Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. DIMITAR MISHEV
Claim Number: FA1506001622482
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 DIMITAR MISHEV (“Respondent”), Macedonia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <laptopcomputerstoshiba.com>, registered with eNom, Inc.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 3, 2015; the Forum received payment on June 3, 2015.
On June 3, 2015, eNom, Inc. confirmed by e-mail to the Forum that the <laptopcomputerstoshiba.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 4, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 24, 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@laptopcomputerstoshiba.com. Also on June 4, 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 Forum transmitted to the parties a Notification of Respondent Default.
On July 1, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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
Complainant states that it is part of a group founded in 1875, consisting of more than 590 companies around the world that employ some 200,000 people. It is a world-leading diversified manufacturer, solutions provider, and marketer of advanced electronic and electrical products and systems, including in particular laptop computers.
Complainant states that it owns numerous registrations for its TOSHIBA mark and/or variations thereof in more than 170 countries around the world, with registrations dating back to 1986. Its mark is famous.
According to Complainant, Respondent uses the disputed domain name to redirect Internet users to a third-party personals/dating website. That website offers an affiliate program that pays “high rates” for traffic directed to it. As shown by the “source” or tracking number in the redirect URL, Respondent is an affiliate of the said site and receives affiliate commissions for traffic directed to the said site via the disputed domain name.
Complainant alleges that the disputed domain name is confusingly similar to its mark because it contains the mark in its entirety and merely adds the descriptive term “laptop computers”. Complainant cites UDRP precedents to support its position.
According to Complainant, Respondent’s registration and use of the disputed domain name to redirect Internet users to a third-party dating website does not constitute a bona fide offering of goods or services or noncommercial fair use under the UDRP. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent is not and has not been commonly known by the disputed domain name, and Complainant has not licensed or otherwise authorized Respondent to use its famous mark.
Complainant alleges that Respondent’s registration and use of the disputed domain name constitute bad faith under UDRP ¶ 4(b)(iv) because Respondent uses the disputed domain name to intentionally attract, for commercial gain, Internet users to the associated website by creating a likelihood of confusion with Complainant and its famous mark as to the source, sponsorship, affiliation, and/or endorsement of such website and the services advertised/offered therein. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has registered trademarks for numerous marks that include the name TOSHIBA, dating back to 1986. Its marks are famous around the world. They are used, inter alia, to market computers, including laptop computers.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name was registered in 2015.
The products and services offered by Complainant are widely used and well known.
Respondent is using the disputed domain name to resolve to a web site for an online dating service.
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.”).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s mark because it contains the entire mark and adds the generic term “laptop computers”. See 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); see also Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”).
Respondent is not authorized to use Complainant’s mark and it is not commonly known by the disputed domain name. Respondent is using the disputed domain name to resolve to a web page offering dating services. Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate.
Given that Complainant’s mark is famous and that it is used to market laptop computers, and that Respondent is offering totally unrelated services on its web site, the Panel finds that Respondent’s use of the disputed domain name does not constitute a bona fide offering or a legitimate noncommercial or fair use. See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly similar to Complainant’s mark to divert Internet users to websites unrelated to Complainant's business does not represent 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).”).
Thus the Panel finds that the Respondent does not have rights or legitimate interests in the disputed domain name.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
As already noted, Respondent is using the disputed domain name to resolve to a web site offering dating services. Internet users will likely be confused when they land on Respondent’s site after typing the disputed domain name. Respondent profits from the visits to the web site at the disputed domain name. Prior panels have found that a respondent who creates a likelihood of confusion for commercial gain has engaged in bad faith under Policy ¶ 4(b)(iv). 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); see also Toshiba v. Fairbairn (Nat. Arb. Forum Feb. 26, 2009),where the Panel held that “The website that resolves from the <toshibahdtv.biz> domain name displays links to sites that are related to dating services between American men and Russian women, which has no discernible relation to Complainant’s TOSHIBA mark. The Panel infers that Respondent receives pay-per-click fees for these links. Since the disputed domain name is confusingly similar to Complainant’s mark, Internet users are likely to become confused as to Complainant’s affiliation or sponsorship of the disputed domain name and resolving website. Respondent is seeking to profit from this confusion by hosting pay-per-click links on the resolving website. The Panel finds this is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”
The Panel finds that a likelihood of confusion exists, that Respondent is commercially profiting in the process, and that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <laptopcomputerstoshiba.com> domain name be TRANSFERRED from Respondent to Complainant or.
Richard Hill, Panelist
Dated: July 2, 2015
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