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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Toshiba dba Toshiba Corporation v. WUFACAI

Case No. D2006-0768

 

1. The Parties

The Complainant is Kabushiki Kaisha Toshiba dba Toshiba Corporation, Tokyo, Japan, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.

The Respondent is WUFACAI, Tianjin, China.

 

2. The Domain Name and Registrar

The disputed domain names <toshba-cn.com> and <toshiba-cn.com> are registered with Xin Net Technology Corp.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2006. On June 20, 2006, the Center transmitted by email to Xin Net Technology Corp. a request for registrar verification in connection with the domain names in dispute. On July 3, 2006, and July 4, 2006, Xin Net Technology Corp. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 6, 2006. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was July 30, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2006.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter on August 25, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is Toshiba, a Japanese corporation with its principal place of business in Tokyo, Japan. Founded in 1875, the Complainant is a global player in the field of electronic, industrial, and domestic products. It is a multinational company that currently employs more than 170,000 employees in over 55 countries, including Japan, China, and Hong Kong, SAR of China. The Complainant designs, manufactures, markets, and sells a wide variety of products under the trademark and trade name TOSHIBA. These products include domestic appliances, consumer electronics, telecommunications equipment, medical electronics equipment, electronic components and materials, and power systems and industrial equipment. The Complainant has used its TOSHIBA trademark and trade name for more than 60 years and it recently celebrated its 130^th Anniversary. The registered websites of the Complainant are located at “www.toshiba.com” and “www.toshiba.co.jp”.

The Complainant has long maintained a significant presence in China through its wholly owned subsidiary Toshiba (China) Co., Ltd., and 63 other Toshiba Group Overseas Companies in China. It employs more than 20,000 people in China. The Complainant’s Chinese website showcasing its products and services, including domestic appliances, is located at the domain name <toshiba.com.cn>. Toshiba has operated its Chinese website for many years, long before the Respondent registered the domain names on February 28, 2006.

The Complainant has registered its TOSHIBA mark and/or variations of that mark in more than 150 countries around the world. It owns numerous registrations in China for the marks TOSHIBA and TOSHIBA and design. Its registrations for its TOSHIBA mark in China include the following registrations, all of which long predate the Respondent’s registration of the domain names:

a. Registration No. 148014, issued July 15, 1981, covering goods in International Class 7.

b. Registration No. 679625, issued February 28, 1994, covering goods in International Class 7.

c. Registration No. 148005, issued July 15, 1981, covering goods in International Class 9.

d- Registration No. 1000143, issued May 7, 1997, covering goods in International Class 9.

e. Registration No. 148029, issued July 15, 1981, covering goods in International Class 11.

f. Registration No. 148023, issued July 15, 1981, covering goods in International Class 16.

The Respondent registered the domain names <toshiba-cn.com> and <toshba-cn.com> on February 28, 2006. The disputed domain names resolve onto websites that are almost the exact copies of the Complainant’s “www.toshiba.com.cn” website. The Respondent’s websites also advertise a public lottery under the TOSHIBA mark and name offering tickets for a chance to collect prizes including a TOSHIBA laptops, a HONDA car, and cash on false claims that the lottery is to celebrate the Complainant’s 130^th anniversary.

 

5. Parties’ Contentions

A. Complainant

The Complainant’s contentions are summarized as follows:

