Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Above.com Domain Privacy
Claim Number: FA1705001730862
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, District of Columbia, USA. Respondent is Above.com Domain Privacy (“Respondent”), Australia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is/are <toshibacorporation.com>, registered with Above.com Pty Ltd.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 9, 2017; the Forum received payment on May 9, 2017.
On May 11, 2017, Above.com Pty Ltd. confirmed by e-mail to the Forum that the <toshibacorporation.com> domain name is registered with Above.com Pty Ltd. and that Respondent is the current registrant of the name. Above.com Pty Ltd. has verified that Respondent is bound by the Above.com Pty Ltd. 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 May 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 2017 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@toshibacorporation.com. Also on May 12, 2017, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 Forum transmitted to the parties a Notification of Respondent Default.
On June 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
1. Respondent’s <toshibacorporation.com> domain name is confusingly similar to Complainant’s TOSHIBA mark.
2. Respondent does not have any rights or legitimate interests in the <toshibacorporation.com> domain name.
3. Respondent registered and uses the <toshibacorporation.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant uses the TOSHIBA mark in connection with the creation and sale of electronics products. Complainant has registered the TOSHIBA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,405,380, registered Aug. 12, 1986), as well as in numerous other jurisdictions.
Respondent registered the <toshibacorporation.com> domain name on November 4, 2015, and uses it to resolve to a website competing with Complainant and other pay-per-click links, and to conduct a phishing scheme.
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."
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.
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(f), 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 (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.”).
The Panel finds that Complainant has established rights in the TOSHIBA mark under Policy ¶ 4(a)(i) through registration with the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office).
Respondent’s <toshibacorporation.com> domain name incorporates the TOSHIBA mark and adds the generic term “corporation,” and a “.com” gTLD. These changes do not sufficiently distinguish the disputed domain name from the TOSHIBA mark. The addition of generic words—particularly words like “corporation,” which pertain to a complainant’s corporate activities—fails to sufficiently distinguish domain names from registered marks. See Huntsman Corporation and Huntsman International, LLC v. VistaPrint Technologies Ltd, FA 1700564 (Forum Dec. 1, 2016) (holding that the addition of “corporation” to complainant’s HUNTSMAN mark, does not adequately distinguish <huntsmancorporation.com> from complainant’s mark under Policy ¶ 4(a)(i)). The addition of the “.com” gTLD does nothing to distinguish the disputed domain name. See, e.g., AOL Inc. v. Morgan, FA 1349260 (Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Therefore, the Panel finds that Respondent’s <toshibacorporation.com> domain name is confusingly similar to Complainant’s TOSHIBA mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant argues that Respondent has no rights or legitimate interests in the <toshibacorporation.com> domain name, asserting that it has not authorized Respondent’s use of the TOSHIBA mark. Complainant contends that Respondent is not commonly known by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). The WHOIS information for <toshibacorporation.com> identifies “Above.com Domain Privacy” as the registrant, which provides no evidence that Respondent is commonly known by this domain name. Thus, the Panel finds that Respondent is not commonly known by, and thus lacks rights and legitimate interest in, the <toshibacorporation.com> domain name pursuant to policy 4(c)(ii). See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name).
Complainant demonstrates that Respondent uses the disputed domain name to redirect Internet users to Dell, Inc., a competitor of Complainant. This is not a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Glaxo Group Ltd. v. WWW Zban, FA 203164 (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). Respondent also financially profits from the <toshibacorporation.com> domain name by using it to host pay-per-click advertisements, also not a bona fide offering of goods and services nor a legitimate noncommercial or fair use. See Vance Int’l, Inc. v. Abend, FA 970871 (Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees). Therefore, the Panel finds that Respondent has no rights or legitimate interests under Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent uses the <toshibacorporation.com> domain name to obtain sensitive user information through phishing tactics. In this scheme, a pop-up window declaring a “security warning” appears and prompts users to enter information about their computer, presumably allowing Respondent to access further, more sensitive information later. Panels have indicated that complainants can use evidence of phishing as additional evidence of a respondent’s lack of a legitimate interest in a disputed domain name. Chevron Intellectual Property LLC v. Thomas Webber / Chev Ronoil Recreational Sport Limited, FA 1661076 (Forum Mar. 15, 2016) (finding that the respondent had failed to provide a bona fide offering of goods or services or any legitimate noncommercial or fair use, stating, “Respondent is using an email address to pass themselves off as an affiliate of Complainant. Complainant presents evidence showing that the email address that Respondent has created is used to solicit information and money on false pretenses. The disputed domain name is being used to cause the recipients of these emails to mistakenly believe Respondent has a connection with Complainant and is one of the Complainant’s affiliates.”). The Panel accordingly finds that Respondent’s use of the <toshibacorporation.com> domain name for phishing is further evidence that Respondent has no rights or legitimate interests in the disputed domain name.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant makes two prominent assertions that fall within the articulated provisions of Policy ¶ 4(b): that Respondent registered and uses the disputed domain name to disrupt Complainant’s business under Policy ¶ 4(b)(iii), and for commercial gain of the kind articulated in Policy 4(b)(iv). Respondent uses <toshibacorporation.com> to redirect to the website of one of Complainant’s commercial competitors—Dell, Inc.—which disrupts Complainant’s business by offering directly competing products. This is evidence of bad faith under Policy ¶ 4(b)(iii). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (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). Further, Respondent uses the disputed domain name to attract Internet users in order to personally profit by way of pay-per-click advertisement revenue. This is evidence of bad faith under Policy ¶ 4(b)(iv). See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). Thus, the Panel finds Respondent’s bad faith within the meaning of Policy ¶¶ 4(b)(iii) and (iv).
Respondent also uses the disputed domain name to engage in a phishing scheme, which constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See Emdeon Business Services, LLC v. HR Emdeon Careers, FA1507001629459 (Forum Aug. 14, 2015) (finding that the respondent had engaged in an email phishing scheme indicating bad faith under Policy ¶ 4(a)(iii), where respondent was coordinating the disputed domain name to send emails to Internet users and advising them that they had been selected for a job interview with the complainant and was persuading the users to disclose personal information in the process).
Complainant argues that Respondent registered the disputed domain name with actual notice of Complainant’s rights in the well-known TOSHIBA mark. The Panel agrees and finds that Respondent had actual knowledge of Complainant’s rights in the TOSHIBA mark and registered <toshibacorporation.com> in bad faith under Policy ¶ 4(a)(iii). See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant's mark when it registered the domain name, panels can find bad faith).
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 <toshibacorporation.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 7, 2017
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