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Sony Kabushiki Kaisha a/t/a Sony Corporationv. A Lista Brasil - Internet Solutions Ltda [2005] GENDND 1447 (16 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Kabushiki Kaisha a/t/a Sony Corporation v. A Lista Brasil - Internet Solutions Ltda

Case No. D2005-0633

1. The Parties

The Complainant is Sony Kabushiki Kaisha a/t/a Sony Corporation, Tokyo, Japan, represented by Pinheiro, Nunes, Arnaud & Scatamburlo S/C, Brazil.

The Respondent is A Lista Brasil - Internet Solutions Ltda, Parana, Brazil.

2. The Domain Name and Registrar

The disputed domain name <sonydigital.net> is registered with Tucows.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 16, 2005. On June 17, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On June 20, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 30, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 20, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 21, 2005.

The Center appointed Susanna H.S. Leong as the Sole Panelist in this matter on August 3, 2005. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant is a company organized and constituted under the laws of Japan and is established in Tokyo, Japan. The Complainant is in the business of manufacturing and selling electronic and electrical machines and equipment worldwide. It has several subsidiary companies around the world and amongst them is Sony Brazil Ltda.

The Complainant has registered the SONY trademark in 189 countries including Japan and Brazil. The Complainant has been in business for nearly forty nine years and it is publicly listed on 13 stock exchanges worldwide including New York, Tokyo and London. Over the years, the Complainant has expanded substantial financial resources in advertisement campaigns and promotions of its SONY trademark. The Complainant also conducts its business on the Internet at a number of different sites incorporating the SONY name and mark such as “www.sony.com”; “www.sonystyle.com”; and “www.sonystyle.com.br”. The “www.sonystyle.com.br” website has been in use since 1999. The Complainant’s goods bearing the trademark SONY are offered on the Internet through its authorized Internet dealers.

The Respondent has registered the disputed domain name <sonydigital.net> on September 25, 2003, with Tucows Inc. The Respondent offers on its website Notebooks, Micro Systems, Video Games, HD, Drives & Zips, CD Players, Palm Tops, Printers, DVDs, Home Theatres, Digital Cameras and other electronic equipments of various brands including the Complainant’s brand SONY. The Respondent did not receive permission to use the trademark SONY from the Complainant and the Respondent is also not an authorised Internet dealer of the Complainant’s products and services.

In fact, the Complainant’s counsel has written a cease and desist letter to the Respondent on March 7, 2005 in which the Complainant made clear its ownership of the various SONY trademark registrations in Brazil; the relevant laws applicable which granted the Complainant exclusive rights over the mark and the request to cease the use of the disputed domain name. This cease and desist letter was sent to the Respondent via email as the Respondent’s registered address was found to be incomplete. However, the Complainant did not receive a response by the Respondent and all other attempts to contact the Respondent were also unsuccessful.

5. Parties’ Contentions

A. Complainant

The Complainant asserts that by reason of its extensive advertisement and promotion efforts of the SONY trademark over the years, the SONY trademark is now one of the most famous marks worldwide and possesses a goodwill which is of inestimable value.

The disputed domain name <sonydigital.net> reproduces the trademark and trade name SONY to which the Complainant has prior and unencumbered exclusive rights. The Complainant asserts that the relevant part of this disputed domain name is “sony” whilst the element “digital’ and the particle “.net” are unregistrable since the former is generic for common use and the latter is irrelevant for the present purposes. The Complainant cites General Electric Company v. Charles Kasinga, WIPO Case No. D2000-0389 and Empresa Brasileira de Telecomunicações S.A. - Embratel v. Gustavo Teles, WIPO Case No. D2000-0155 for the argument that the addition of the particle “.net” is not sufficient to distinguish the domain name from the Complainant’s trademark since “.net” is a common particle in domain names. The Complainant asserts that <sonydigital.net> is confusingly similar to its other domain names “www.sony.com.br” and “www.sony.com”. The Complainant’s contention is that likelihood of confusion is evident given that consumers will immediately identify the domain name registered by the Respondent with the Complainant’s well known trade name, trademarks and domain names and consequently consumers will falsely associate the Respondent’s domain name and its services with the Complainant Sony and/or its subsidiaries.

The Complainant asserts that the Respondent has no rights or legitimate interests in the disputed domain name <sonydigital.net>. The mark SONY is not a generic word but a coined word which has no meaning in any language and it has been in use by the Complainant for nearly 49 years. The Respondent is not related or associated to the Complainant in any way either as an authorized dealer, distributor or representative and the Respondent has registered the disputed domain name without authorization from the Complainant.

The disputed domain name was registered and is used by the Respondent in bad faith. The Complainant argues that the Respondent by offering for sale on its website items such Notebooks, Micro Systems, Video Games, HD, Drives & Zips, CD Players, Palm Tops, Printers, DVDs, Home Theatres, Digital Cameras and other electronic equipments under the title “sonydigital shop” was clearly attempting to seek unfair advantage over the fame and reputation associated with the Complainant’s trademark and trade name SONY. The Complainant asserts that as a result of the fame and reputation of its mark SONY, the Respondent must be considered to have actual or constructive knowledge of the Complainant’s trademark applications and registrations before or at the time of the registration of the disputed domain name. Thus, the registration and use of the disputed domain name by the Respondent under such circumstances are clear indications that the Respondent intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s famous trademark and name SONY. Furthermore, the Complainant asserts that the registration and use of the Respondent’s domain name disrupts the Complainant’s business because the Respondent offers competing services with those of the Complainant’s on the Respondent’s website.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the disputed domain name, the Complainant must establish that each of the three following elements is satisfied:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

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.

