Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Independent Site Not Affiliated with Manufacturer a/k/a Eastern Division, LLC
Claim Number: FA1103001380655
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 Independent Site Not Affiliated with Manufacturer a/k/a Eastern Division, LLC (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <toshibacamera.com> and <toshibacameras.com>, registered with Godaddy.com, Inc.
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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 28, 2011; the National Arbitration Forum received payment on March 28, 2011.
On March 28, 2011, Godaddy.com, Inc confirmed by e-mail to the National Arbitration Forum that the <toshibacamera.com> and <toshibacameras.com> domain names are registered with Godaddy.com, Inc and that Respondent is the current registrant of the names. Godaddy.com, Inc has verified that Respondent is bound by the Godaddy.com, Inc registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 29, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 18, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@toshibacamera.com and postmaster@toshibacameras.com. Also on March 29, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <toshibacamera.com> and <toshibacameras.com> domain names are confusingly similar to Complainant’s TOSHIBA mark.
2. Respondent does not have any rights or legitimate interests in the <toshibacamera.com> and <toshibacameras.com> domain names.
3. Respondent registered and used the <toshibacamera.com> and <toshibacameras.com> domain names 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 operates in the business of digital products and consumer electronics. Complainant owns the TOSHIBA marks and uses the mark in connection with the marketing and sales of its digital products, including cameras. Complainant holds numerous trademark registrations for its TOSHIBA mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 666,556 issued Sept. 2, 1958).
Respondent, Independent Site Not Affiliated with Manufacturer a/k/a Eastern Division, LLC, registered the <toshibacamera.com> and <toshibacameras.com> domain names September 21, 2001. The disputed domain names resolve to Respondent’s own “Camera Chat” website which solicits membership from Internet users, claims to offer online forum services, and promotes the sale of cameras manufactured by Complainant and Complainant’s competitors.
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.
Complainant argues that it has demonstrated its rights in the TOSHIBA mark. In Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006), the Panel found that the complainant had established rights in marks where the marks were registered with a trademark authority. See also 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). Here, Complainant holds numerous trademark registrations for its TOSHIBA mark with the USPTO (e.g., Reg. No. 666,556 issued Sept. 2, 1958). The Panel finds that by registering its mark with a trademark authority, Complainant established rights in its TOSHIBA mark under Policy ¶ 4(a)(i).
Complainant also argues that Respondent’s <toshibacamera.com> and <toshibacameras.com> domain names are confusingly similar to Complainant’s TOSHIBA mark. The disputed domain names incorporate Complainant’s mark entirely and differ merely by adding the descriptive words “camera” and “cameras,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the inclusion of descriptive words, which here, clearly reference Complainant’s camera business, does not preclude a finding of confusing similarity. See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the term “security” to the complainant’s VANCE mark, which described the complainant’s business, the respondent “very significantly increased” the likelihood of confusion with the complainant’s mark). The Panel also finds that the addition of a gTLD does not adequately distinguish the disputed domain name from Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Therefore, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s TOSHIBA mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that the elements of Policy ¶ 4(a)(i) have been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the Panel stated “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.” Here, Complainant has made a prima facie showing in support of its claims. Respondent did not respond to the Complaint, which the Panel may interpret as evidence that Respondent has no rights and legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel will look to the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “Independent Site Not Affiliated with Manufacturer a/k/a Eastern Division, LLC,” which is not similar to the disputed domain names. Complainant has also not authorized Respondent to use its TOSHIBA mark. The Panel finds that Respondent is not commonly known by the <toshibacamera.com> and <toshibacameras.com> domain names, under Policy ¶ 4(c)(ii), as there is no evidence that suggests otherwise. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s disputed domain names resolve to Respondent’s commercial website which collects Internet users’ information, purports to offer forum and discussion services, and promotes Complainant’s products, as well as camera products of Complainant’s competitors. The Panel finds that Respondent’s use of the confusingly similar disputed domain names to reroute Internet users to its own website, for its own benefit, and subsequently promote Complainant’s competitors, is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent posts a disclaimer on its website that it is an “Independent Consumer Information site not endorsed by, nor affiliated with, the manufacturers.” However, the Panel finds that such use of a disclaimer does not mitigate the confusion of association with Complainant. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
Complainant alleges that Respondent offered to sell the <toshibacameras.com> domain name in a letter of correspondence. Complainant claims Respondent noted that it had the domain name appraised and that it was worth “…$70-$100 thousand and considerably more in open auction…”. The Panel finds that such an offer to sell the disputed domain name at a price far exceeding any out-of-pocket expenses is evidence that Respondent has no rights or legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
As mentioned, Complainant claims that Respondent attempted to sell the <toshibacameras.com> domain name. In a letter to Complainant, Respondent indicated that it had turned own offers of $30,000 and that the appraised value of the domain was $70-$100 thousand or more. The Panel finds that an offer to sell the disputed domain name for more than out-of-pocket costs constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Dynojet Research, Inc. v. Norman, AF-0316 (eResolution Sept. 26, 2000) (finding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name).
Complainant argues that Respondent’s use of the disputed domain names disrupts its business. Internet users intending to purchase Complainant’s camera products may find Respondent’s website, which promotes Complainant’s competitors, and purchase similar products from a competitor as a result. The Panel finds that such use does disrupt Complainant’s business, which is evidence of bad faith according to Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Internet users searching online for Complainant may find Respondent’s website instead due to the confusingly similar disputed domain name. Users may become confused as to Complainant’s sponsorship of, or affiliation with, the resolving site and content. Respondent attempts to profit from this confusion through the promotion of its own business and possible sale of cameras and related electronics. The Panel finds that such use for commercial gain is evidence of bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)).
Respondent includes a disclaimer on its resolving site that indicates it is an independent website not endorsed by, or affiliated with, Complainant. The Panel finds that use of a disclaimer does not necessarily alleviate the problem of creating a likelihood of confusion with Complainant and does not mitigate bad faith under Policy ¶ 4(a)(iii). See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii) “); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshibacamera.com> and <toshibacameras.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 25, 2011
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