DECISION

Sony Kabushiki Kaisha a/t/a Sony Corporation v. John Zuccarini d/b/a Cupcake Patrol

Claim Number: FA0204000109042

PARTIES

Complainant is Sony Kabushiki Kaisha a/t/a Sony Corporation, Tokyo, JAPAN (“Complainant”) represented by Robert B.G. Horowitz, of Cooper & Dunham LLP.  Respondent is John Zuccarini d/b/a Cupcake Patrol, Atlanta, GA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sonyviao.com>, registered with Joker.com.

PANEL

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

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on April 3, 2002; the Forum received a hard copy of the Complaint on April 8, 2002.

On April 5, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <sonyviao.com> is registered with Joker.com and that Respondent is the current registrant of the name.  Joker.com has verified that Respondent is bound by the Joker.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 April 8, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 29, 2002 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@sonyviao.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 May 10, 2002, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin 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

Respondent’s domain name <sonyviao.com> is identical or confusingly similar to Complainant’s SONY and VAIO trademarks and is likely to cause confusion.

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

The disputed domain name was registered and used in bad faith.

B. Respondent

Respondent did not submit a Response.

FINDINGS

Complainant is a world leader in the field of consumer electronics and is also involved in a wide range of businesses including entertainment, finance, life insurance, chemicals, and many others, all in connection with the SONY trademark.  The word SONY has no meaning in any language and has been registered as a trademark by Complainant in 193 countries including the United States and Japan.  Complainant has used the VAIO mark in connection with its personal computers since at least October 1996.

Complainant has been in business for over 45 years and has annual sales in excess of $63 billion.  Complainant employs over 189,000 people worldwide and is publicly held, with shares listed on sixteen stock exchanges, including New York, Tokyo, and London.

Each year, Complainant spends millions of dollars promoting its marks; in 2001, it spent over $100 million advertising SONY-branded products and services around the globe.  Complainant hosts websites at <sony.com> and <sonystyle.com>.  In 1990, SONY was recognized as the world’s most admired brand and the fourth best-known brand.

The SONY mark is registered on the Principal Register of the United States Patent and Trademark Office as Reg. No. 1,622,127, and VAIO is registered on the Principal Register as Reg. No. 2,091,993.

Respondent registered the disputed domain name on March 20, 2000 and has used the name to redirect users to <amatuervideos.nl>, a site displaying pornographic images.  Complainant has submitted evidence that Respondent has a history of “typosquatting,” the practice of registering domain names that reflect common misspellings of famous marks.

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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(2) the 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 its rights in the SONY and VAIO marks through registration with the U.S. Patent and Trademark Office and continuous subsequent use.

The disputed domain name is confusingly similar to Complainant’s marks as it combines the distinctive SONY mark with a misspelling of VAIO.  By combining the two marks and transposing the “a” and “i” in VAIO, Respondent has not created a unique or distinct domain name; rather, Respondent has registered a domain name nearly identical to Complainant’s marks.  See Google Inc. v. Jon G., FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he transposition of two letters does not create a distinct mark capable of overcoming a claim of confusing similarity, as the result reflects a very probable typographical error”); see also Pier 1 Imp., Inc. v. Success Work, D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com> is confusingly similar to Complainant's PIER 1 mark); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the domain name <geociites.com> is confusingly similar to Complainant’s GEOCITIES mark).

The addition of “.com” to the marks is insignificant to the identical/confusingly similar inquiry.  See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).

Accordingly, the Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant has demonstrated its rights to and interests in the SONY and VAIO marks.  Because Respondent has not submitted a Response in this matter, the Panel may presume it has no such rights or interests in respect of the disputed domain name.  See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).

Given the popularity and notoriety of Complainant’s SONY marks, it seems highly unlikely that Respondent could have any rights or interests in a domain name incorporating the word SONY.  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 Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that SONY is “instantly recognizable as one of the most famous trademarks in the world”).

Respondent has used the disputed domain name to redirect Internet users to a pornographic website, by taking advantage of and potentially tarnishing the goodwill built up in Complainant’s marks.  Such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See MatchNet plc v. MAC Trading, D2000-0205 (WIPO May 11, 2000) (finding that it is not a bona fide offering of goods or services to use a domain name for commercial gain by attracting Internet users to third party sites offering sexually explicit and pornographic material, where such use is calculated to mislead consumers and tarnish the Complainant’s mark); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's well-known mark to provide a link to a pornographic site is not a legitimate or fair use).

Respondent is not commonly known by “sonyviao” or <sonyviao.com> pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as John Zuccarini d/b/a Cupcake Patrol.  See Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have rights in a domain name when Respondent is not known by the mark); see also Great S. Wood Pres., Inc. v. TFA Assocs., FA 95169 (Nat. Arb. Forum Aug. 5, 2000) (finding that Respondent was not commonly known by the domain name <greatsouthernwood.com> where Respondent linked the domain name to <bestoftheweb.com>).

The Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name and, thus, Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered  <sonyviao.com>, a domain name that is nearly identical to Complainant’s SONY and VAIO marks, in order to trade on Complainant’s goodwill and create confusion as the source or sponsorship of its website.  Such behavior demonstrates bad faith registration and use within the meaning of Policy ¶ 4(b)(iv).  See Am. Online, Inc. v. Tencent Comm. Corp., FA 93668 (Nat. Arb. Forum Mar. 21, 2000) (finding bad faith where Respondent registered and used an infringing domain name to attract users to a website sponsored by Respondent); see also Sony Kabushiki Kaisha v. Inja, Kil, supra (finding bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).

Given the fame and distinctiveness of Complainant’s marks, Respondent must have been aware of the marks and Complainant’s rights therein when it registered the disputed domain name.  See 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 world-wide prominence of the mark).  Respondent’s registration of the infringing domain name, despite such knowledge, further demonstrates bad faith under the Policy.  See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Entrepreneur Media, Inc. v. Smith, [2002] USCA9 115; 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that, "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Victoria's Secret v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constituted 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 should be hereby granted.

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

Sandra Franklin, Panelist

Dated:  May 23, 2002

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