WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Toshiba v Shan Computers
Case No. D2000-0325
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. Christieís 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.
Complainantís 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.
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 Ö 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. Partiesí Contentions
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 Complainantís 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 Complainantís substantial and continuous use worldwide of the TOSHIBA mark, the Respondent had knowledge of the Complainantís 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 Complainantís 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.
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 Complainantís registered trademark TOSHIBA.
Respondentís 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 Complainantís 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 Complainantís 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 Complainantís 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 Complainantís trade mark in the statement "the future of home of Ö 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 Respondentís out-of-pocket expenses. If it were otherwise, why wouldnít 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.
7.1 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
Dated: June 27, 2000