Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. n/A a/k/a james valdeshi and Serified Systems a/k/a ozkiegb
Claim Number: FA0808001220460
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba
represented by David M. Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P.,
The domain names at issue are <toshiba-uk.net> and <toshibaservices-uk.net>, registered with EstDomains, Inc.
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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
20, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
September 9, 2008
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 email@example.com and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <toshiba-uk.net> and <toshibaservices-uk.net> domain names are confusingly similar to Complainant’s TOSHIBA mark.
2. Respondent does not have any rights or legitimate interests in the <toshiba-uk.net> and <toshibaservices-uk.net> domain names.
3. Respondent registered and used the <toshiba-uk.net> and <toshibaservices-uk.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Kabushiki Kaisha
Toshiba d/b/a Toshiba Corporation, was founded in 1875 and is a global leader
in electronic and electrical products.
Complainant employs more than 170,000 employees in 55 countries. For 60 years, Complainant has used its
TOSHIBA mark, which has been registered with numerous governmental trademark
authorities worldwide, including registrations with the United States Patent
and Trademark Office (“USPTO”) (e.g. Reg. No. 669,605 issued
Respondents, n/A a/k/a james
valdeshi and Serified Systems a/k/a ozkiegb (collectively “Respondent”),
registered the disputed domain names on
Preliminary Issue: Multiple Respondents
Complainant argues that the <toshiba-uk.net> and <toshibaservices-uk.net> domain names’ registrants are listed as “n/A a/k/a james valdeshi” and “Serified Systems a/k/a ozkiegb,” respectively. Complainant also asserts that the e-mail addresses listed for both disputed domain names in the WHOIS information are virtually identical (i.e. email@example.com and firstname.lastname@example.org). Complainant also contends that both of the disputed domain names are used in an identical phishing scheme “intended to recruit money mules to launder money under the guise of offering employment with [Complainant].” Finally, Complainant argues that both of the disputed domain names were registered on the same date.
Accordingly, the Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings. See Las Vegas Sands Corp. v. NONE, FA 1182353 (Nat. Arb. Forum June 13, 2008) (finding the listed aliases to be “the same person or entity, or entities controlled by the same person or entity” because the WHOIS information for each disputed domain name contained the same email address and domain name servers); see also Am. Online, Inc. v. Johuathan Invs., Inc. & AOLLNEWS.COM, D2001-0918 (WIPO Sept. 14, 2001) (determining that when service is proper and the respondent(s) fail to respond to the complaint, the panel may accept the complainant’s assertion that the various aliases are the same person or entity as true).
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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.
Complainant has submitted evidence of its numerous trademark
registrations worldwide, including with the USPTO. As such, the Panel finds that Complainant has
sufficient rights in the TOSHIBA mark under Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v.
Bonds, FA 873143
Respondent’s <toshiba-uk.net> and <toshibaservices-uk.net>
domain names incorporate Complainant’s entire TOSHIBA mark, while adding a
hyphen, the generic abbreviation for United Kingdom (“uk”), as well as the
generic word “services” and the generic top-level domain “.net.” The Panel finds that none of these
alterations are sufficient to distinguish the disputed domain names from the
TOSHIBA mark, as the mark remains the dominant portion of the disputed domain
names. Therefore, the Panel finds that
Respondent’s disputed domain names are confusingly similar to Complainant’s
mark under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant initially retains the burden of setting forth a prima facie case that supports its allegations that Respondent lacks rights and legitimate interests in the disputed domain names. Based on the record, the Panel finds that Complainant has met its burden, and that therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
There is no evidence within the record, including the WHOIS information, to suggest that Respondent is commonly known by the disputed domain names or the TOSHIBA mark. Therefore, without any contrary assertions by Respondent, the Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. 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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant asserts that the disputed domain names resolve to websites that imitate sections of Complainant’s <toshiba.co.uk> website, in an attempt to “recruit individuals for a money-laundering scam.” The Panel finds that the imitation of Complainant’s website, designed so that Respondent may pass itself off as Complainant for fraudulent commercial gain, utterly fails as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Ballard, FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (stating that where the respondent copied the complainant’s website in order to steal account information from the complainant’s customers, that the respondent’s “exploitation of the goodwill and consumer trust surrounding the BLIZZARD NORTH mark to aid in its illegal activities is prima facie evidence of a lack of rights and legitimate interests in the disputed domain name”); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent has intentionally created a likelihood of confusion for fraudulent commercial gain as to Complainant’s source or affiliation with the disputed domain names, in that Respondent has utilized Complainant’s mark in confusingly similar disputed domain names. The Panel finds that this constitutes bad faith registration and use under 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 the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("While an intent to confuse consumers is not required for a finding of trademark infringement, intent to deceive is strong evidence of a likelihood of confusion.").
The Panel also finds that Respondent’s fraudulent passing
off activity with the disputed domain names and corresponding websites
constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DaimlerChrysler Corp. v. Bargman,
D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the
title “Dodgeviper.com Official Home Page” gave consumers the impression that
the complainant endorsed and sponsored the respondent’s website); see also American
Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding
that the disputed domain name was registered and used in bad faith where the
respondent hosted a website that “duplicated Complainant’s mark and logo,
giving every appearance of being associated or affiliated with Complainant’s
business . . . to perpetrate a fraud upon individual
shareholders who respected the goodwill surrounding the
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshiba-uk.net> and <toshibaservices-uk.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: October 2, 2008
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