DECISION

Sony Kabushiki Kaisha a/t/a Sony Corporation v. Mitch Anderson

Claim Number: FA0309000198809

PARTIES

Complainant is Sony Kabushiki Kaisha a/t/a Sony Corporation, (“Complainant”) represented by Robert B.G. Horowitz, of Cooper & Dunham LLP, 1185 Avenue of the Americas, New York, NY 10036.  Respondent is Mitch Anderson, (“Respondent”) 2995 Whitestar Avenue, Anaheim, CA, USA, 92806.

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com>, <sonymemory.com> and <sonyvaiobattery.com>, registered with Register.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.

Judge Richard B. Wickersham, Ret., as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on September 29, 2003; the Forum received a hard copy of the Complaint on October 2, 2003.

On September 30, 2003, Register.Com confirmed by e-mail to the Forum that the domain names <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com>, <sonymemory.com> and <sonyvaiobattery.com> are registered with Register.Com and that Respondent is the current registrant of the names. Register.Com has verified that Respondent is bound by the Register.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 8, 2003, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 28, 2003 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@sonyacadapter.com, postmaster@sonycamcordersbattery.com, postmaster@sonylaptopbattery.com, postmaster@sonymemory.com and postmaster@sonyvaiobattery.com by e-mail.

A timely Response was received and determined to be complete on October 27, 2003.

An Additional Submission was received on October 31, 2003 and it was timely.  The Additional Submission was considered by Panel along with the other materials already received in accordance with The Forum’s Supplemental Rule 7.

On November 6, 2003, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Judge Richard B. Wickersham, Ret., as Panelist.

RELIEF SOUGHT

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

PARTIES’ CONTENTIONS

A. Complainant

Essentially, this proceeding is against five SONY-formative domain names (with one including Sony’s registered VAIO trademark) that are used for the offer and sale of non-SONY goods that directly compete with SONY goods.

(1) Respondent’s domain names, <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> are identical or confusingly similar to Complainant’s trademark SONY and are likely to cause confusion, and <sonyvaiobattery.com> is identical or confusingly similar to Complainant’s trademarks SONY and VAIO and is likely to cause confusion;

(2) Respondent has no rights or legitimate interests in the domain names; and

(3) The domain names were registered in bad faith.

FACTUAL BACKGROUND

           

            Sony is a world leader in, among other areas, the field of consumer electronics products,             including computers and video camcorders.  Sony 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.

Sony conducts its businesses almost exclusively with the name and trademark SONY, a coined term having no meaning in any language, and has registered the SONY trademark in 193 countries including Japan and the United States.

Sony has been in business for over 46 years and has annual sales in excess of $63 billion dollars.  It employs over 189,000 people worldwide.  Sony is publicly held with shares listed on 16 stock exchanges worldwide including New York, Tokyo and London.

Sony has spent billions of dollars in research and development to create innovative SONY-branded products which are household items, such as VAIO computers, HANDYCAM video camcorders, CYBERSHOT digital cameras, PLAYSTATION video game units and WALKMAN tape players/recorders.  These products all have state of the art performance, innovative design and flawless reliability.

Sony spends millions annually to advertise and promote its SONY trademark throughout the world, in all advertising media including print media, broadcast and cable television programming, radio broadcasting, and online advertising and promotion.  During 2002, Sony spent in excess of $100 million advertising products and services with the SONY trademark worldwide.

Sony does business on the internet at a number of different sites incorporating the SONY name and mark, such as at <sony.com> and <sonystyle.com>.  Its <sony.com> website began in 1996 and the <sonystyle.com> website began in 1998.  SONY and SONY VAIO goods are also offered on the Internet through Sony’s authorized Internet dealers.

By reason of such significant advertising, promotion and sales, the SONY trademark is one of the most famous marks worldwide and possesses a goodwill which is of inestimable value.

B. Respondent

The Complaint references ICANN Rule 3(b)(vi).  We do not contest that the domain names <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> meet grounds (1) (2) of Rule 3(b)(vi); namely, that the domain names are confusingly similar to Complainant’s trademark and that Complainant has a legitimate interest in the trademarked term “Sony”.

However, Complainant has not proved that we are violating the third stipulation that we are using the domain names in “bad faith.”  Complainant argues that we registered the domain names “for the purpose of intentionally attempting to attract for commercial gain Internet users to the “Laptops for Less” website by creating a likelihood of confusion with Sony’s name and marks as to source, sponsorship, affiliation or endorsement of Respondent’s website or of a product offered there.”  The content of the Complaint does not substantiate this charge.

The domain names accurately reflect the goods available for sale at those websites.  The design and language used on our domain names clearly indicate that we are a separate company that is unaffiliated with the Sony corporation.  We do not use distinctive Sony marks, nor do we describe our non-Sony-branded products as coming from the Sony Corporation.  The fact that we were aware of the Sony mark prior to registering the domain names is irrelevant to the question of “bad faith.”

