DECISION

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

Claim Number: FA0204000109041

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 Party, Andalusia, PA (“Respondent”).

REGISTRAR AND DISPUTED DOMAIN NAME 

The domain name at issue is <sonytelevision.com>, registered with Network Solutions, Inc.

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, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <sonytelevision.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name.  Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 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@sonytelevision.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 <sonytelevision.com> is identical or confusingly similar to Complainant’s SONY trademark 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 in this proceeding.

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 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 SONY mark; 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.

Respondent registered the disputed domain name on January 2, 1999 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 registering domain names that infringe on 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 mark through registration with the U.S. Patent and Trademark Office and continuous subsequent use.

The disputed domain name is confusingly similar to Complainant’s SONY mark as it incorporates the mark in its entirety and adds the word “television,” which reflects one of Complainant’s popular products.  The addition of a word that describes Complainant’s business does not distinguish its mark from a domain name.  Instead, likelihood of confusion is increased through use of the related word.  See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY”); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

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 mark.  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 mark, 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, supra (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 “sonytelevision” or <sonytelevision.com> pursuant to Policy ¶ 4(c)(ii); Respondent is only known to this Panel as John Zuccarini d/b/a Cupcake Party.  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 and used <sonytelevision.com>, a domain name that wholly incorporates Complainant’s SONY mark, in order to trade on Complainant’s goodwill and create confusion as the source or sponsorship of its website.  Such behavior demonstrates bad faith 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 mark, Respondent must have been aware of the mark 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).

Complainant has provided evidence that Respondent has a history of registering infringing domain names that incorporate the trademarks and service marks of others.  Because Respondent has not refuted this claim, the Panel may accept the assertion as true.  See 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”).  Respondent’s actions suggest a pattern of behavior calculated to prevent trademark holders from registering domain names reflecting their marks, in bad faith pursuant to Policy ¶ 4(b)(ii).  See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Budget Rent a Car Corp. v. Cupcake City, D2000-1020 (WIPO Oct. 19, 2000) (finding a pattern of conduct in registering domain names that infringe upon others’ marks where the Respondent has registered over 1,300 domain names).

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 <sonytelevision.com> domain name be transferred from Respondent to Complaint.

Sandra Franklin, Panelist

Dated:  May 23, 2002

---

WorldLII: Copyright Policy | Disclaimers | Privacy Policy | Feedback
URL: http://www.worldlii.org/int/other/GENDND/2002/765.html