Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ran jiangfei / ranjiangfei
Claim Number: FA1807001797650
Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (“Complainant”), represented by David M. Kelly of Kelly IP, LLP, Washington DC, USA. Respondent is ran jiangfei / ranjiangfei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <toshiba-gulf.com> and <driversoftoshiba.com>, registered with 1API GmbH.
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.
Charles A. Kuechenmeister
Complainant submitted a Complaint to the Forum electronically on July 20, 2018; the Forum received payment on July 20, 2018.
On July 23, 2018, 1API GmbH confirmed by e-mail to the Forum that the <toshiba-gulf.com> and <driversoftoshiba.com> domain names (the “Domain Names”) are registered with 1API GmbH and that Respondent is the current registrant of the names. 1API GmbH has verified that Respondent is bound by the 1API GmbH 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 July 27, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint setting a deadline of August 16, 2018 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-gulf.com, postmaster@driversoftoshiba.com. Also on July 27, 2018, 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 August 20, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Charles A. Kuechenmeister 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.
PRELIMINARY ISSUE
Multiple Domains
Paragraph 3(c) of the Rules provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name-holder.” Complaint Exhibit 1 is the WHOIS information for the Domain Names. It shows that both Domain Names are registered to “ran jiangfei,” with the registrant organization listed as “ranjiangfei.” Further, the WHOIS information lists the same address for the registrant of both names, and both Domain Names use the same privacy service. See, Complaint Exhibit 1. On this evidence the Panel finds that both Domain Names are registered and controlled by the same person or entity and will proceed as to both of them.
A. Complainant
Complainant is a global provider of advanced electronic and electrical products and systems. It registered the TOSHIBA mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,405,380) on August 12, 1986. Respondent’s Domain Names are identical or confusingly similar to Complainant’s mark as they each contain Complainant’s mark in its entirety and add either the geographic term “gulf” and a hyphen, or the generic terms “drivers of,” along with the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the Domain Names. It is not commonly known by either of them, nor has Complainant authorized, licensed, or otherwise permitted Respondent to use its TOSHIBA mark. Further, Respondent does not use the Domain Names in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, it uses them to host webpages containing pornographic material.
Respondent registered and uses the Domain Names in bad faith. It uses them to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s famous TOSHIBA mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s websites featuring pornographic material. Such use also disrupts Complainant’s business and tarnishes its mark. Finally, given the international fame of Complainant’s TOSHIBA mark and the fact that the Domain Names contain Complainant’s mark in its entirety, there is no question that Respondent registered the Domain Names with knowledge of Complainant’s rights in the TOSHIBA mark.
B. Respondent
Respondent did not submit a Response in this proceeding.
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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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 makes the findings set forth below with respect to the Domain Names.
Complainant registered its TOSHIBA mark with the USPTO (Reg. No. 1,405,380) on August 12, 1986. See, Complaint Exhibit 6. Registration of a mark with the USPTO is sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (“There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s Domain Names are confusingly similar to Complainant’s TOSHIBA mark as they each contain that mark in its entirety and alter it only by adding a hyphen and the geographic term “gulf” in the case of <toshiba-gulf.com> and the generic terms “drivers of” in the case of <driversoftoshiba.com>, along with the “.com” gTLD. These changes are not sufficient to distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Doosan Corporation v. philippe champain, FA 1636675 (Forum Oct. 13, 2015) (finding that geographic designations or terms descriptive of a complainant’s business operations do not remove a domain name from the realm of confusing similarity.), NSK LTD. v. Xu Yan / ChangZhou City Thinker Network Technology Co., Ltd., FA 1709111 (Forum Jan. 31, 2017) (“The disputed domain name combines both of Complainant’s RHP and NSK marks, with a hyphen added between them… creating confusing similarity.”), and Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (a gTLD, sTLD or ccTLD is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs. Likewise, the absence of spaces must be disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax prohibits them.”).
Based upon the forgoing, the Panel finds that the Domain Name is identical or confusingly similar to the TOSHIBA mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Names because (i) it is not commonly known by the Domain Names, (ii) it is not affiliated with or authorized by Complainant to use Complainant’s mark in the Domain Names, and (iii) it is not using the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or other fair use because using a domain name to host pornographic web sites cannot constitute a bona fide offering of goods and services. These allegations are supported by competent evidence.
