Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Buddha Graphix c/o Jesper Birk
Claim Number: FA0905001261595
Complainant is Kabushiki Kaisha Toshiba d/b/a
Toshiba Corporation (“Complainant”), represented by David M Kelly, of Finnegan Henderson Farabow Garrett &
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshiba-tpc.com>, registered with GoDaddy.com, Inc.
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.
Anne M. Wallace, Q.C., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On May 11, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 1, 2009 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 firstname.lastname@example.org by e-mail.
A Response was received in electronic copy on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Founded in 1875, Toshiba is part of the Toshiba Group (collectively, “Toshiba”), a collection of more than 740 companies worldwide that currently employs approximately 198,000 employees worldwide in Africa, Asia, Australia, Europe, North America, and South America. Toshiba is active in a wide variety of businesses ranging from information processing and telecommunications to industrial machinery, electronic components and materials, medical equipment, plant engineering, home appliances, and entertainment software.
Toshiba’s products and services are generally organized into four main business areas: Digital Products, Electronic Devices & Components, Social Infrastructure Systems, and Home Appliances and Others.
Toshiba has registered its TOSHIBA mark and/or variations of that mark in more than 170 countries around the world. Toshiba has used its TOSHIBA trademark and trade name for more than 60 years. Toshiba has sold hundreds of billions of dollars of products under the TOSHIBA mark and name over the years. For example, Toshiba’s annual sales in 2005 exceeded $60 billion, and its sales in 2006 and 2007 exceeded $70 billion in each year. Toshiba spends many millions of dollars each year to advertise and promote Toshiba and its TOSHIBA-branded products and services in countries around the world. Toshiba markets its products globally through an expansive network of authorized dealers located throughout the world.
The disputed domain
name <toshiba-tpc.com> was
registered long after Toshiba began using its TOSHIBA mark; long after that
mark became internationally famous; long after Toshiba registered its mark in
the European Community (which covers Denmark where Respondent is located), the
U.S., and elsewhere; and long after Toshiba began offering tablet PCs, which
are also known by the common abbreviation “
Respondent uses the disputed domain name for a commercial, pornographic website advertising a website titled “Tranny Surprise” and displaying numerous links to additional pornographic websites. Respondent undoubtedly receives “click-through” commission payments when Internet users click on the advertisements and/or links featured on Respondent’s website.
domain name is confusingly similar to Complainant’s TOSHIBA mark because it
incorporates Complainant’s mark in its entirety with a hyphen and three
additional letters, “
Respondent clearly has no rights or legitimate interest in the disputed domain name because Respondent’s registration and use of the disputed domain name for a commercial pornographic website does not and cannot constitute a bona fide offering of goods or services or non-commercial fair use under the UDRP. Also, Respondent is not and has not been commonly known by TOSHIBA or the disputed domain name. Indeed, given the international fame of Complainant’s TOSHIBA mark, Respondent could not be known by the disputed domain name.
Respondent’s registration and use of the Domain Name squarely meet the grounds of bad faith outlined in the UDRP, as well as additional grounds of bad faith defined in previous UDRP decisions. First, Respondent’s registration and use of the disputed domain name meet the bad-faith element set forth in Section 4(b)(iv) of the UDRP. Specifically, Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous TOSHIBA mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s commercial website.
Second, Respondent’s registration and use of the disputed domain name meet the bad-faith element set forth in Section 4(b)(iii) of the UDRP because Respondent unfairly disrupts Complainant’s business by using the disputed domain name for a pornographic or adult-oriented website, thereby tarnishing the TOSHIBA mark.
Third, Respondent’s registration and use of the disputed domain name for a pornographic website constitutes an independent ground for bad faith under prior UDRP decisions.
Finally, given the fame of Complainant’s TOSHIBA mark and the fact that Complainant has used its TOSHIBA mark in connection with tablet PCs, there is no question that Respondent had knowledge of Complainant’s rights in the TOSHIBA mark when he registered the domain name <toshiba-tpc.com>. By registering the disputed domain name with knowledge of Complainant’s rights in its TOSHIBA mark, Respondent acted in bad faith. Registration of a domain name with knowledge of the trademark owner’s rights has been consistently found to constitute bad faith under the UDRP.
The extent of Respondent’s submission is as follows:
have recieved your complaints about my use of the domain name TOSHIBA-
The domain name was bought on an auction of expired names because of it's "page rank" - I was not aware of of the trademark infringement,
and apologize for this!>
I will be happy to transfer ownership of the domain name to your client.
The domain is registrered with godaddy.com - please mail me a godaddy account and I'll transfer the domain name to that account. [spelling and typing errors in original]
For reasons which appear below, the Panel finds in favor of Complainant and orders transfer of the disputed domain name to Complainant.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
While this would be the usual approach to complaints under the UDRP, this is a unique case because there are two preliminary issues which ultimately dispose of the Complaint. I will discuss each of them in turn.
Preliminary Issue #1: Deficient Response
Respondent’s Response was submitted only in electronic format prior to the Response deadline; no hard copy was received. Thus, the National Arbitration Forum does not consider the Response to be in compliance with ICANN Rule 5. The Panel, at its discretion, however, may choose whether to accept and consider this Response.
In this case, given the technical
nature of the breach, I am of the view that the Panel should consider the
response. See J.W.
Spear & Sons
Preliminary Issue #2: Consent to Transfer
consents to transfer the <toshiba-tpc.com> domain
name to Complainant. However, after the initiation of this proceeding,
GoDaddy.com, Inc. placed a hold on Respondent’s account and therefore
Respondent cannot transfer the disputed domain name while this proceeding is
still pending. In these circumstances, where Respondent has not contested the transfer of the disputed domain
name but instead agrees to transfer the domain name in question to Complainant,
it is appropriate for the Panel to forego the traditional UDRP analysis and
order immediate transfer of the <toshiba-tpc.com> domain
name. See Boehringer Ingelheim Int’l GmbH
v. Modern Ltd. – Cayman Web Dev., FA 133625 (Nat. Arb. Forum
In light of the findings above, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshiba-tpc.com> domain name be TRANSFERRED from Respondent to Complainant.
Anne M. Wallace, Q.C., Panelist
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National Arbitration Forum