Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Rob Rhodes
Claim Number: FA1412001597227
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 Rob Rhodes (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <toshiba-tlds.com>, registered with Register.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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 29, 2014; the National Arbitration Forum received payment on December 29, 2014.
On December 30, 2014, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <toshiba-tlds.com> domain name is registered with Register.com, Inc. and that Respondent is the current registrant of the name. Register.com, Inc. has verified that Respondent is bound by the Register.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 January 2, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 22, 2015 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-tlds.com. Also on January 2, 2015, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 26, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Ho Hyun Nahm, 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
i) Complainant argues that the TOSHIBA mark is used to promote a range of electronic and media devices. The TOSHIBA mark is in fact registered with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,405,380, registered Aug. 12, 1986). The <toshiba-tlds.com> domain name takes the entire mark, adds a hyphen, and the phrase “tlds” (meaning “top level domains”), and includes the gTLD “.com.”
ii) Respondent has no rights or legitimate interests in this <toshiba-tlds.com> domain name. Respondent has never been commonly known by this <toshiba-tlds.com> domain name at any time. Further, Respondent is posting adult content on the domain name’s resolving website and thus has no legitimate or bona fide rationale for using the domain name.
iii) Respondent has registered and is using the <toshiba-tlds.com> domain name in bad faith. Respondent creates a dangerous likelihood for Internet users to believe that Complainant either endorses or is involved in the adult entertainment business. The fact that Respondent is using domain name to promote the adult entertainment business of Respondent is in itself evidence of bad faith. Respondent had to have known of the TOSHIBA mark when picking this specific domain name to market its adult content to the general public.
B. Respondent
Respondent did not submit a response. The <toshiba-tlds.com> domain name was registered April 3, 2014.
Complainant established that it had rights in the mark contained in the disputed domain name. Disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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."
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(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.”).
Complainant argues that the TOSHIBA mark is used to promote a range of electronic and media devices. Complainant submits that the TOSHIBA mark is in fact registered with the USPTO (e.g., Reg. No. 1,405,380, registered Aug. 12, 1986). The Panel accepts that this USPTO registration satisfies Complainant’s obligation to show rights in a mark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Complainant claims that the <toshiba-tlds.com> domain name takes the entire mark, adds a hyphen, and the phrase “tlds” (meaning “top level domains”), and includes the gTLD “.com.” The Panel agrees that adding a generic abbreviation and “.com” with a hyphen does nothing but create a confusing similarity as between the mark and the domain name at issue. See Columbia Sportswear Co. v. Keeler, D2000-0206 (WIPO May 16, 2000) (finding “[t]he use of hyphens ‘columbia-sports-wear-company’ in one of the Respondent's domain names in issue is insufficient to render it different to the trade mark COLUMBIA SPORTSWEAR COMPANY”); Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term).
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 (Nat. Arb. 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 (Nat. Arb. 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 claims that Respondent has never been commonly known by this <toshiba-tlds.com> domain name at any time. Complainant also attests that it has never licensed Complainant’s usage of the TOSHIBA mark for adult-oriented entertainment purposes—or any other purpose for that matter. The Panel agrees that nothing presented provides an iota of evidence from which to infer Respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. 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).
Complainant argues that Respondent is posting adult content on the domain name’s resolving website and thus has no legitimate or bona fide rationale for using the domain name. The Panel takes heed of this explicit content as seen in Exhibit 6. The Panel agrees there is plainly no bona fide offering or legitimate noncommercial use when using a confusingly similar domain name to promote adult-oriented videos. See Am. Online, Inc. v. Bates, FA 192595 (Nat. Arb. Forum Oct. 7, 2003) (“Attempts to commercially benefit from a domain name that is confusingly similar to another's mark by linking the domain name to an adult-oriented website [is] evidence that the registrant lacks rights or legitimate interests in the domain name.”).
Complainant attests that Respondent has registered and is using the <toshiba-tlds.com> domain name in bad faith. Complainant believes that Respondent creates a dangerous likelihood for Internet users to believe that Complainant either endorses or is involved in the adult entertainment business. This Panel agrees that using this domain name, as seen in Exhibit 6, to shuttle users to such a site is illustrative of an intent to profit from a likelihood of Internet user confusion in Policy ¶ 4(b)(iv) bad faith. 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).
Complainant claims that the fact that Respondent is using domain name to promote the adult entertainment business of Respondent is in itself evidence of bad faith. The Panel agrees that the use of the domain name for adult-oriented material also stands as an independence basis for finding bad faith under the totality of the circumstances through Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith).
Lastly, Complainant claims Respondent had to have known of the TOSHIBA mark when picking this specific domain name to market its adult content to the general public. Although previous panels have declined to find evidence of bad faith based solely on constructive knowledge, panels have found Policy ¶ 4(a)(iii) bad faith where the circumstances support an inference of actual knowledge. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. 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).”); Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. 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 infers actual knowledge of Respondent due to the fame of the Complainant’s mark, and thus the Panel finds additional evidence of Respondent’s bad faith registration pursuant to 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 <toshiba-tlds.com> domain name be TRANSFERRED from Respondent to Complainant Respondent.
Ho Hyun Nahm, Esq., Panelist
Dated: February 6, 2015
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