(a) Identical or Confusingly Similar

The Complainant contends that the Respondent’s domain names <toshiba-cn.com> and <toshba-cn.com> are confusingly similar to the Complainant’s TOSHIBA mark because each of the domain names is made up of the Complainant’s mark “TOSHIBA” or a common misspelling of the Complainant’s mark “TOSHBA” with the letters “cn” and a hyphen. The combination of the Complainant’s TOSHIBA mark with the letters “cn” and a hyphen is insufficient to distinguish the Respondent’s domain names from the Complainant’s mark because the dominant portion of each domain name is the Complainant’s TOSHIBA mark. The Complainant made reference to a number of UDRP decisions like Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Pro Life Domains, NAF FA0401000223039; Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba, WIPO Case No. D2004-0941; VWR International, Inc. v. Jason Gang Liu, NAF FA0408000316388; Yahoo! Inc. v. Gianluca Deiana d/b/a Ayhooo Inc, NAF FA0410000339579 to support its argument. Furthermore, the Complainant contends that the public interprets the letters “cn” as the geographical abbreviation for China, thus the addition of “cn” to the Complainant’s TOSHIBA mark in the domain names does not in any way distinguish the domain names from the Complainant’s TOSHIBA mark. In fact, the addition of the geographic abbreviation “cn” increases the likelihood of confusion by suggesting that the domain names refer to the Complainant’s business presence or operations in China. It is the Complainant’s contentions that UDRP decisions have consistently held that the addition of a geographic term does not distinguish a domain name from a trademark. Indeed, a domain name which comprised of a trademark and a geographic term actually increases the likelihood of confusion and association between the domain name holder and the trademark owner. See Amazon.com, Inc. v. A.R. Information & Publication Co. Ltd, WIPO Case No. D2001-1392; and Rolls-Royce PLC v. Hallofpain, WIPO Case No. D2000-1709.

(b) Rights or Legitimate Interests

The Complainant contends that the Respondent has registered and used the disputed domain names for websites that are copies of the Complainant’s “www.toshiba.com.cn” website. Furthermore, the Respondent had fraudulently advertised a fake lottery under the Complainant’s TOSHIBA mark and such acts did not and could not constitute a bona fide offering of goods or services pursuant to paragraph 4(c)(i) of the Policy. The Complainant also contends that the Respondent’s activities did not constitute fair use under the Policy and reference was made to UDRP decisions such as Monsanto Company v. Decepticons, NAF FA011000101536; VWR International, Inc. v. Jason Gang Liu, NAF FA0408000316388; MO Media LLC v. NeXt Age Technologies LTD, NAF FA0312000220031; and Rockford Corp. v. Joerg Kniebel, NAF FA0311000209982. Finally, the Complainant contends that the Respondent is not and has not been commonly known by the disputed domain names.

(c) Registered and Used in Bad Faith

The Complainant contends that the Respondent’s registration and use of the domain names constitutes bad faith according to the Rules and its reasons are as follows:

(i) The Respondent uses the disputed domain names with the intention to attract Internet users to its websites by creating a likelihood of confusion with the Complainant’s TOSHIBA mark as to the source, sponsorship, affiliation, and/or endorsement of the Respondent’s websites. The advertisement of the fraudulent lottery on the Respondent’s websites is evidence of the Respondent’s registration and use of the domain names in bad faith. See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba, WIPO Case No. D2004-0941; and MO Media LLC v. NeXt Age Technologies LTD, NAF FA0312000220031;

(ii) The Respondent’s registration and use of the domain names for websites which copied the Complainant’s “www.toshiba.com.cn” website and which provided false information about the Complainant constitutes bad faith. See American International Group, Inc. v. Walter Busby dba AIG Mergers and Acquisitions, NAF FA0304000156251; Johnson Financial Group, Inc. v. Wolfgang Janssen aka Janssen Wolfgang aka Privat, NAF FA0311000214465;

(iii) The Respondent’s registration and use of the domain names disrupts the Complainant’s business by diverting Internet traffic from the Complainant’s genuine websites to the Respondent’s websites. The Respondent’s actions also interfered with the Complainant’s business and its ability to promote its products under its TOSHIBA mark. This is evidence of bad faith pursuant to paragraph 4(b)(iii) of the Policy. See Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279); and Panavision Inc And Panavision International, L P v. Gala Trade Inc, WIPO Case No. D2000-1533.