Paragraph 4(a) of the Policy clearly states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied in this proceeding.

Furthermore, pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules of any request from the Panel, the Panel shall draw such inferences therefrom, as it deems appropriate.

On the basis of the evidence introduced by the Complainant and in particular with regard to the content of the relevant provisions of the Uniform Policy (paragraphs 4(a), (b), (c)), the Panel concludes as follows:

A. Identical or Confusingly Similar

The Complainant has produced substantial evidence to prove that it has registered trademark rights in the mark SONY in many countries of the world including Brazil. The Panel also finds that the Complainant’s mark SONY is a well known mark in the business of manufacturing and selling electronic and electrical products.

The Respondent’s domain name comprises of the Complainant’s trademark, a generic word “digital” and the generic top level domain “.net”. It is clear that the Respondent’s domain name is similar to the Complainant’s registered trademark SONY. The only issue before this Panel is whether the Respondent’s domain name is confusingly similar to the Complainant’s trademark SONY. With regard to the addition of “.net” to the trademark, a principle which applies to all domain names is that the addition of generic top level domains (gTLDs) or country code top level domains (ccTLDs) does not affect the confusing similarity or identity between the domain name and the trademarks in issue. This has been clearly established by the cases and is no longer an issue. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859; Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300; and J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035. Thus, the addition of “.net” to the Complainant’s trademark does not change the assessment of confusing similarity.

With regard to the addition of the generic word “digital” to the Complainant’s trademark, it has been held in a number of other cases that this is also insufficient to affect the confusing similarity or identity between the disputed domain name and the trademark in question. See PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409; America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184; State Farm Mutual Automobile Insurance Company v. Kyle Northway, NAF Case No. FA 95464; State Farm Mutual Automobile Insurance Company v Douglas La Faive, NAF Case No. FA 95407; Quixtar Investments, Inc v. Dennis Hoffman WIPO Case No. D2000-0253; and Jefferson Smurfit Group plc v. Stephen Davidson Inc., WIPO Case No. D2000-1117. Thus, the added generic word “digital” does not alter the fundamental character of the domain name and does not change the overall impression of it being a domain name connected to or associated with the Complainant, its trade name and its trademark SONY.

As a result of the fame of the Complainant and its trademark SONY and the fact that the Respondent offers a similar service on his website, the Panel finds that the Respondent domain name might well be regarded by many Internet users as a domain name associated with or connected to the Complainant’s business in selling and manufacturing electronic and electrical goods. Consequently, the Panel finds the Respondent’s domain name to be confusingly similar to the Complainant’s trademark SONY over which the Complainant has exclusive rights.

The Panel thus find for the Complainant on the first part of the test.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

The Panel finds that the Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances giving rise to a right to or legitimate interest in the domain name. The Panel further notes that the Respondent has failed to submit a Response to the Complaint filed against him. In particular, the Respondent has failed to make submissions to demonstrate that he has rights or legitimate interests to the domain names. In accordance to the Rules for Uniform Domain Name Dispute Resolution Policy, paragraph 14, the Panel thus draws such inferences as it considers appropriate, which are that the Respondent is unable to adduce evidence to show cause that he has rights or legitimate interests to the said domain names.

Based on the following reasons the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name:

(i) That the Respondent has not provided evidence of honest concurrent user in the trademark or trade name SONY or reasons to justify the choice of the word SONYDIGITAL in its business operations;

(ii) That the Complainant has not licensed or otherwise permitted the Respondent to use its trademark or to apply for or use any domain name incorporating the trademark; and

(iii) That the word SONY, a coined word, is a well known mark and as such is not one that traders would legitimately choose unless the sole purpose is to create an impression of an association with the Complainant.

The Panel finds for the Complainant on the second part the test.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:

(i) circumstances indicating that Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or

(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.

After carefully considering the contentions of the parties and the evidence adduced before the Panel, the Panel concludes that the circumstances referred to in Paragraph 4(b)(iv) of the Policy are applicable to the present case and upon the evidence of these circumstances it is adequate to conclude the Respondent has registered and used the disputed domain name in bad faith.

On the evidence adduced before the Panel, the Panel finds that the Complainant’s trademark SONY to be a well known trademark in many countries including Brazil wherein the Respondent resides. Therefore, the Panel accepts the Complainant’s submission that the Respondent had actual or constructive notice of the Complainant’s trademark rights at the time of the registration of the domain name.

It is important to note that the disputed domain name <sonydigital.net> resolves to the Respondent’s website on which it offers for sale products such as Notebooks, Micro Systems, Video Games, HD, Drives & Zips, CD Players, Palm Tops, Printers, DVDs, Home Theatres, Digital Cameras and other electronic equipments of various brands including the Complainant’s brand SONY under the title ‘sonydigital shop”. This, coupled with the fame of the Complainant’s SONY mark, may cause Internet users to assume that the Respondent’s site called SONYDIGITAL is sponsored by or in some way affiliated with the Complainant. The Panel finds that the Respondent is, in using the disputed domain name, seeking to exploit the goodwill in the Complainant’s mark SONY to attract Internet users intentionally to the Respondent’s website for purposes of commercial gain. This constitutes bad faith use and registration under Paragraph 4(b)(iv) of the Policy.

The Panel thus finds for the Complainant on the third part of the test.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sonydigital.net> be transferred to the Complainant.

Susanna H.S. Leong
Sole Panelist

Dated: August 16, 2005