WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Jia Qiong aka Qiong Jia
Case No. D2014-0663
1. The Parties
The Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation of Tokyo, Japan, represented by Sanderson & Co., United Kingdom of Great Britain and Northern Ireland.
The Respondent is Jia Qiong aka Qiong Jia of Ningxia Hui Autonomous Region, China, and of Suqian, Jiangsu Province, China.
2. The Domain Names and Registrar
The disputed domain names <computertoshiba.com> and <toshibapasokonn.com> are registered with Shanghai Meicheng Technology Information Development Co., Ltd. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 22, 2014. On April 22, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 30, 2014, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On April 30, 2014, the Center sent an email communication to the parties in both Chinese and English regarding language of the proceeding. On May 3, 2014, the Complainant requested that English be the language of the proceeding. The Respondent did not comment on language of the proceeding by the specified due date.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 in both Chinese and English, and the proceeding commenced on May 6, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was May 26, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 27, 2014.
The Center appointed Douglas Clark as the sole panelist in this matter on June 3, 2014. 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 a multinational consumer electronics manufacturer. The Complainant is the registered proprietor of the trademark TOSHIBA for consumer electronics products around the world, including in China and Japan.
The disputed domain names were registered on November 29, 2013.
The disputed domain names are being used to sell Toshiba branded products which may not have originated from Toshiba. The products are advertised on the websites under the disputed domain names in Japanese and English.
On each of the pages to which the disputed domain names resolve to, the trademark TOSHIBA appears in large letters on the top left hand side of the webpage. There is a copyright notice at the bottom of the page:
“Copyright © 1995-2013 TOSHIBA CORPORATION, All Rights Reserved.”
5. Parties’ Contentions
The Complainant’s contentions are set out below.
The Complainant submits that the disputed domain names <computertoshiba.com> and <toshibapasokonn.com> consist of the trademark TOSHIBA and the descriptive and generic words “computer” and “pasokonn”. “Pasokon” is the Japanese word for personal computer. The word “pasokonn” in the disputed domain name <toshibapasokonn.com> is a misspelling of “pasokon”.
The disputed domain names are, therefore, made up of a generic or descriptive word and the Complainant’s trademark and are thereby confusingly similar to the Complainant’s trademark.
The Complainant further submits that the Respondent has no rights or legitimate interests in the disputed domain names. It is not normally known by the name Toshiba. It has received no consent or license from the Complainant to use the Complainant’s trademark in the disputed domain names.
The Complainant submits that the disputed domain names were registered and used in bad faith with the intention of attracting Internet users to the websites.
Further, the Complainant alleges the Respondent has engaged in a pattern of registration of domain names including other well known marks, including: <dayisonnjp.com>, <dayisonnshop.com>, <discount-nikon.com>, <dyson-clean.com>, <dysonshopjp.com>, <dysonvacuumcleanerjp.com>, <monsterbeatsaleshop.com>, <nikon-buy.com>, <nikon-cheap.com>, <nikoncojp .com>, <nikongekiyasu.com>, <nikonimagejp.com>, <nikonntuuhann.com>, <nikonsaleshop.com>, <nikonshopjp.com>, <nikonslrjp.com>, <onlinenikon.com>, <roombajapan.com>, <roomba-live.com>, <roombasale.com>, <tfalcooker.com>, < tfalshop.com> and <thenorthfacestore-jp.com>.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
6.1. Language of the Proceeding
The language of the Registration Agreements is in Chinese. Paragraph 11(a) of the Rules provides that:
“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.”
The Complainant requested the language of the proceeding to be English on the grounds that the Complainant was conversant in English. English was the mother tongue of its representative and, the costs of translation would be excessive given the nature of the proceeding. The Complainant also suggested that the Respondent may be a nominee for someone who is likely not Chinese. The Respondent did not respond to this request.
The Center made a preliminary determination to:
1) accept the Complaint as filed in English;
2) accept a Response in either English or Chinese;
3) appoint a Panel familiar with both languages mentioned above, if available.
The final determination of the language of the proceeding lies with this Panel. As a first point, this Panel does not consider the Complainant’s submission that it is conversant in English to be particularly strong. The Complainant operates in China. In the Panel’s view, it must have numerous management staff conversant in Chinese.
Nevertheless, this Panel decided in Zappos.com, Inc. v. Zufu aka Huahaotrade, WIPO Case No. D2008-1191, that a respondent's failure to respond to a preliminary determination by the Center as to the language of the proceeding “should, in general, be a strong factor to allow the Panel to decide to proceed in favour of the language of the Complaint.”
Further, as set out below, the Panel considers the merits of the case to be strongly in favour of the Complainant. Translating the Complaint would cause unnecessary delays in this matter. The Panel also notes that the websites under the disputed domain names are in Japanese and English. Further, the Respondent claims on the websites under the disputed domain names to be the Complainant by use of the Complainant’s trademark and copyright notices.
All of the factors lead the Panel to determine to follow the Center’s preliminary determination. As the only pleading before the Panel is in English, the Panel will render its decision in English.
6.2. Substantive Decision
The Panel finds that this is a clear case of cybersquatting that the UDRP was designed to stop. The Panel agrees fully with the Complainant’s arguments and accordingly does not consider it necessary to write a long decision.
A. Identical or Confusingly Similar
The disputed domain name <computertoshiba.com> is made up of the Complainant’s registered trademark TOSHIBA and the generic and descriptive word “computer”. The disputed domain name <toshibapasokonn.com> is made up of the Complainant’s registered trademark TOSHIBA and a misspelling of the generic and descriptive Japanese word “pasokonn”. Both are confusingly similar to the Complainant’s registered trademark.
Paragraph 1.2 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (the “WIPO Overview 2.0”), sets out the test for determining confusing similarity. Paragraph 1.2 provides (in part):
“The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms […] typically being regarded as insufficient to prevent threshold Internet user confusion […]”.
The first element of the Policy is made out.
B. Rights or Legitimate Interests
The Complainant has made a prima facie case that the Respondent lacks rights or legitimate interests in the dispute domain names. The Respondent has not responded to the Complaint to assert any rights or legitimate interests in the disputed domain names. Clearly, none of the circumstances in paragraph 4(c) of the Policy, which sets out how a respondent can prove its rights or legitimate interests, are present in this case.
The Panel finds that the second element of the Policy is made out.
C. Registered and Used in Bad Faith
For the same reasons as those above, the Panel has no hesitation in finding that the disputed domain names were registered in bad faith and is being used in bad faith.
This case falls within paragraph 4(b)(iv) of the Policy which provides that a registrant has registered and is using a domain name in bad faith where:
“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”
As previously noted, the Respondent claims on the websites under the disputed domain names to be the Complainant by use of the Complainant’s trademark and copyright notices.
Moreover, the sale of possibly counterfeit Toshiba products on the websites clearly falls under this sub-paragraph.
The Respondent also appears to have been engaged in a pattern of abusive registrations.
The Panel finds that the third element of the Policy is made out.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain names <computertoshiba.com> and <toshibapasokonn.com> be transferred to the Complainant.
Date: June 11, 2014