Kabushiki Kaisha Toshiba d/b/a Toshiba
Corporation v. Buddha Graphix c/o Jesper Birk
Claim Number: FA0905001261595
PARTIES
Complainant is Kabushiki Kaisha Toshiba d/b/a
Toshiba Corporation (“Complainant”), represented by David M Kelly, of Finnegan Henderson Farabow Garrett &
Dunner L.L.P.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshiba-tpc.com>,
registered with GoDaddy.com, Inc.
PANEL
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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on
On
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 postmaster@toshiba-tpc.com by e-mail.
A Response was received in electronic copy on
On
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. 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.
The disputed
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.
B. Respondent
The extent of Respondent’s submission is as follows:
I
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]
FINDINGS
For reasons which appear below, the Panel
finds in favor of Complainant and orders transfer of the disputed domain name
to Complainant.
DISCUSSION
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
Respondent
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
DECISION
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
Dated:
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