Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Guo MengNi / GuoMengNi Guo / Guo GuoMengNi / 郭孟妮
Claim Number: FA1709001747411
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 Guo MengNi / GuoMengNi Guo / Guo GuoMengNi / 郭孟妮 (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <toshiba-golbal.com>, <toshiba-golbal.net>, <toshiba-golbal.org> and <toshiba-golbal.vip>, registered with Shanghai Meicheng Technology Information Development Co., Ltd..
The undersigned certifies that he has acted independently and impartially and to the best of hi knowledge has no known conflict in serving as Panelist in this proceeding.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 4, 2017; the Forum received payment on September 4, 2017.
On September 7, 2017, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the Forum that the <toshiba-golbal.com>, <toshiba-golbal.net>, <toshiba-golbal.org> and <toshiba-golbal.vip> domain names are registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the names. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., 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 September 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 28, 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@toshiba-golbal.com, postmaster@toshiba-golbal.net, postmaster@toshiba-golbal.org, postmaster@toshiba-golbal.vip. Also on September 8, 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 September 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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 names be transferred from Respondent to Complainant.
A. Complainant
i) Complainant, Toshiba Corporation, is a Fortune Global 500 company and diversified electric/electronic manufacturer. For over 60 years, Complainant has used its TOSHIBA mark to promote a wide range of products and services. Complainant has established rights in the TOSHIBA mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,405,380, registered Aug. 12, 1986). Respondent’s infringing domain names are confusingly similar to Complainant’s mark because each appends a hyphen, followed by a misspelling of the generic term “global,” and a generic top-level domain (“gTLD”) to the fully incorporated mark.
ii) Respondent does not have rights or legitimate interests in the disputed domain names. Complainant has not licensed or otherwise authorized Respondent to use its famous mark in any fashion, and Respondent is not commonly known by any of the disputed domain names. Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant by copying Complainant’s <TOSHIBA.CO.JP> website in its entirety. Further, Respondent uses the domain names for error-message websites located at URLs containing the terms “User Login” which strongly suggest Respondent is using the domain names in connection with a phishing scam to attempt to obtain login credentials.
iii) Respondent registered and is using the infringing domain names in bad faith. Respondent’s registration of multiple infringing domain names in the present case indicates a pattern of bad faith registration. Additionally, Respondent attempts to disrupt the business of Complainant by interfering with Complainant’s ability to control the use of its mark. Respondent also attempts to attract Internet traffic and commercially benefit from the goodwill of the TOSHIBA mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by passing itself off as Complainant. Finally, Respondent had actual knowledge of Complainant’s rights in the TOSHIBA mark at the time of registration due to the fame of the mark.
B. Respondent
Respondent did not submit a Response. However, the Panel notes the following registration dates for the disputed domain names:
<toshiba-golbal.com> May 23, 2017
<toshiba-golbal.net> May 23, 2017
<toshiba-golbal.org> May 22, 2017
<toshiba-golbal.vip> June 18, 2017
Complainant established that it had rights in the mark contained in the disputed domain names. Each of the disputed domain names is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain names.
Respondent registered and used the disputed domain names in bad faith.
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."
Preliminary issue: Language of the Proceedings
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”). Here, Complainant asserts that there is no question that Respondent has knowledge of or proficiency in English as shown by Respondent’s use of the English-language software program HTTrack, which is offered on HTTrack’s English-language website, to copy Complainant’s <TOSHIBA.CO.JP> website. Further, Respondent’s websites include English language pages of Complainant’s website.
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. In the absence of Response and no objection to the Complainant's request for the language of proceeding, the Panel decides English to be the language of the proceeding. See FilmNet Inc. v Onetz, FA 96196 (Forum Feb. 12, 2001 (finding it appropriate to conduct the proceeding in English under Rule 11, despite Korean being designated as the required language in the registration agreement because the respondent submitted a response in English after receiving the complaint in Korean and English).
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.”).
