Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. HaiZhi Zheng
Claim Number: FA0911001294888
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba
Corporation (“Complainant”),
represented by David M Kelly, of Finnegan,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <toshibadriverscenter.com>, registered with Godaddy.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <toshibadriverscenter.com> domain name is confusingly similar to Complainant’s TOSHIBA mark.
2. Respondent does not have any rights or legitimate interests in the <toshibadriverscenter.com> domain name.
3. Respondent registered and used the <toshibadriverscenter.com> 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 is currently a
collection of 740 companies worldwide with 198,000 employees. Complainant’s Electronic Devices and
Components division offers products under the TOSHIBA mark including small
power devices, LCDs, and LED displays.
Complainant offer customers dozens of drivers
available for download through its website resolving from the
<toshiba.com> domain name.
Complainant holds multiple registrations of its TOSHIBA mark around the
world, including with the United States Patent and Trademark Office (“USPTO”)
(Reg. No. 1,923,358 issued
Respondent, HaiZhi Zheng,
registered the <toshibadriverscenter.com>
domain name on
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
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 multiple
registrations of its TOSHIBA mark around the world, including with the USPTO
(Reg. No. 1,923,358 issued
The <toshibadriverscenter.com>
domain name contains (1) Complainant’s unaltered TOSHIBA mark; (2) the generic
term “drivers,” that has an obvious connection to Complainant’s business; (3)
the generic term “center;” and (3) the generic top-level domain (“gTLD”)
“.com.” Complainant is engaged in selling
computers and computer software, including drivers, so the word “drivers” has
an obvious relationship to Complainant’s business. The generic word “center” is not enough to
create distinctiveness. The Panel,
therefore, finds that the disputed domain name is confusingly similar to
Complainant’s mark under Policy ¶ 4(a)(i). See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb.
Forum
The Panel finds that Complainant has satisfied 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 <toshibadriverscenter.com> domain
name.
If the Panel finds that Complainant’s allegations establish such a prima
facie case, 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 or legitimate interests in the disputed
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 <toshibadriverscenter.com> domain name.
However, the Panel will still examine the record in consideration of the
factors listed in Policy ¶ 4(c). See
Domtar, Inc. v. Theriault.,
FA 1089426 (Nat. Arb. Forum
Complainant asserts that Respondent has no license or
agreement with Complainant authorizing Respondent to use its TOSHIBA mark, and
the WHOIS information identifies the registrant as “HaiZhi Zheng.” The Panel
finds no evidence in the record suggesting that Respondent is commonly known by
the disputed domain name. Thus, the
Panel finds that Respondent is not commonly known by the <toshibadriverscenter.com> domain
name and has therefore not established rights or legitimate interests in the
disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum
The website resolving from the <toshibadriverscenter.com> domain name purports to offer
Complainant’s software drivers. Instead,
Internet users are sold a product called Driver Robot, a product made by
Complainant’s direct competitor.
Respondent is part of this third party’s affiliate program and receives
commissions from these sales. The Panel
finds that the Respondent’s use of the <toshibadriverscenter.com>
domain name is not a bona fide
offering of goods or services or a legitimate noncommercial or fair use under
Policy ¶¶ 4(c)(i) or (iii), respectively.
See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb.
Forum
Additionally, the website resolving from Respondent’s <toshibadriverscenter.com> domain
name uses Complainant corporate logo and slogan along with the phrase “We
Highly Recommend this Download.” The
Panel finds that Respondent passing itself off as Complainant is further
evidence that Respondent lacks rights and legitimate interests in the disputed
domain name under Policy ¶ 4(a)(ii). See Crow v. LOVEARTH.net, FA 203208
(Nat. Arb. Forum
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent registered the <toshibadriverscenter.com>
domain name on
Given that the <toshibadriverscenter.com>
domain name is confusingly similar to Complainant’s TOSHIBA mark and the
resolving website offers what is labeled as Complainant’s goods, but are
actually goods of a direct competitor, Internet users would likely believe
Respondent is offering genuine goods made by Complainant and Complainant had
authorized Respondent to use its mark.
Internet users might believe that Respondent is indeed Complainant or at
least an authorized distributor. The
Panel finds that Respondent’s attempt to profit from this deception amounts to
bad faith registration and use under Policy ¶ 4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu,
FA 157321 (Nat. Arb. Forum
Respondent copied
Complainant’s corporate logo and slogan it uses with its TOSHIBA mark
when it designed the website resolving from the <caterpillarbg.com> domain name. The Panel finds that the act
of passing itself off as Complainant is evidence of bad faith registration and
use pursuant to Policy ¶ 4(a)(iii). See Monsanto Co. v.
Decepticons, FA 101536 (Nat. Arb.
Forum
The Panel finds that Complainant has satisfied 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 <toshibadriverscenter.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: December 31, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum