WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. ICN-Toshiba
Case No. D2004-0941
1. The Parties
The Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation, Tokyo, Japan, represented by Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, United States of America.
The Respondent is ICN-Toshiba, represented by Harrison Kiarie, Nairobi, Kenya.
2. The Domain Name and Registrar
The disputed domain name <icn-toshiba.com> is registered with DomainPeople.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 9, 2004. On November 10, 2004, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name at issue. On November 12, 2004, DomainPeople 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. The Center verified that 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 November 16, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was December 6, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 7, 2004.
The Center appointed William van Caenegem as the sole panelist in this matter on December 14, 2004. 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 trademark TOSHIBA is registered, among other places, in:
• Kenya, since 24 June 1985 – International Class 11;
• Kenya, since 22 November 1985 – International Class 9;
• USA, since 1957, 1971, 1976, 1988 – Word marks in Various stylized form, in International Classes 7, 9, 10, 11, 16 and 21.
The domain name <icn-toshiba.com> was registered by the Respondent on July 5, 2000.
5. Parties’ Contentions
The Complainant makes the following factual contentions:
The Complainant is a large multinational corporation active in the field of electronics and electrical products, with annual sales of more than US$40 billion. It has used its trademark TOSHIBA as a brand in relation to its products, and in advertising and promotion, for more than 60 years in multiple jurisdictions. It has registered and owns the trademark TOSHIBA in a number of jurisdictions.
• The Complainant operates its own websites to promote its products and provide information and distribution channels for its business. It has regional and country websites (eg “www.toshiba-europe.com”). The Complainant’s TOSHIBA trademark is well known and exclusively associated with the Complainant around the world. The Complainant has operated through authorized dealers in Kenya, the country where the Respondent is located, and sold products there many years prior to the registration of the contested domain name by the Respondent. The Complainant owns the TOSHIBA registered trademark in a number of classes in Kenya.
• The domain name <icn-toshiba.com> resolves to a website offering for sale electronic office equipment. Toshiba branded equipment is offered for sale, as well as equipment from other manufacturers, with different brand names, inter alia Olympia and Lameril. The appearance of the website resembles the appearance of authorised Toshiba websites, with representation of the trademark in the typical Toshiba font, use of the color red, and a similar layout.
As to the application of the UDRP, the Complainant makes the following contentions:
• The domain name is confusingly similar to its registered trademark TOSHIBA, since the addition of the prefix ‘icn-‘ does not distinguish it sufficiently from the registered mark. The Complainant cites a number of UDRP decisions in support of this contention.
• As to the legitimate rights or interests of the Respondent in the domain name, there is no bona fide offering of goods or services pursuant to Paragraph 4(c)(i) of the Policy since the Respondent offers for sale competing products from its website. The Respondent is also not commonly known by the domain name from a time prior to registration. The Respondent’s adoption of the mark in its trade or business name (‘ICN-Toshiba’) does not entitle it to claim a legitimate interest in the domain name since to decide otherwise would be to permit an illegitimate appropriation of the mark. This would render it simple to subvert the trademark interests protected under the UDRP. Further, the prior established fame attaching to the mark renders adoption of the TOSHIBA mark in the domain name illegitimate.
• Even if the Respondent offered only Toshiba-branded products for sale, the Respondent still would not have a legitimate interest. The Complainant refers to UDRP decisions holding that there is a crucial distinction to be made between the use of a mark in advertising stating that one sells the marked product, and the incorporation of that mark in a domain name which resolves to a site selling such products. No fair use doctrine thus applies to the use being made of Complainant’s mark by the Respondent.
• The registration and use of the domain name are in bad faith (see Paragraph 4(b)(iv) of the Policy) as they create a likelihood of confusion as to source, sponsorship, affiliation and endorsement of the commercial website of the Respondent. Further the inclusion of the Complainant’s trademark in the Respondent’s website is likely to mislead a consumer into believing there is a connection between the Complainant and the unrelated products offered for sale on the website. Further, the Respondent competes unfairly by offering competing products for sale via a website incorporating the Complainant’s mark in its domain name (see Paragraph 4(b)(iii) of the Policy). The Respondent would have unquestionably known the Complainant’s mark because of its fame, so therefore the registration of the domain name was in bad faith (as decided in a number of UDRP cases cited by the Complainant).
As a result, the Complainant requests transfer of the domain name.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
The disputed domain name is not identical to the Complainant’s registered trademark. However, the domain name is confusingly similar, as it fully incorporates the registered mark, and the addition of the prefix ‘icn’ does not sufficiently distinguish it from the registered mark TOSHIBA. The prefix is separated from the mark by a ‘-‘, further drawing attention to the mark itself as the most prominent part of the disputed domain name.
B. Rights or Legitimate Interests
The disputed domain name resolves to a website offering TOSHIBA goods for sale. The goods offered are of the same kind as those offered by the Complainant, ie electronic office equipment. However, offering for sale legitimate goods with the TOSHIBA mark of the Complainant, does not give the Respondent a right in a registered domain name incorporating that mark. There is a crucial distinction between a business using an unconnected common law or registered mark to refer to or identify the origin of goods it advertises for sale, and incorporating or using that unconnected trademark in a domain name. The former use identifies and indicates the origin of the goods offered for sale, and would normally be legitimate. The latter would be legitimate if there is an affiliation, sponsorship or other legal connection between the website owner and the trademark owner. The fact that the Respondent’s website, or its business in general, offers the Complainant’s branded goods for sale does not in itself give it a right or legitimate interest in the domain name incorporating the Complainant’s mark.
The relevant WHOIS database entries, for what they are worth, indicate that the Respondent has adopted the business or trade name ‘ICN-Toshiba’. The Complainant asserts that the Respondent was not known by the disputed domain name prior to its registration of that name. No further evidence is offered in support of this contention, but the UDRP Rules, by virtue of Paragraph 14(b) allow the Panel to draw such inferences as it considers appropriate from the fact the Respondent has defaulted. Since the assertion has not been contested, the Panel accepts it. There is no evidence to indicate that the Respondent’s use of the business name is based on any exclusive right: see Yahoo! Inc. v. Yahoo Computer Services, WIPO Case No. DPH2001-0001. Furthermore, given the Complainant’s longstanding trademark registrations in Kenya, its network of authorized dealers throughout the world including in Kenya and the notorious fame of its mark, by inference the legitimacy of the Respondent’s adoption of the business name ‘ICN-Toshiba’ must be in doubt. In other words, the fact that the mark Toshiba has been incorporated into the Respondent’s business name does not in the circumstances - given the fame of the mark of which the Respondent is well aware as it sells Toshiba products - constitute a legitimate interest argument.
Furthermore, in fact the website to which the disputed domain name resolves offers other brand goods for sale as well, further undermining any legitimate interest the Respondent could claim to have supporting its ownership of the domain name in question.
C. Registered and Used in Bad Faith
The Respondent’s use of the disputed domain name has all the hallmarks of bad faith. The incorporation of the trademark in the domain name, the use of the mark on the website and the website layout similar to Toshiba’s authorized websites, the use of the business name, are together calculated to create confusion or deception as to the existence of some connection by way of sponsorship, endorsement, sanction or control between the Complainant and the website to which the disputed domain name resolves (see Paragraph 4(b)(iv) of the Policy). The Respondent uses the disputed domain name in a manner that is calculated to deceive consumers, and it can be inferred that the Respondent registered the disputed domain name for this purpose. Nothing on the website to which the disputed domain name resolves dispels the false impression that there is some authorization from the Complainant for the setting up and conduct of the website, or that ‘ICN’ has been authorized to use the Complainant’s mark in the manner that it does.
The use of the disputed domain name by the Respondent also disrupts the business of the Complainant as it attract consumers to its website by the use of the Complainant’s mark, only to offer competing products for sale at that website: see Paragraph 4(b)(iii) of the Policy.
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 name <icn-toshiba.com> be transferred to the Complainant.
William Albert Van Caenegem
Date: December 28, 2004