According to information furnished to The Forum by the registrar of the Domain Names, and the WHOIS information submitted as Complaint Exhibit 1, the registrant is “ran jiangfei” and the registrant organization is “ranjiangfei.” These names bear no resemblance to either Domain Name. UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name. 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 states that Respondent is not affiliated with it in any way, and that it has never authorized Respondent to use its TOSHIBA mark in any domain name registration. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name).
Complaint Exhibits 7 and 8 are screenshots of the web sites resolving from the Domain Names as of July 6, 2018. Both sites are clearly pornographic in nature. Using a confusingly similar domain name to market pornographic material has often been held by UDRP panels not to qualify as or constitute a bona fide offer of goods or services within the meaning of Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Altria Group, Inc. and Altria Group Distribution Company v. xiazihong, FA1732665 (Forum July 7, 2017) (holding that “[u]se of a domain name to display adult-oriented images is not considered a bona fide offering of goods or services or a legitimate noncommercial or fair use under the Policy.”), Toshiba v. Tulsa, WIPO Case No. D2004-1066 (January 5, 2005).
Complainant has made its prima facie case. On the evidence presented, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
Complainant alleges that Respondent’s use of the Domain Names disrupts its business and tarnishes its mark. Respondent is clearly not a competitor of Complainant, and it appears that it registered the Domain Names primarily to attract Internet traffic searching for Complainant rather than to disrupt the business of a competitor, as contemplated by Policy ¶ 4(b)(iii). Nevertheless, the Policy recognizes that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005). The non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and UDRP panels have held that using a confusingly similar domain name to market pornographic material does disrupt a complainant’s business and constitutes bad faith use and registration for the purposes of Policy ¶ 4(a)(iii). Google v. Freije, FA 111000102609 (Forum January 11, 2002) (referring to the respondent’s use of the domain name in connection with a pornographic and sexually explicit web site, the panel held that “Respondent’s registration and use of the domain name which disrupts Complainant’s business and tarnishes Complainant’s mark qualifies as bad faith use and registration under Policy ¶ 4(a)(iii).”), Florists’ Transworld Delivery v. Domain Strategy, FA 021000500113974 (Forum June 27, 2002) (“Respondent’s tarnishing of Complainant’s FTD mark by creating a perceived affiliation with pornography constitutes bad faith under Policy ¶ 4(a)(iii).”).
Further, Respondent’s use of the Domain Names to host webpages containing pornographic material provides an independent basis for a finding of bad faith. Recognizing the non-exclusive nature of Policy ¶ 4(b), many UDRP panels have held that using a confusingly similar domain name in connection with pornographic material, in and of itself, is evidence of bad faith registration and use for the purposes of Policy ¶ 4(a)(iii). Molson Canada 2005 v. JEAN LUCAS / DOMCHARME GROUP, FA1412001596702 (Forum Feb. 10, 2015) (“Further, Respondent’s diversion of the domain names to adult-oriented sites is registration and use of the disputed domain names in bad faith under Policy ¶ 4(a)(iii).”).
Finally, Complainant’s TOSHIBA mark is famous world-wide. See, Complaint Exhibits 3- 5. According to the WHOIS information submitted as Complaint Exhibit 1, the Domain Names were created in December 2017. Considering the world-wide fame of the TOSHIBA mark, and the fact that the Domain Names incorporate that mark verbatim, it is clear that Respondent knew of Complainant’s mark when it registered them. Indeed, it is evident that it registered them precisely because they contain Complainant’s mark and would likely attract Internet traffic to its site. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name is evidence of bad faith within the meaning of 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). Respondent clearly knew of Complainant and its mark when it registered the Domain Names.
For the reasons set forth above, the Panel finds that Respondent registered and is using the Domain Names in bad faith within the meaning of Policy ¶ 4(a)(iii).
Complainant 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-gulf.com>, and <driversoftoshiba> Domain Names be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: August 22, 2018
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