DECISION

Sony Kabushiki Kaisha a/k/a Sony corporation v. Domain rajadomain@yahoo.com +1.415.0

Claim Number: FA0210000128701

PARTIES

Complainant is Sony Kabushiki Kaisha a/k/a Sony Corporation, Tokyo, JAPAN (“Complainant”) represented by Robert B.G. Horowitz, of Cooper & Dunham LLP.  Respondent is Domain rajadomain@yahoo.com +1.415.0, USA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sonyamerica.com>, registered with OnlineNIC.com.

PANEL

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

John J. Upchurch as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 24, 2002; the Forum received a hard copy of the Complaint on October 28, 2002.

On October 27, 2002, OnlineNIC.com confirmed by e-mail to the Forum that the domain name <sonyamerica.com> is registered with OnlineNIC.com and that Respondent is the current registrant of the name.  OnlineNIC.com has verified that Respondent is bound by the OnlineNIC.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 October 28, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 18, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@sonyamerica.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 December 11, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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

The  <sonyamerica.com> domain name is confusingly similar to Complainant's SONY mark.

Respondent has no rights or legitimate interests in the disputed domain name.

Respondent registered and used the disputed domain name in bad faith.

B. Respondent

Respondent failed to submit a Response.

FINDINGS

Complainant is a world leader in the field of consumer electronic products.  Complainant is also involved in a wide range of other businesses from entertainment to finance and life insurance services.  Complainant conducts all of its business under the SONY trademark.  Complainant has registered the SONY mark in 193 countries including Japan (Reg. No. 500,037) and the United States (Reg. No. 1,258,436).   Complainant spends millions of dollars annually to advertise and promote its SONY mark throughout the world.  Complainant also does business on the Internet at a number of different websites that incorporate the SONY mark, such as <sony.com> and <sonystyle.com>.

Respondent registered the disputed domain name on May 18, 2002.  Respondent is using the disputed domain name <sonyamerica.com> in order to divert Internet users to <skyhit.com>.  The <skyhit.com> website offers search engine services as well as links to adult content websites.  Both the adult content website and the search engine are owned and operated by Respondent.

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 the 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 the 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 that it has rights in the SONY mark through registration with the United States Patent and Trademark Office as well as registration in various countries throughout the world.

Respondent’s <sonyamerica.com> domain name is confusingly similar to Complainant’s famous mark because it incorporates Complainant’s entire mark and merely adds the geographic identifier “America,” and the top-level domain “.com.”  The addition of the geographic term does not give Respondent’s domain name any distinct characteristics capable of overcoming a claim of confusing similarity because it merely associates Complainant’s mark with America.  Complainant sells numerous products in North and South America, therefore Internet users are likely to be confused as to the source of the disputed domain name.  See Net2phone Inc, v. Netcall SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that Respondent’s registration of the domain name <net2phone-europe.com> is confusingly similar to Complainant’s mark…"the combination of a geographic term with the mark does not prevent a domain name from being found confusingly similar"); see also VeriSign, Inc. v. Tandon, D2000-1216 (WIPO Nov. 16, 2000) (finding confusing similarity between Complainant’s VERISIGN mark and the <verisignindia.com> and <verisignindia.net> domain names where Respondent added the word “India” to Complainant’s mark).  Moreover, the addition of the top-level domain “.com” does not create any distinct characteristics because it is a required feature of every domain name.  Therefore, its addition does not overcome a claim of confusing similarity.  See Pomellato S.p.A v. Tonetti, D2000-0493 (WIPO July 7, 2000) (finding <pomellato.com> identical to Complainant’s mark because the generic top-level domain (gTLD) “.com” after the name POMELLATO is not relevant); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1146 (9th Cir. Feb. 11, 2002) (“Internet users searching for a company’s [w]ebsite . . . assume, as a rule of thumb, that the domain name of a particular company will be the company name [or trademark] followed by ‘.com.’”).

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Respondent has failed to come forward with a Response.  Therefore, the Panel is permitted to make reasonable inferences in favor of Complainant and accept Complainant’s allegations as true.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that Complainant’s allegations are true unless clearly contradicted by the evidence); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”). 

Furthermore, based on Respondent’s failure to Respond, it is presumed that Respondent lacks rights and legitimate interests in the disputed domain name.  See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (finding that once Complainant asserts that Respondent has no rights or legitimate interests in respect of the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that Respondent has no rights or legitimate interest in the domain name because Respondent never submitted a Response nor provided the Panel with evidence to suggest otherwise).

Respondent is using the <sonyamerica.com> domain name in order to divert Internet users to <skyhit.com>, a website that offers search engine services and links to adult orientated websites.  Respondent is therefore using Complainant’s mark in order to attract Internet users to its own website.  This type of use is not considered to be in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Big Dog Holdings, Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no legitimate use when Respondent was diverting consumers to its own website by using Complainant’s trademarks); see also Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because Respondent's sole purpose in selecting the domain names was to cause confusion with Complainant's website and marks, it's use of the names was not in connection with the offering of goods or services or any other fair use).

Respondent does not use SONY AMERICA to identify its services at the <skyhit.com> website.  Moreover, there is no evidence on record that Respondent is commonly known as SONY AMERICA or <sonyamerica.com>.  Based on the fame of Complainant’s SONY mark, it would be very difficult for Respondent to establish that it is commonly known by any domain name or moniker that incorporates Complainant’s mark.  Further, Respondent has not come forward with any evidence attempting to establish this fact and the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark); see also Nokia Corp. v. Nokiagirls.com, D2000-0102 (WIPO Apr. 18, 2000) (finding that Respondent has no rights or legitimate interests in the <nokiagirls.com> domain name because there was no element on website that would justify use of the word NOKIA within the domain name).

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent is using the disputed domain name in order to attract Internet users interested in Complainant to its own website at <skyhit.com>.  Respondent is the owner of both <skyhit.com> and the adult websites this website links to.  It can therefore be inferred that Respondent is diverting Internet users to these websites for its own personal gain.  The use of a confusingly similar domain name in order create Internet user confusion for commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).  See Kmart v. Kahn, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy 4(b)(iv)); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where Respondent directed Internet users seeking  Complainant’s site to its own website for commercial gain).

Policy paragraph 4(b) lists four factors that give rise to evidence of bad faith registration and use.  These four factors are not meant to be exhaustive, and other circumstances can indicate evidence of bad faith registration and use.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (“[T]he Policy expressly recognizes that other circumstances can be evidence that a domain name was registered and is being used in bad faith”); see also Educ. Testing Serv. v. TOEFL, D2000-0044 (WIPO Mar. 16, 2000) (finding that the Policy “[I]ndicates that its listing of bad faith factors is without limitation”).

Based on the fame of Complainant’s SONY mark it can be inferred that Respondent had actual notice of Complainant’s rights when it registered the disputed domain name. Registration of a domain name, despite actual notice of Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the domain name in bad faith).

Furthermore, Respondent has linked the disputed domain name to pornographic websites.  The use of a domain name for this purpose associates Complainant’s famous mark with pornography and therefore tarnishes Complainant’s goodwill.  This type of use gives rise to a presumption of bad faith use pursuant to Policy ¶ 4(a)(iii).  See Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (use of another's well-known mark to provide a link to a pornographic site is evidence of bad faith registration and use); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

DECISION

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

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

John J. Upchurch, Panelist

Dated: December 16, 2002

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