national arbitration forum

 

DECISION

 

Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. HaiZhi Zheng

Claim Number: FA0911001294888

 

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., Washington, D.C., USA.  Respondent is HaiZhi Zheng (“Respondent”), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <toshibadriverscenter.com>, registered with Godaddy.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 17, 2009; the National Arbitration Forum received a hard copy of the Complaint on November 18, 2009.

 

On November 17, 2009, Godaddy confirmed by e-mail to the National Arbitration Forum that the <toshibadriverscenter.com> domain name is registered with Godaddy and that Respondent is the current registrant of the name.  Godaddy has verified that Respondent is bound by the Godaddy registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On November 19, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 9, 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@toshibadriverscenter.com by e-mail.

 

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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

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.

 

FINDINGS

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 Oct. 3, 1995) and the China Patent and Trademark Office (“CPTO”) (Reg. No. 1,000,143 issued May 7, 1999).

 

Respondent, HaiZhi Zheng, registered the <toshibadriverscenter.com> domain name on July 23, 2009.  The disputed domain name resolves to a website which claims to offer drivers for Complainant’s products.  In fact, Respondent is selling a third-party software called Driver Robot, and receives commissions for sales made on the website.  In addition, the resolving website displays Complainant’s corporate logo and slogan along with the phrase “We Highly Recommend this Download.”

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

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 Oct. 3, 1995) and in Respondent’s country of residence with the CPTO (Reg. No. 1,000,143 issued May 7, 1999).  The Panel finds that Complainant has established rights in the mark under Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).

 

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 Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”). 

 

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 Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’  Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).

 

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 June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).

 

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 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 . . . .”); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent registered the <toshibadriverscenter.com> domain name on July 23, 2009, more than ten years after Complainant registered its TOSHIBA mark in China, Respondent country of residence.  The website resolving from the <toshibadriverscenter.com> domain name is a commercial website purporting to offer Complainant’s software drivers, but actually offering drivers made by Complainant’s direct competitor.  The Panel finds that Respondent is disrupting Complainant’s business by operating in direct competition with Complainant and using Complainant’s own TOSHIBA mark to do so.  The Panel finds this is bad faith registration and use under Policy ¶ 4(b)(iii).  See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

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 June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).

 

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 Dec. 18, 2001) (finding that the respondent's use of <monsantos.com> to misrepresent itself as the complainant and to provide misleading information to the public supported a finding of bad faith); see also 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).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

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

 

 

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