DECISION

Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation v. Pro Life Domains

Claim Number:  FA0401000223039

PARTIES

Complainant is Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation (“Complainant”), represented by David Kelly, of Finnegan Henderson Farabow Garrett & Dunner L.L.P., 1300 I Street NW, Washington, DC 20005.  Respondent is Pro Life Domains (“Respondent”), 5444 Arlington Avenue #g14, Bronx, New York  10471.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <wwwtoshiba.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com (hereinafter “Directnic.com”).

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Honorable Paul A. Dorf (Ret.) as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on January 5, 2004; the Forum received a hard copy of the Complaint on January 6, 2004.

On January 7, 2004, Directnic.com confirmed by e-mail to the Forum that the domain name <wwwtoshiba.com> is registered with Directnic.com and that Respondent is the current registrant of the name. Directnic.com has verified that Respondent is bound by the Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

On January 13, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of February 2, 2004 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@wwwtoshiba.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On February 10, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

1. Respondent’s <wwwtoshiba.com> domain name is confusingly similar to Complainant’s TOSHIBA mark.

2. Respondent does not have any rights or legitimate interests in the <wwwtoshiba.com> domain name.

3. Respondent registered and used the <wwwtoshiba.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Kabushiki Kaisha Toshiba d/b/a Toshiba Corporation, designs, manufactures, markets and sells products such as consumer electronics, telecommunications equipment, medical electronics equipment and domestic appliances under the TOSHIBA mark, which it has used in commerce for more than 60 years. Complainant spends millions of dollars annually advertising and promoting its TOSHIBA mark worldwide, and has more than $40 billion in annual sales under the mark. Complainant has registered the TOSHIBA mark in over 150 countries worldwide, including the United States (e.g. U.S. Reg. No. 666,556, registered on December 5, 1957), and operates a website, through its subsidiary, Toshiba America, Inc., at the <toshiba.com> domain name.

Respondent, Pro Life Domains, registered the <wwwtoshiba.com> domain name on May 5, 2002, without license or authorization to use Complainant’s TOSHIBA mark for any purpose. Respondent uses the disputed domain name to redirect Internet users to the <abortionismurder.org> domain name, which hosts an ant-abortion website featuring graphic pictures and information promoting an anti-abortion platform. An additional “pop-up” browser window is also opened, for the <abortionismurder.org/notconvincedsmall.shtml> webpage.

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a Response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Identical and/or Confusingly Similar

Complainant has established rights in the TOSHIBA mark through registration of the mark worldwide, as well as through widespread use of the mark in commerce for more than 60 years.

Respondent’s <wwwtoshiba.com> domain name is confusingly similar to Complainant’s TOSHIBA mark. Respondent’s addition of the “www” prefix to Complainant’s TOSHIBA mark does not disguise the fact that the dominant feature of the domain name is the TOSHIBA mark. See Dana Corp. v. $$$ This Domain Name Is For Sale $$$, FA 117328 (Nat. Arb. Forum Nov. 19, 2002) (finding Respondent's <wwwdana.com> domain name confusingly similar to Complainant's registered DANA mark because Complainant's mark remains the dominant feature); see also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb. Forum Dec. 6, 2002) (holding confusing similarity has been established because the prefix "www" does not sufficiently differentiate the <wwwneimanmarcus.com> domain name from Complainant's NEIMAN-MARCUS mark).

Accordingly, the Panel finds that the <wwwtoshiba.com> domain name is confusingly similar to Complainant’s TOSHIBA mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

Respondent registered the disputed domain name with the sole intention of capitalizing on the goodwill Complainant has accrued in the TOSHIBA mark to promote the anti-abortion platform. Internet users who mistype Complainant’s <toshiba.com> domain name will be subjected to politically charged content that is not endorsed or supported by Complainant. Respondent’s use of a typosquatted domain name for this purpose is prima facie evidence that Respondent lacks rights or legitimate interests in the disputed domain name. See Diners Club Int’l Ltd. v. Domain Admin******It's all in the name******, FA 156839 (Nat. Arb. Forum June 23, 2003) (holding that Respondent’s <wwwdinersclub.com> domain name, a typosquatted version of Complainant’s DINERS CLUB mark, was evidence in and of itself that Respondent lacks rights or legitimate interests in the disputed domain name vis á vis Complainant); see also Bay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the "use of complainant’s entire mark in infringing domain names makes it difficult to infer a legitimate use"); see also Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding that use of Complainant’s mark “as a portal to suck surfers into a site sponsored by Respondent hardly seems legitimate”).

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the <wwwtoshiba.com> domain name under Policy ¶ 4(a)(ii).

Registration and Use in Bad Faith

By simply adding the “www” prefix to Complainant’s TOSHIBA mark, Respondent is attempting to ensnare Internet users seeking Complainant’s <toshiba.com> domain name. Those Internet users who, through inadvertence, end up at the <abortionismurder.org> domain name will be subjected to graphic images and anti-abortion information that is in no way sanctioned by Complainant. Both Respondent’s registration and use of a typosquatted domain name name and its use of that domain name to create the impression that Complainant supports Respondent’s anti-abortion platform are evidence of Respondent’s bad faith. See Canadian Tire Corp., Ltd. v. domain adm’r no.valid.email@worldnic.net 1111111111, D2003-0232 (WIPO May 22, 2003) (holding that the absence of a dot between the “www”and “canadiantire.com” in the <wwwcanadiantire.com> domain name was likely to confuse Internet users and evidences bad faith registration and use of the domain name); see also See McClatchy Management Servs. Inc. v. Please DON'T Kill Your Baby, FA 153541 (Nat. Arb. Forum May 28, 2003) (“By intentionally taking advantage of the goodwill surrounding Complainant’s mark to further its own political agenda, Respondent registered the disputed domain names in bad faith.”).

The Panel thus finds that Respondent registered and used the <wwwtoshiba.com> domain name in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

Accordingly, it is Ordered that the <wwwtoshiba.com> domain name be TRANSFERRED from Respondent to Complainant.

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  February 24, 2004

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