Kabushiki Kaisha Toshiba v. Shan Computers
[Indexed as: Toshiba v. Shan]
[Indexed as: toshiba.net]
WIPO Arbitration and Mediation Center
Administrative Panel Decision
Case No.: D2000-0325
Commenced: 9 May, 2000
Judgement: 27 June, 2000
Panel Member: Dr. Andrew F. Christie
Domain name-Domain name resolution policy-Cybersquatting-Bad faith- Rights and Legitimate Interests-Identical confusingly similar-Default judgement.
Complainant is the owner of several subsisting United States Registrations of the mark TOSHIBA. Complainant has substantially and continuously used the name and mark TOSIBA for over forty years throughout most of the world. The disputed name, toshiba.net, was registered by Respondent in 1999 as part of a web page located at http://www.toshiba.net. Two months later Respondent sent an unsolicited letter to Complainant offering to sell the domain to Complainant.
Held, Domain name transferred to Complainant.
There are no exceptional circumstances for the failure of Respondent to submit a response. The Panel infers from Respondents failure to submit a response that Respondent does not deny Complainants assertion of facts or the conclusions drawn by Complainant from those facts.
The relevant part of the domain name is identical to the Complainants
registered trademark TOSHIBA.
Respondent has not provided evidence giving rise to a right or legitimate
interest in the domain name. Respondents imputed knowledge of Complainants
mark combined with lack of right or legitimate interest in the domain name
are grounds on which the Panel concludes that Respondent registered domain
name in bad faith. There is also no bona fide offering of goods and
services by Respondent on web site with disputed domain name. In addition,
the only distinguishing feature of the site is use of the Complainants
trademark. Accordingly, there is nothing to disabuse a visitor from
the assumption that the site is associated with the commercial activities
of the Complainant. Finally the Respondents offer to sell the domain name
did not specify a price. This suggests that the price for which Respondent
was willing to sell was greater than Respondents out of pocket expenses
as otherwise the offer would have stated out of pocket expenses as the
price.
Policies referred to:
Uniform Domain Name Resolution Policy Adopted August 6, 1999
Statutes referred to:
Rules for Uniform Domain Name Dispute Resolution Policy
Cases referred to:
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1. The Parties
1.1 The Complainant is Kabushiki Kaisha Toshiba, doing business as
Toshiba Corporation and located at 1-1, Shibaura 1-Chome, Minato-Ku, Tokyo
105-8001, Japan. The Respondent is Shan Computers, located at Rua do Loreto
48, 1200-242 Lisbon, Portugal.
2. The Domain Names and Registrar
2.1 The domain name the subject of this Complaint is <toshiba.net>.
2.2 The Registrar of this domain name is Network Solutions, Inc. of
Herndon, Virginia, USA.
3. Procedural History
Issuance of Complaint
3.1 On April 25, 2000, the Complainant by e-mail and by courier submitted
to the World Intellectual Property Organization Arbitration and Mediation
Center ("WIPO Center") a Complaint made pursuant to the Uniform Domain
Name Dispute Resolution Policy implemented by the Internet Corporation
for Assigned Names and Numbers (ICANN) on October 24, 1999 ("Uniform Policy"),
and under the Rules for Uniform Domain Name Dispute Resolution Policy implemented
by ICANN on the same date ("Uniform Rules"). An Acknowledgment of Receipt
was sent by the WIPO Center to the Complainant, by e-mail dated April 27,
2000.
Confirmation of Registration Details
3.2 A Request for Registrar Verification was dispatched by the WIPO
Center to the Registrar by e-mail on April 27, 2000. By e-mail to the WIPO
Center on April 30, 2000, the Registrar confirmed that it had received
a copy of the Complaint from the Complainant; confirmed that it was the
Registrar of the domain name the subject of the Complaint; confirmed that
the current registrant of the domain name is the Respondent; informed that
the administrative, technical, zone and billing Contact for the domain
name is Rui Shantilal, and provided postal and e-mail contact details for
the Respondent; and informed that the status of the domain name in issue
is "active". The Registrar also confirmed that its 5.0 Service Agreement
is in effect. Amongst other things, that agreement provides that the Respondent
as registrant of the domain names agrees to be bound by the domain name
dispute policy incorporated therein. The policy incorporated into the agreement
is the Uniform Policy.
3.3 This Administrative Panel concurs with the assessment by the WIPO
Center that the Complaint complies with the formal requirements of the
Uniform Policy and Uniform Rules.
Notification to Respondent
3.4 Having verified that the Complaint satisfied the formal requirements
of the Uniform Policy and the Uniform Rules, and that payment of the filing
fee had been properly made, the WIPO Center issued to the Respondent on
May 9, 2000, a Notification of Complaint and Commencement of Administrative
Proceeding, to the postal and e-mail contact details of the Respondent
as provided by the Registrar. Copies of this Notification of Complaint
were sent to the Complainant, the Registrar and ICANN on the same date.
