshibagulf.com> domain name is composed of Complainant’s entire TOSHIBA trademark with the term “gulf” added, all followed by the generic top-level domain name “.com.” The differences between Complainant’s trademark and Respondent’s domain name do nothing to distinguish the at-issue domain name from Complainant’s trademark under the Policy. Therefore, the Panel concludes that Respondent’s <toshibagulf.com> domain name is confusingly similar to Complainant’s TOSHIBA trademark pursuant to Policy ¶ 4(a)(i). See Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum Apr. 11, 2018) (finding that the <franklincoveykorea.com> domain name is confusingly similar to the FRANKLIN COVEY mark, as “[t]he addition of a geographic term and a gTLD do not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).”).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “chenxiao lei” and the record before the Panel contains no evidence tending to prove that Respondent is commonly known by the <toshibagulf.com> domain name. The Panel therefore concludes that Respondent is not commonly known by the <toshibagulf.com> domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Moreover, Respondent uses the <toshibagulf.com> domain name to address a website that hosts pornography. Respondent’s use of the domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
Respondent registered and uses its confusingly similar <toshibagulf.com> domain name to divert internet users to a website hosting pornographic material along with other content. Respondent also uses the domain name to fraudulently impersonate Quest Genomics a third party entity that offers medical testing services. Using the at-issue domain name in this manner disrupts Complainant’s business while inappropriately exploiting Complainant’s trademark for Respondent’s benefit thereby demonstrating Respondent’s bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Toshiba v. ran jiangfei (Forum FA1797650) (holding respondent’s registration and use of the domain names <toshiba-gulf.com> and <driversoftoshiba.com> for pornographic websites constitutes bad faith under UDRP 4(b)(iv), noting that “Complainant demonstrated that it has a presence in the Middle East, which includes the Persian Gulf area” and respondent’s addition of “Gulf” to the TOSHIBA mark clearly shows that it is attempting to “lure Internet traffic seeking Complainant’s products and services”); see also, Toshiba v. Rhodes (Forum FA 1597227) (holding that respondent’s registration and use of <toshiba-tlds.com> for adult content “is illustrative of an intent to profit from a likelihood of Internet user confusion in Policy ¶ 4(b)(iv) bad faith.”);see also, H-D U.S.A., LLC v. Nobuyoshi Tanaka / Personal, FA1312001534740 (Forum Jan. 31, 2014) (“Therefore, the Panel concludes that Respondent is acting in bad faith because Respondent is using the <harley-davidsonsales.com> domain name to tarnish Complainant’s HARLEY-DAVIDSON mark, as the Panel also finds that the content displayed on the resolving website constitutes adult-oriented content.”).
Additionally, Respondent had actual knowledge of Complainant’s rights in the TOSHIBA mark when it registered <toshibagulf.com> as a domain name. Respondent’s actual knowledge is evident from the international notoriety of Complainant’s TOSHIBA trademark. Respondent’s registration and use of a confusingly similar domain name with knowledge of Complainant’s trademark rights in such domain name shows Respondent’s bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshibagulf.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 21, 2020
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