Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Pantages Inc / Pantages
Claim Number: FA1103001380661
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. Respondent is Pantages Inc / Pantages (“Respondent”), Venezuela.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshibalaptop.com>, registered with Power Brand Center Corp.
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, Power Brand Center Corp. confirmed by e-mail to the National Arbitration Forum that the <toshibalaptop.com> domain name is registered with Power Brand Center Corp. and that Respondent is the current registrant of the name. Power Brand Center Corp. has verified that Respondent is bound by the Power Brand Center Corp. 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 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 20, 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@toshibalaptop.com. Also on March 31, 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 22, 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 <toshibalaptop.com> domain name is confusingly similar to Complainant’s TOSHIBA mark.
2. Respondent does not have any rights or legitimate interests in the <toshibalaptop.com> domain name.
3. Respondent registered and used the <toshibalaptop.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, 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, and home appliances. Complainant’s products and services are generally organized into four main business areas: digital products, electronic devices and components, social infrastructure systems, and home appliances and others. Complainant owns multiple trademark registrations for the TOSHIBA mark with the United States Patent and Trademark Office (“USPTO”):
Reg. No. 666,556 issued September 2, 1958;
Reg. No. 1,663,232 issued November 5, 1991; and
Reg. No. 1,923,358 issued October 3, 1995.
Respondent, Pantages Inc / Pantages, registered the <toshibalaptop.com> domain name on September 19, 2001. The disputed domain name resolves to a commercial pay-per-click website featuring numerous search categories, including “Toshiba Laptops.”
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 owns multiple trademark registrations for the TOSHIBA mark with the USPTO:
Reg. No. 666,556 issued September 2, 1958;
Reg. No. 1,663,232 issued November 5, 1991; and
Reg. No. 1,923,358 issued October 3, 1995.
The Panel finds that these USPTO trademark registrations demonstrate that Complainant has established rights in the TOSHIBA mark for the purposes of Policy ¶ 4(a)(i), regardless of Respondent’s location of residence or business operations. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant argues that Respondent’s <toshibalaptop.com> domain name is confusingly similar to Complainant’s TOSHIBA mark because the disputed domain name consists entirely of Complainant’s mark combined with the descriptive term “laptops” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that adding a descriptive term to Complainant’s mark does not dispel confusing similarity. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel also determines that a gTLD does not affect the confusingly similar analysis as gTLDs are required elements of domain names. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel thus concludes that Respondent’s <toshibalaptop.com> domain name is confusingly similar to Complainant’s TOSHIBA mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(i).
The requirements of Policy ¶ 4(a)(ii) dictate that Complainant must present a prima facie case in support of its allegations against Respondent before the burden to show rights and legitimate interests shifts to Respondent. In this case, the burden has shifted due to Complainant’s sufficient prima facie case. In defaulting, however, Respondent has not satisfied its obligation to prove rights and legitimate interests and has not shown any evidence in support of such rights and interests. The Panel consequently determines that it may accept Complainant’s allegations as true and infer that Respondent possesses no rights and legitimate interests in the disputed domain name. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also 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.”). The Panel will nevertheless consider the evidence against the Policy ¶ 4(c) factors, however, to determine independently whether Respondent has rights and legitimate interests in the disputed domain name.
Complainant contends that it has not authorized Respondent to use the TOSHIBA mark in the <toshibalaptop.com> domain name. The WHOIS information indicates that the registrant is “Pantages Inc.,” which has no apparent association to the disputed domain name. Based on these facts and the lack of other affirmative evidence in the record showing a connection between Respondent and the disputed domain name, the Panel determines that Respondent is not commonly known by the disputed domain name and consequently lacks rights and legitimate interests pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected); see also Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because the respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use).
Complainant alleges that Respondent uses the <toshibalaptop.com> domain name to host a commercial pay-per-click website featuring links advertising numerous search categories, including “Toshiba Laptops.” Complainant asserts that Respondent undoubtedly earns click-through fees from the sponsored-link advertised featured on the resolving website. The Panel finds maintaining a profitable pay-per-click link directory at the <toshibalaptop.com> domain name is not consistent with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant also argues that Respondent offers the <toshibalaptop.com> domain name for sale on the marketplace website Sedo. Complainant contends, and the Panel agrees, that Respondent’s efforts to sell the disputed domain name indicate a lack of rights and legitimate interests under Policy ¶ 4(a)(ii). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
The Panel finds Complainant has satisfied the elements of Policy ¶ 4(a)(ii).
Complainant argues that Respondent has the <toshibalaptop.com> domain name for sale on the online marketplace Sedo. The Panel finds that offering to sell the disputed domain name for a price in excess of out-of-pocket costs shows bad faith registration and use pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant states that the website resolving from Respondent’s <toshibalaptop.com> domain name displays a list of sponsored pay-per-click links advertising subjects and products related to and competing with Complainant, such as “Toshiba Laptops,” “Laptop Computer,” “Cheap Laptop,” and “Notebook,” among others. The Panel finds that facilitating competition with Complainant via pay-per-click links at a disputed domain name using Complainant’s mark reveals bad faith registration and use for the purposes of Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Complainant asserts that Respondent uses the TOSHIBA mark in the <toshibalaptop.com> domain name in order to attract Internet users seeking information about Complainant and Complainant’s products. The presence of the pay-per-click links advertising Complainant’s products and other computer products likely create confusion among Internet users as to the source, affiliation, or sponsorship of the resolving websites since the majority, if not all, of the links relate to Complainant’s business. Complainant contends that the increased traffic to Respondent’s resolving website and the click-through fees generated by the links demonstrate Complainant’s bad faith registration and use under Policy ¶ 4(b)(iv) in attempting to attract and mislead consumers for commercial gain. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
The Panel finds Complainant has satisfied the elements of 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 <toshibalaptop.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: April 23, 2011
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