(iv) The Respondent’s registration and use of the disputed domain names constitutes a pattern of registering trademark-related domain names in bad faith pursuant to paragraph 4(b)(ii) of the Policy. See YAHOO! INC v. SYRYNX, INC. and HUGH HAMILTON, WIPO Case No. D2000-1675; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. D2004-0784;

(v) Given the fame of the Complainant’s TOSHIBA mark and the fact that the Respondent uses the domain names for websites that are virtually identical copies of the Complainant’s “www.toshiba.com.cn” website, the Complainant argues that the Respondent had knowledge of the Complainant’s rights in the TOSHIBA mark when it registered the domain names. By registering the domain names with knowledge of the Complainant’s rights in its TOSHIBA mark, the Respondent has acted in bad faith. See Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong, WIPO Case No. D2003-0408; Yahoo! Inc. v. Kelvin Pham, NAF FA0204000109699.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

6.1 Language of the Proceedings

The language of the registration agreement for the disputed domain names is Chinese. Pursuant to Rules, paragraph 11, in the absence of an agreement between the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement. Accordingly, the Complainant has filed its Complaint in both Chinese and English.

(i) The Panel’s discretion under the Policy

Paragraph 11 of the Rules provides:

“Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.”

Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of an agreement, the language of the registration agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel’s discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. 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.

(ii) The Circumstances of this Case

One important consideration is the issue of fairness to both parties in their abilities to prepare the necessary documents for this proceeding and also to respond adequately to these documents when they are served upon the parties. The Panel is satisfied that the Complainant has taken all reasonable steps to bring the present proceeding to the Respondent’s attention. The Respondent has not responded to the Complainant’s communications and thus, it was not possible for the Complainant to come to an agreement on the issue of the language of the proceeding with the Respondent.

In particular, the Complainant in this case has filed its Complaint in two languages: Chinese and English. The Respondent has then been notified of the Complaint and its contents in both languages. However, the Respondent has failed to respond to the Complainant’s contentions. The Panel finds that the Respondent’s failure to respond to the Complaint might not be the result of the Respondent’s inability to understand the Complaint filed against him but an indication that he could not provide a satisfactory response to the allegations contained in the Complaint lodged by the Complainant.

After considering the circumstances of the present case, the Panel decides that the proceeding should be English and the decision of the Administrative Panel will be delivered in English.

6.2 Substantive Elements of the Policy

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

2. the 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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Policy, (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to demonstrate that it has registered trade mark rights in the mark TOSHIBA in many countries throughout the world including China. The disputed domain names comprise (a) an exact reproduction of the Complainant’s trade mark and the suffix ‘cn’ with a hyphen between them; and (b) a misspelling of the Complainant’s trade mark and the suffix ‘cn’ with a hyphen in between.

In assessing the degree of similarity between the Complainant’s mark and the disputed domain names, the Panel shall have regard to the degree of visual, aural or conceptual similarity between them and where appropriate, evaluate the importance to be attached to these different elements. The issue of degree of similarity between the Complainant’s mark and the disputed domain names is to be considered from the perspective of the average consumer of the goods or services concerned and in this case, the average consumer is the Internet user seeking to purchase or download the Complainant’s electronic products and services. The word “toshiba” is the dominant and the distinctive element of the Complainant’s mark and it has been reproduced in its entirety, or almost in its entirety, in the disputed domain names. The Panel finds that the word “toshiba” or the misspelled “toshba” portion is the most prominent part of the disputed domain names which will attract consumers’ attention. The Panel accepts the Complainant’s contention that the suffix ‘cn’ is generally recognised as a geographical indicia denoting China and the addition of such a suffix to the trade mark TOSHIBA is non-distinctive. Anyone looking at the compositions <toshiba-cn.com> and <toshba-cn.com> is likely to come to the conclusion that the suffix ‘cn’ describes the geographical source or origin of the Complainant’s products or services and that the Complainant is operating or doing business in China.

