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Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong

WIPO Case No. D2003-0408

Outcome
Transfer
Domain names
dongzhi.net
Complainant
Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (Tokyo)
Respondent
Liu Xindong
Panelist
Susanna H.S. Leong
Decided
11 Jul 2003
Response
The respondent did not reply
Language
English

Source: WIPO Arbitration and Mediation Center. Official copy: https://www.wipo.int/amc/en/domains/decisions/html/2003/d2003-0408.html

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Liu Xindong

Case No. D2003-0408

See Also PDF File: D2003-0408

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 Liu Xindong, Shandong, China.

2. The Domain Name and Registrar

The disputed Domain Name <dongzhi.net> is registered with BulkRegister.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the

“Center�) on May 28, 2003. On the same day, the Center transmitted by email

to BulkRegister.com a request for registrar verification in connection with

the omain Name at issue. On May 29, 2003, BulkRegister.com 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�). Payment in the required amount

to the Center has been made by the Complainant.

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

June 5, 2003. In accordance with the Rules, paragraph 5(a), the due date for

Response was June 25, 2003. The Respondent did not submit any response.Â

Accordingly, the Center notified the Respondent's default on June 26, 2003.

The Center appointed Susanna H.S. Leong as the sole panelist in this matter

on July 2, 2003. The Panel finds that it was properly constituted.Â

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.

This dispute is properly within the scope of the UDRP as the registration

agreement for the Domain Name incorporates the UDRP.

The language of this proceeding is English as the BulkRegister.com registration

agreement is in English.

4. Factual Background

The Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation, a

multinational company in the field of electronic, electrical and telecommunications

products. The Complainant designs, manufactures, distributes and sells a wide

variety of products under the trademark and trade name TOSHIBA. It has used

its TOSHIBA trademark and trade name for more than 60 years and it has invested

substantial financial resources over the years to advertise and promote the

company and its TOSHIBA-branded products and services in countries all over

the world.

The Complainant has long maintained a significant presence in China. The

name and mark TOSHIBA in Chinese is 东�. The phonetic spelling of 东� in Chinese

using Latin characters is “dongzhi.� The Complainant has sold its TOSHIBA-branded

and 东�-branded products in China for decades. Its Chinese website showcasing

its products and services, including telephones, is located at the Domain

Name TOSHIBA.COM.CN. The Complainant has operated its Chinese website for

many years and its 东� mark is displayed on its Chinese website in the upper

left hand corner as “TOSHIBA 东��.

The Complainant has registered its TOSHIBA mark and/or variations of that

mark in more than 150 countries around the world and in China, it has registered

its marks TOSHIBA, TOSHIBA and Design, and 东�. The Complainant's registration

for its 东� mark in China covers electronic goods in International Class 9,

paper goods in International Class 16 and house wares in International Class

21. Its trademarks TOSHIBA and 东�have been widely promoted to the general

consuming public in China and the rest of the world for many years and therefore,

the TOSHIBA and 东�marks are widely known and recognized in China and beyond.

The Respondent has registered the Domain Name <dongzhi.net> on February 15, 2001.The

Domain Name <dongzhi.net> is the Chinese phonetic equivalent of the

Complainant's 东� mark because “东�� is pronounced “dongzhi� and the phonetic

spelling, or Latin transliteration, of 东� in China is “dongzhi�. Besides using

the transliteration of the Complainant's东� mark in the Domain Name, the Respondent

also displays the 东� mark on his website in a trade name that translates into

English as “Toshiba Network Online�.

The

Respondent's “www.dongzhi.net� website promotes and/or offers

products and services that are directly competitive or closely related to those

offered by the Complainant. In addition

to advertising the Respondent's software development, website development, and

advertising services, the Respondent also sells directly competing

telecommunications goods (i.e. telephones) on the “www.dongzhi.net� website and

promotes a future website regarding the Respondent's telephone models and

pricing. The Respondent's

“www.dongzhi.net� website also advertises the Respondent's installation

services for ADSL, a type of broadband Internet connection that could be used

with the Complainant's computers. The Respondent's “www.dongzhi.net� website

allows Internet users to post questions or comments and at least three Internet

users have posted questions regarding the Complainant's products on the

“www.dongzhi.net� website.

5. Parties' Contentions

A.

Complainant

The Complainant contends that the Domain Name <dongzhi.net> is confusingly

similar to the Complainant's 东� mark because it is the phonetic equivalent

of the Complainant's 东� mark in China and the transliteration of 东� mark into

Latin script.

It is the Complainant's contention that the Respondent is not and has not

been commonly known by the Domain Name. The Respondent's use of a trade name

that includes 东�, which directly copies the Complainant's famous 东� mark,

in no way demonstrates any legitimate interest of the Respondent in the Domain

Name. The Respondent cannot justify its misappropriation of the Complainant's

famous 东� trademark in a Domain Name simply by also using the Domain Name

as part of a trade name or business name. If that were the case, cybersquatters

could freely pirate the trademarks of others as domain names simply by also

using the disputed domain name as their trade name. The Respondent is not

making legitimate noncommercial or fair use of the Domain Name, without intending

to mislead and divert consumers or to tarnish the Complainant's 东� mark for

commercial gain. Because the Respondent registered and uses the Domain Name

to infringe the Complainant's rights in its 东� mark, to trade off of the Complainant's

goodwill, and to usurp Internet traffic rightly intended for the Complainant,

the Respondent's registration and use of the Domain Name do not and cannot

constitute a bona fide offering of goods or services pursuant to Section

4(c)(i) of the UDRP.

The Complainant further contends that the Respondent's registration and use

of the Domain Name meet the bad faith element set forth in Section 4(b)(iv)

of the UDRP. Specifically, the Respondent uses the Domain Name to intentionally

attract, for commercial gain, Internet users to his website by creating a

likelihood of confusion with the Complainant's 东� mark as to the source, sponsorship,

affiliation, and/or endorsement of the Respondent's website and the products

advertised, promoted, and/or sold on Respondent's website. The Respondent's

registration and use of the Domain Name also meets the bad faith element set

forth in Section 4(b)(iii) of the UDRP. The Respondent registered and uses

the Domain Name to sell directly competing products, which disrupts the Complainant's

business in bad faith. Finally, the Respondent acted in bad faith because

he was on notice of the Complainant's rights in its 东� mark when he registered

the Domain Name and used the Domain Name to trade on the Complainant's goodwill.Â

This is because the Respondent knew of the Complainant's 东� mark, his unauthorized

use of the Domain Name for commercial gain suggests opportunistic bad faith

given the widespread use and fame of the Complainant's 东èŠ� mark and name.Â

B. Respondent

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

6. Discussion and Findings

General

According to paragraph 4(a) of the Policy, the Complainant must prove that:

(i)Â The Domain Name is identical or confusingly similar to a trade mark or

service mark in which the Complainant has rights; and

(ii)Â The Respondent has no rights or legitimate interest in respect of the

Domain Name; and

(iii)Â The Domain Name has been registered in bad faith and is being used

in bad faith.

Identical or confusingly similar

The Complainant is the registered owner of its TOSHIBA mark and/or variations

of that mark in more than 150 countries around the world. The Complainant

is also the registered owner of its marks TOSHIBA, TOSHIBA and Design and

东� in China. On the evidence adduced before this administrative proceeding,

the Panel finds that the Chinese phonetic equivalent of the Complainant's

东� mark is “dongzhi� as this is the how the two Chinese characters “东�� are

pronounced in the Chinese language. Furthermore, the Panel also finds that

the Latin script transliteration of “东�� in China is “dongzhi�, according

to the Han Yu Pin Yin (“汉语拼音�) way of transcribing Chinese characters into

the Latin script. Since the Complainant is the registered owner of the mark

“东�� in China and this mark is widely known by the general consuming public

in the Chinese market for many years, the Panel thus finds that the Complainant

also has rights to the transliteration of the mark “东�� – “dongzhi� in China.

Accordingly, the Panel finds that the Domain Name <dongzhi.net> is confusingly

similar to the Complainant's 东� mark. This is because (1) the Domain Name

in dispute is identical to the transliteration of the mark 东�, (2) the Domain

Name in dispute and the mark 东� is phonetically similar in the Chinese language

and (3) the Complainant has adduced evidence before this Administrative Proceedings

to show that the Complainant's mark TOSHIBA is widely recognized as “东�� by

the public and Internet users in China. See Bunkasha Publishing

Co. Ltd. v. Xman Productions (WIPO

Case No. D2002-0781).

Respondent's

Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out a non-exhaustive list of circumstances,

any one of which if found by the Panel to have been proved shall demonstrate

the Respondent's rights or legitimate interests in respect of the domain names.

However, the need for the Respondent to demonstrate anything only arises

once the Complainant has shown a prima facie case, the burden of proof under

paragraph 4(a) being on the Complainant.

The essence of the Complainant's case is that the wide spread fame of its

TOSHIBA and 东� marks in China at the date of registration of the Domain Name

was such that the Respondent must have been aware of it. Given this fact,

the act of the Respondent registering and using the Domain Name <dongzhi.net>

constitutes an infringement of the Complainant's rights in its 东� trade mark

and cannot constitute a bona fide offering of goods or services pursuant to

Section 4(c)(i) of the UDRP. Accordingly, the Respondent had the Complainant

in mind at all material times and has done what he has done with a view to

trading on the back of the Complainant's goodwill, leading consumers to believe

that the website to which the Domain Name is connected is associated with

the Complainant in some way. Furthermore, the Respondent is not and has not

been commonly known by the Domain Name. The Respondent did not adduce evidence

to show or explain his choice in the Domain Name.

The Panel finds the Complainant's case persuasive. The Respondent has a case

to answer.

However, 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.Â

In accordance to the Rules for Uniform Domain Name Dispute Resolution Policy,

paragraph 14, the Panel thus draws such inferences as she considers appropriate,

which are that the Respondent is unable to adduce evidence to show cause that

he has rights or legitimate interests to the said Domain Name.

Accordingly, the Panel finds that no evidence has been adduced to demonstrate

that the Respondent has rights or legitimate interests to the Domain Name

in dispute, particularly in relation to:

(i)Â prior 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 by the Respondent;

(ii)Â the Respondent having been commonly known by the domain name, even if

no trademark or service rights have been acquired;

(iii)Â the Respondent is 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 thus concludes that the Respondent does not have any rights or

legitimate interests in the Domain Name in question.Â

Registered and Used in Bad Faith

For the same reasons the Panel finds that the overwhelming probability is

that the Respondent selected the Domain Name because of its widespread fame

in the field of electronic, electrical and telecommunications products in

China and specifically to use the Domain Name to attract, for commercial gain,

Internet users to his website by creating a likelihood of confusion with the

Complainant's 东� mark as to the source, sponsorship, affiliation and or endorsement

of the Respondent's website and the products advertised, promoted and or sold

on the website. This is substantiated by the following:

(i) The

Respondent has notice of the Complainant's rights in its 东� mark when he registered the Domain Name and

used the Domain Name;

(ii) The Respondent sells products that are similar and are in direct competition

with the Complainant using the Domain Name in question;

(iii) The Respondent has not offered any plausible explanations on his choice

of the Domain Name;

(iv)Â There is evidence, adduced by the Complainant before this Administrative

Proceeding, which shows Internet users have mistakenly believed that the Respondent's

site is affiliated or connected to the Complainant as they have posted questions

regarding the Complainant's products on the Respondent's “www.dongzhi.net�

website.

Accordingly, the

Panel finds that the Respondent registered the Domain Name in bad faith and is

using it in bad faith within the meaning of paragraphs 4(b)(iii) and 4(b)(iv)

of the Policy.

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 Name

<dongzhi.net> be transferred to the Complainant.

Susanna H.S. Leong

Sole Panelist

Dated: July 11, 2003

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