3.5 This Administrative Panel finds that the WIPO Center has discharged
its responsibility under Paragraph 2(a) of the Uniform Rules "to employ
reasonably available means calculated to achieve actual notice to Respondent".
Filing of Response
3.6 No Response was filed by the Respondent within the time specified
in the Notification of Complaint. As of the date of this decision, no Response
had been filed by the Respondent.
Constitution of Administrative Panel
3.7 Having received no response from the Respondent within the specified
time in the Notification of Complaint, on June 2, 2000, the WIPO Center
issued to both parties a Notification of Respondent Default. In accordance
with the request in the Complaint, the WIPO Center proceeded to appoint
a single Panelist, and invited Dr. Andrew F. Christie to so act. On June
13, 2000, Dr. Christie submitted to the WIPO Center a Statement of Acceptance
and Declaration of Impartiality and Independence. On the same date the
WIPO Center issued to both parties a Notification of Appointment of Administrative
Panel and Projected Decision Date, informing of Dr. Christies appointment
and that absent exceptional circumstances a decision would be provided
by this Administrative Panel by June 27, 2000. The case before this Administrative
Panel was conducted in the English language.
4. Factual Background
4.1 The Complaint asserted, and generally provided evidence in support
of, the following facts. Unless otherwise specified, this Administrative
Panel finds these facts established.
Complainants Activities and Trademarks
4.2 The Complainant has substantially and continuously used the name
and mark TOSHIBA since at least 1952 throughout most of the world. It is
the owner of five subsisting United States Registrations of the mark TOSHIBA,
and four subsisting United States registrations of the mark TOSHIBBA in
stylized form, covering an extremely wide range of goods in classes 1,
7, 9, 10, 11, 12, 16, 21 and 25 (details of these registrations are set
out in the Complaint and true copies of these are contained in Appendix
C of the Complaint). The date of issue of each of these registrations is
prior to the date of registration of the domain name in issue.
Respondents Activities
4.3 The domain name was registered by the Respondent on November 26,
1999. The domain name resolves to a web page located at http://www.toshiba.net,
which contains the statement "the future home of ¼ www.toshiba.net"
(a printout from this web page is contained at Appendix D of the Complaint).
4.4 On January 25, 2000, Rui Shantilal of the Respondent sent an unsolicited
e-mail to Complainant (a copy of which is contained at Appendix E of the
Complaint), which stated as follows:
My company is the owner of the Internet Domain "toshiba.net" and we
would like to know if Toshiba is interested in buying this domain. Thanks
and Regards for your attention. Yours Sincerely Eng. Rui SHANTILAL.
5. Parties Contentions
The Complaint
5.1 The Complainant contends that each of the three elements specified
in paragraph 4(a) of the Uniform Policy are applicable to the domain name
the subject of this dispute.
5.2 In relation to element (i) of paragraph 4(a) of the Uniform Policy,
the Complainant contends that the domain name <toshiba.net> is identical
and confusingly similar to the Complainants registered trademark TOSHIBA.
5.3 In relation to element (ii) of paragraph 4(a) of the Uniform Policy,
the Complaint contends that the Respondent has never actually used the
name or mark TOSHIBA in connection with the bona fide offering of any goods
or services from the time the domain name was registered until the date
of this Complaint. Further, the Complainant contends that the Respondent
is not commonly known by the domain name and is not making a noncommercial
or fair use of the domain name. Accordingly, the Complainant contends that
the Respondent has no rights or legitimate interests in respect of the
domain name in issue.
5.4 In relation to element (iii) of paragraph 4(a) of the Uniform Policy,
the Complainant contends that evidence of bad faith registration and use
is established by the following circumstances. By virtue of the Complainants
substantial and continuous use worldwide of the TOSHIBA mark, the Respondent
had knowledge of the Complainants rights in the mark. In addition, by
using the domain name to resolve to a web page at http://www.toshiba.net,
the Respondent has sought to divert internet traffic intended for the Complainant.
In do doing, the Respondent has caused confusion in the public, has unduly
interfered with and disrupted the Complainants ability to promote its
own products and services, and has prevented the Complainant from promoting
its products and services by using a domain name identical to its famous
and well-known trademark and service mark. Further, by way of the January
25, 2000, e-mail from Rui Shantilal, the Respondent offered to sell the
domain name to the Complainant.
The Response
5.5 The Respondent did not file a Response to the Complaint.
6. Discussion and Findings
Identical or Confusingly Similar Domain Name
6.1 In relation to the domain name <toshiba.net>, the relevant part
of this domain name is <toshiba>. This Administrative Panel finds that
this part of the domain name is identical to the Complainants registered
trademark TOSHIBA.
