Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Scott Fairbairn
Claim Number: FA0901001242940
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba
represented by David M. Kelly of Finnegan, Henderson, Farabow, Garrett & Dunner L.L.P., Washington,
D.C., USA. Respondent is Scott
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshibahdtv.biz>, registered with 1&1 Internet Ag.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 12, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain name that Respondent registered, <toshibahdtv.biz>, is confusingly similar to Complainant’s TOSHIBA mark.
2. Respondent has no rights to or legitimate interests in the <toshibahdtv.biz> domain name.
3. Respondent registered and used the <toshibahdtv.biz> domain name 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 currently employs
approximately 198,000 employees worldwide in a wide variety of businesses
including home appliances, entertainment software, and electronic components
and materials. Complainant registered
its TOSHIBA mark in more than 150 countries around the world, including
Respondent registered the <toshibahdtv.biz> domain name September 21, 2008. The disputed domain name resolves to a website purportedly offering to introduce American men to Russian women for “serious relations and potential for marriage” and displays links to third-party websites that also provide this service.
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."
Given 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 will draw such inferences as the Panel 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.
Paragraph 4(a) of the Policy requires Complainant to 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’s multiple registrations of the TOSHIBA mark
establish its rights in the mark pursuant to Policy ¶ 4(a)(i).
AOL LLC v. Interrante, FA
681239 (Nat. Arb. Forum
The <toshibahdtv.biz> domain name
combines Complainant’s TOSHIBA mark with a common abbreviation of a product
offered by Complainant, HD TVs, and a generic top-level domain (“gTLD”). The Panel finds that Respondent’s use of
Complainant’s mark results in confusing similarity under Policy ¶ 4(a)(i). Adding a common
abbreviation of a generic phrase, which describes a product offered by
Complainant, and adding a gTLD, does not distinguish a contested domain name
under an analysis of confusing similarity.
See Space Imaging LLC v.
Brownell, AF-0298 (eResolution
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima
facie case that Respondent has no rights or legitimate interests in the
disputed domain name. If the Panel finds
that Complainant’s allegations make a prima facie showing, the burden
shifts to Respondent to show that it does indeed have rights or legitimate
interests in the disputed domain name pursuant to the guidelines in Policy ¶
4(c). The Panel finds that
Complainant’s allegations are sufficient to establish a prima facie case that Respondent has no rights to or legitimate
interests in the <toshibahdtv.biz> domain name pursuant to Policy ¶ 4(a)(ii). Since no response was submitted in this case,
the Panel may presume that Respondent has no rights or legitimate interests in
the disputed domain name. However, the
Panel still examines the record in consideration of the factors listed in
Policy ¶ 4(c). See Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum
No evidence in the record suggests that Respondent is
commonly known by the <toshibahdtv.biz> domain name. Complainant asserts it has not granted
Respondent any license or permission to use its TOSHIBA mark, and the WHOIS information associated with the
domain name registration lists Respondent as “Scott
Fairbairn.” Also, Respondent has not
submitted any evidence that it is commonly known by the disputed domain
name. Therefore, the Panel finds that
Respondent has not established rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat.
Respondent is using the disputed domain name to resolve to a
website offering online dating services and links the third-party websites
offering the same. The Panel infers that
Respondent is profiting from its use of the resolving website. Respondent’s use also lacks any relation to Complainant’s
business. The Panel finds this
constitutes neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i) nor a noncommercial
or fair use under Policy ¶ 4(c)(iii). See Bank
of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
The website that resolves from the <toshibahdtv.biz>
domain name displays links to sites that are related to dating services between
American men and Russian women, which has no discernable relation to
Complainant’s TOSHIBA mark. The Panel
infers that Respondent receives pay-per-click fees for these links. Since the disputed domain name is confusingly
similar to Complainant’s mark, Internet users are likely to become confused as
to Complainant’s affiliation or sponsorship of the disputed domain name and
resolving website. Respondent is seeking
to profit from this confusion by hosting pay-per-click links on the resolving
website. The Panel finds this is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshibahdtv.biz> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: February 26, 2009.
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