Bearing in mind the following factors, in particular (a) the fame of the Complainant’s trade mark and the fact that the Respondent is using the disputed domain names for websites that are almost an exact replica of the Complainant’s genuine website “www.toshiba.com.cn” in China; (b) the distinctive character of the Complainant’s mark TOSHIBA; (c) the dominant component of the disputed domain names; and (d) the visual, aural and similarities between them, the Panel therefore finds that the disputed domain names <toshiba-cn.com> and <toshba-cn.com> are confusingly similar to a trade mark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] 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 [Respondent] (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 [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel notes that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain names. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain names. In accordance with the Rules paragraph 14, the Panel thus draws such inferences as she considers appropriate, which are that the Respondent appears to be unable to adduce evidence of any rights or legitimate interests to the disputed domain names.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names:

1. the Complainant’s trade mark TOSHIBA is a word with no meaning or connection with the goods or services sold under it. Thus the Respondent could not be using the word “toshiba” in a descriptive sense. Therefore, the Respondent must provide plausible explanations in its choice of the disputed domain names which are confusingly similar to TOSHIBA;

2. the Respondent has not provided evidence of a legitimate use of the domain names or reasons to justify the choice of the word “toshiba” in its business operations;

3. there was no evidence to show that the Complainant has licensed or otherwise permitted the Respondent to use its trade mark or to apply for or use any domain names incorporating the trade mark;

4. there is no indication whatsoever that the Respondent is commonly known by the disputed domain names and/or is using the domain names in connection with a bona fide offering of goods or services. In fact, there is substantial evidence adduced by the Complainant which indicates that the Respondent is using the disputed domain names in fraudulent schemes over the Internet;

5. the Complainant and its mark TOSHIBA enjoy a considerable reputation with regard to electronic goods and services in Japan and in many countries in the world including China. Consequently, in the absence of contrary evidence from the Respondent, the TOSHIBA mark is not one that traders could legitimately adopt other than for the purpose of creating an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part of the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of the domain name in bad faith, namely:

(i) circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has 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 the Respondent has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website 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 the Respondent’s website or location or of a product.

The Panel concludes based on the case file that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude that the Respondent has registered and used the disputed domain names in bad faith.

Firstly, the Panel finds that the Complainant and its mark TOSHIBA enjoys a considerable reputation with regard to electronic goods and services in Japan and in many countries in the world including China. Therefore, the Panel finds that it is not conceivable that the Respondent would not have had actual notice of the Complainant’s trademark rights at the time of the registration of the domain names. Consequently, it would have been pertinent for the Respondent to provide an explanation of its choice in the disputed domain names, failing which the Panel draws the conclusion that the disputed domain names were registered in bad faith with intent to create an impression of an association with the Complainant and its electronic goods and services.

The Complainant has adduced evidence to show that the Respondent’s domain names resolved onto websites that are almost an exact copy of the Complainant genuine website in China. False information such as a public lottery, conducted in the pretext of celebrating the Complainant’s 130^th anniversary, in which consumers stand the chance of winning many prizes was posted on the Respondent’s websites. The Respondent did not obtain the Complainant’s consent to engage in such promotional activities. Furthermore, the Respondent is also not the authorised agent or representative of the Complainant and does not have the authority to use the Complainant’s TOSHIBA mark in connection with the sale of goods or services.

The Panel finds that there is overwhelming evidence that the Respondent has registered the disputed domain names for less than honorable intentions. The Complainant has adduced evidence and proved that by using confusingly similar disputed domain names, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s websites. Furthermore, the Respondent has through the use of these confusingly similar domain names created a likelihood of confusion with the Complainant’s mark and this constitutes a fraudulent misrepresentation to the public that his websites are associated or connected with the Complainant. In the absence of evidence to the contrary and rebuttal from the Respondent, the choice of the disputed domain names and the conduct of the Respondent as far as the websites on to which the domain names resolve are indicative of registration and usage of the disputed domain names in bad faith.

The Panel accepts the Complainant’s submission that this fact coupled with all the other evidence proves that the Respondent has registered and used the disputed domain names in bad faith.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <toshba-cn.com> and <toshiba-cn.com> be transferred to the Complainant.

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Susanna H.S. Leong
Sole Panelist

Dated: September 8, 2006