Respondents Rights or Legitimate Interests in the Domain Name
6.2 The Respondent has not provided evidence of circumstances of the
type specified in paragraph 4(c) of the Uniform Policy, or of any other
circumstances, giving rise to a right to or legitimate interest in the
domain name. In light of this fact and the facts that (i) the Complainant
has not licensed or otherwise permitted the Respondent to use any of its
trademarks or to apply for or use any domain name incorporating any of
those marks, and (ii) the mark TOSHIBA is not one that the Respondent would
legitimately choose in the context of provision of goods or services via
a web site unless seeking to create an impression of an association with
the Complainant, this Administrative Panel finds that the Respondent has
no rights or legitimate interests in the domain name.
Domain Name Registered and Used in Bad Faith
6.3 The fact that the Respondent has chosen not to submit a Response
is particularly relevant to the issue of whether the Respondent has registered
and is using the domain name in bad faith. Rule 14(b) of the Uniform Rules
provides that, in the absence of exceptional circumstances, a Panel shall
draw such inferences as it considers appropriate from the failure of a
party to comply with a provision or requirement of the Uniform Rules. This
Administrative Panel finds there is no exceptional circumstances for the
failure of the Respondent to submit a Response. This Administrative Panel
draws from this failure the following two inferences: (i) the Respondent
does not deny the facts which the Complainant asserts, and (ii) the Respondent
does not deny the conclusions which the Complainant asserts can be drawn
from these facts.
6.4 The Complainant provided evidence of facts, as detailed in paragraph
5.4 above, which are clearly relevant to the issue of whether the Respondent
registered and is using the domain name in bad faith. However, none of
these individual circumstances fall precisely within any of the four circumstances
specified in paragraph 4(b) of the Uniform Policy as being determinative
of bad faith registration and use. The offer to sell the domain name did
not mention a price, so it is not incontrovertible that the consideration
at which the Respondent was willing to sell was for an amount in excess
of its out-of-pocket costs directly related to the domain name, as specified
in paragraph 4(b)(i). The domain name registration prevents the Complainant
from reflecting its trademark in a corresponding domain name, but there
is no evidence that the Respondent has engaged in a pattern of such conduct,
as specified in paragraph 4(b)(ii). The registration of the domain name
disrupts the business of the Complainant, but there is no evidence that
the Respondent is a business competitor of the Complainant, as specified
in paragraph 4(b)(iii). The use of the domain name to resolve to a web
site at which the distinguishing feature is the presence of the Complainants
trademark creates a likelihood of confusion that the site is affiliated
with or endorsed by the Complainant, but there is no evidence that this
use was for commercial gain, as required by paragraph 4(b)(iv).
6.5 Nevertheless, this Administrative Panel considers that the circumstances
proved by the Complainant do establish that the domain name was registered
and is being used by the Respondent in bad faith. The Complainants registered
trademark is long-established and widely known and so, in the absence of
evidence or even an assertion by the Respondent to the contrary, knowledge
of the Complainants rights in the trademark can be imputed to the Respondent
at the time of its registration of the domain name. When this imputed knowledge
is combined with the fact that the Respondent has no right or legitimate
interest in the domain name, there is ground on which this Administrative
Panel can conclude that the domain name was registered by the Respondent
in bad faith. The Respondent has established a web site to which the domain
name resolves. There is, however, no bona fide offering of goods or services
by the Respondent at this site. Further, the only distinguishing feature
of this site is use of the Complainants trade mark in the statement "the
future of home of ¼ www.toshiba.net". Accordingly, there is nothing
to disabuse a visitor from the assumption that the site is associated with
the commercial activities of the Complainant. Finally, although the unsolicited
offer by the Respondent to sell the domain name to the Complainant did
not specify a price, the fact that no price was mentioned suggests that
the price at which it would be sold would be greater that the Respondents
out-of-pocket expenses. If it were otherwise, why wouldnt the Respondent
simply state that the sale price was only its out-of-pocket expenses? The
accumulation of these facts, together with the absence of evidence or even
an assertion by the Respondent of a good faith use which it could make
of the domain name, is sufficient to persuade this Administrative Panel
that the domain name was registered and is being used by the Respondent
in bad faith.
7. Decision
7.1 This Administrative Panel decides that the Complainant has proven
each of the three elements in paragraph 4(a) of the Uniform Policy in relation
to the domain name the subject of the Complaint.
7.2 Pursuant to paragraph 4(i) of the Uniform Policy and paragraph
15 of the Uniform Rules, this Administrative Panel requires that the Registrar,
Network Solutions, Inc, transfer the domain name <toshiba.net> to the
Complainant, Kabushiki Kaisha Toshiba.
Andrew F. Christie
Sole Panelist
Dated: June 27, 2000