As with any “after-market” for parts, consumers and third parties have a legitimate interest in using trademarked terms as descriptive adjectives that identify compatible products.  Complainant has no right to limit others from producing items that are compatible with the products it manufacturers, and it is incorrect for Complainant to argue that a company is using “bad faith” when it attempts to offer those products for sale in a clear and accurate manner.

We believe there is a critical distinction that must be made between domain names that purport to represent a corporation, person, or other entity versus those that describe a marketplace.  Sony created a marketplace for, among other things, batteries for Sony-branded camcorders.  We are within our rights to signal to the public that we serve that market.  The very formation of multi-word-part domain names <sonycamcordersbattery.com> and <sonylaptopbattery.com> suggests a marketplace of goods rather than a sponsored or affiliated site of the Sony Corporation.

The fact that we have engaged in a “pattern of registering domain names that incorporate well-known third party trademarks” is not relevant to the bad-faith argument.  (WIPO D2000-0818).  We offer many products for sale that are compatible with a variety of brands.  We do not register domain names for items that do not describe what we sell, nor do we cybersquat.  We are engaged in a legitimate enterprise of offering branded and non-branded parts to consumers who own branded computers, cameras, and other electronic equipment.  It is perfectly reasonable for us to use our domain names to describe what we sell.

Based upon the foregoing facts and reasons, the domain names <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> should be left under our control.

DISCUSSION

Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”

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;

(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.

Findings

The Panel considered the Additional Submission but it did not influence Panel’s decision.

Identical and/or Confusingly Similar   Policy ¶ 4(a)(i).   

Complainant contends that it has established rights in the SONY and VAIO marks through registration of the marks with the appropriate governmental agencies worldwide, as well as through widespread and continuous use of the marks in commerce.  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption).  The Panel agrees.

Complainant alleges that the <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> domain names are all confusingly similar to its SONY mark. See Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business).  The Panel concurs.

Complainant argues that the <sonyvaiobattery.com> domain name is confusingly similar to Complainant’s SONY and VAIO marks.  See Nintendo of Am Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined Complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Brown & Bigelow, Inc. v. Rodela, FA96466 (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 agrees.

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

Rights or Legitimate Interests    Policy ¶ 4(a)(ii).

Complainant maintains that Respondent is a direct competitor of Complainant, as it sells products not associated with Complainant at the disputed domain names, and that this use of Complainant’s marks is not a bona fide offering of goods or services.  See Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where Respondent purports to resell original Pitney Bowes’ equipment on its website, as well as goods of other competitors of Complainant); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors).  The Panel concurs.

Complainant argues that Respondent is not licensed to use Complainant’s SONY and VAIO marks in a domain name, additional evidence that Respondent lacks rights or legitimate interests in the disputed domain names.  See Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799 (WIPO Oct. 10, 2002) (“without a specific agreement between the parties, the reseller does not have the right to use the licensor’s trademark as a domain name”); see also Toyota Jidosha Kabushiki Kaisha v. Double Time Jazz, FA 113316 (Nat. Arb. Forum July 10, 2002) (“Respondent cannot use Complainant’s trademark in a domain name when Respondent, even though selling Complainant’s goods, has no permission to use the trademark as the domain name”).  The Panel agrees

Accordingly, the Panel finds that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii)..

Registration and Use in Bad Faith   Policy ¶ 4(a)(iii).

Complainant urges that Respondent is using the disputed domain names to create a likelihood of confusion with Complainant’s famous SONY and VAIO marks for Respondent’s own commercial gain, evidence that the disputed domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(iv).  See Hewlett-Packard Co. v. OfficeOnWeb Ltd.,  FA 151537 (Nat. Arb. Forum May 21, 2003) (holding that Respondent’s unauthorized use of the LASERJET mark to operate as a reseller of Complainant’s products constituted bad faith use and registration pursuant to Policy ¶ 4(b)(iv); see also Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20, 2002) (find that the disputed domain name was registered and used in bad faith where Respondent, a distributor of Complainant’s products who was not a licensee of Complainant, used Complainant’s mark in its domain name, suggesting a broader relationship with Complainant and fostering the inference that Respondent was the creator of Complainant’s products rather than a mere distributor).  The Panel concurs.

Complainant alleges that Respondent has engaged in a pattern of registering domain names that incorporate well-known third party trademarks, evidence that the disputed domain names were registered and used in bad faith pursuant to Policy ¶ 4(b)(ii).  See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous registration of domain names such as <pillsbury.net>, <schlitz.net>, <biltmore.net> and <honeywell.net> and subsequent registration of the disputed <Marlboro.com> domain name evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii); see also Hachette Filipacchi Presse v. Fortune Int’l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that where Respondent has registered over 50 domain names that correspond to different well-known trademarks, evidence of a pattern exists).  The Panel agrees.

The Panel thus finds that Respondent registered and used the disputed domain names 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 <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com>, <sonymemory.com> and <sonyvaiobattery.com> domain names be TRANSFERRED from Respondent to Complainant.

                                               

________________________________________________

Judge Richard B. Wickersham, Ret., Panelist
Dated:  November 20, 2003

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