Respondent’s infringing domain names are confusingly similar to Complainant’s mark because each appends a hyphen followed by the term “golbal”—a misspelled version of the generic geographic term “global”—and a gTLD to the fully incorporated mark. The addition a generic term and a gTLD does not negate confusing similarity. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Similarly, the addition of a hyphen to a mark is not a change significant enough to overcome confusing similarity. See Health Devices Corp. v. Aspen S T C, FA 158254 (Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”). Therefore, the Panel concludes that Respondent’s <toshiba-golbal.com>, <toshiba-golbal.net>, <toshiba-golbal.org> and <toshiba-golbal.vip> are confusingly similar to Complainant’s TOSHIBA mark.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then 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 asserts that Respondent has no rights or legitimate interests in the disputed domain names. Complainant claims it has not licensed or otherwise authorized Respondent to use its TOSHIBA mark in any fashion. A lack of contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name can be evidence of a lack of rights and legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Additionally, WHOIS information can be used to support a finding under Policy ¶ 4(c)(ii) that a respondent is not commonly known by a disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The Panel notes that the WHOIS information of record for <toshiba-golbal.com>, <toshiba-golbal.net>, <toshiba-golbal.org> and <toshiba-golbal.vip> list “Guo MengNi,” “Guo MengNi,” “Guo GuoMengNi” or “郭孟妮,” as registrants, respectively. Therefore, the Panel holds that the Respondent is not commonly known by any of the infringing domain names.
Complainant contends that Respondent is not using the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant by copying Complainant’s <TOSHIBA.CO.JP> in its entirety and displaying it at the resolving websites. A respondent’s use of a domain name to pass itself off as the complainant is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Here, Complainant provided screenshots showing that the disputed domain names resolve to websites that are identical to Complainant’s <TOSHIBA.CO.JP> website. Complainant also offers evidence of Respondent’s use of a website-copying software known as “HTTrack according to one of Complainant's exhibits, printouts from HTTrack’s website, Screenshots of Respondent’s websites and corresponding source codes. Therefore, the Panel concludes that Respondent attempted to pass itself off as Complainant and did not use the domain names in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use.
Further, Complainant asserts that Respondent is using the domain names in connection with error-message websites located at URLs containing the terms “User Login.” This Complainant's evidence strongly suggests Respondent is using the domain names in connection with a phishing scam to attempt to obtain Internet users’ login credentials. A respondent’s use of a domain name to phish for Internet users’ personal information is not a bona fide offering of goods or services or legitimate noncommercial or fair use. See Morgan Stanley v. Zhange Sheng Xu / Zhang Sheng Xu, FA1501001600534 (Forum Feb. 26, 2015) (“The Panel agrees that the respondent’s apparent phishing attempt provides further indication that the respondent lacks any rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Allianz of Am. Corp. v. Bond, FA 690796 (Forum June 12, 2006) (holding that the respondent’s use of the <allianzcorp.biz> domain name to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Therefore, the Panel holds that Respondent used the disputed domain names for a phishing scheme instead of a bona fide offering of goods or services or legitimate noncommercial or fair use.
Complainant contends that Respondent has registered and is using the disputed domain name in bad faith due to Respondent’s pattern of bad faith registrations. In the present case, Respondent has registered four infringing domain names. A respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registrations. See Philip Morris USA Inc. v. RapidClic / VAUCLIN Olivier, FA1309001520008 (Forum Nov. 7, 2013) (finding that the respondent’s registration of multiple infringing domain names indicates a pattern of bad faith registration and use under Policy ¶ 4(b)(ii)). The Panel finds that Respondent’s registration of multiple infringing domain names evinces a pattern and is independent evidence of bad faith per Policy ¶ 4(b)(ii).
Respondent has registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii) and (iv) by attempting to attract Internet traffic and commercially benefit from the goodwill of the TOSHIBA mark by passing off as Complainant. Use of a disputed domain name to divert Internet users by creating confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iii) and (iv). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that the respondent’s registration and use of the disputed domain name, which displayed a website virtually identical to the complainant’s website, constituted bad faith pursuant to Policy ¶ 4(b)(iii)); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Here, Complainant has provided screenshot evidence of the infringing domain names’ resolving websites featuring content that is identical to Complainant’s <TOSHIBA.CO.JP> website. Therefore, the Panel concludes that Respondent created confusion and therefore registered and used the domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Complainant also contends that in light of the fame and notoriety of Complainant’s TOSHIBA mark, it is inconceivable that Respondent could have registered the <toshiba-golbal.com>, <toshiba-golbal.net>, <toshiba-golbal.org> and <toshiba-golbal.vip> domain names without actual and/or constructive knowledge of Complainant’s rights in the mark. Arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy.").
However, actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent has actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s TOSHIBA mark has created significant goodwill and consumer recognition around the world and has been used for over 60 years. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the domain names were registered and subsequently used.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <toshiba-golbal.com>, <toshiba-golbal.net>, <toshiba-golbal.org> and <toshiba-golbal.vip> domain names be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq, Panelist
Dated: October 3, 2017
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