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Sony Kabushiki Kaisha also trading as Sony Corporation v. Admin www@promotechnology.com +41.227347210promo [2005] GENDND 42 (24 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Kabushiki Kaisha also trading as Sony Corporation v. Admin www@promotechnology.com +41.227347210promo

Case No. D2004-1040

1. The Parties

The Complainant is Sony Kabushiki Kaisha also trading as Sony Corporation, New York, New York, of United States of America, represented by Abelman Frayne & Schwab, United States of America.

The Respondent is Admin www@promotechnology.com +41.227347210 promo, Geneva of Switzerland.

2. The Domain Name and Registrar

The disputed domain name <sonysource.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2004. On December 9, 2004, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the domain name at issue. On December 13, 2004, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response stating that the current registrant of the domain name is “Admin “www@promotechnology.com+41.227347210 Promo”.

The Complainant, based on OnlineNIC’s WhoIs database search dated October 29, 2004, had mentioned the Respondent as: “Adminwww@promotechnology.com70712518, Bealo Group .S.A”, with similar contact details. The Center accordingly notified the Complainant of the change in the details of the domain name registrant.

The Registrar further informed the Center that the Respondent has not submitted in its Registration Agreement to the Jurisdiction at the location of the principal office of the Registrar, for court adjudication of disputes concerning or arising out of the use of the domain name. The Center therefore notified the Complainant that the location of the principal office of the Registrar would not be an option for the purpose of Mutual Jurisdiction as per the Policy and Rules.

The Policy, Paragraph 4 k, read with Para 3 (xiii) of the Rules, states that the Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. Further Paragraph 1 of the Rules, specifies that: “Mutual Jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s Whois database at the time the complaint is submitted to the Provider.”

In response to the notifications by the Center, the Complainant filed two amendments to the Complaint dated December 13, 2004 and December 14, 2004, amending Paragraphs 45 and 6 of the Complaint.

Amending Paragraph 45 of the Complaint, the Complainant consented to the mutual jurisdiction of the courts at the location of the domain holder’s address as shown in the Registrar’s WhoIs database at the time the Complaint was submitted. The Complainant also amended Paragraph 6 of the Complaint mentioning the name of the Respondent as Admin “www@promotechnology.com+41.227347210 promo” with the contact details as reflected in the WhoIs database search dated December 14, 2004

The Complainant further stated that the change of registrant had occurred after the Complaint had been filed, and urged the Panel to draw any ‘reasonable inferences regarding the Respondent’s bad faith to this instance of “Cyberflying”.

The Center verified that the Complaint together with the amendments to 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 December 15, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 4, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 5, 2005.

The Center appointed Harini Narayanswamy as the sole panelist in this matter on January 10, 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 disputed domain name <sonysource.com> was registered on April 18, 2003, with OnlineNic, and is currently being held by the Respondent, Admin “www@promotechnology.com+41.227347210 promo”. The Complainant requests that the domain name <sonysource.com>be transferred to the Complainant.

The Panel accepts the following factual contentions put forward by the Complainant, which are undisputed by the Respondent because of its default in these proceedings.

Sony Corporation, the Complainant, is one of the world’s foremost entertainment and electronic companies. It has shares listed on stock exchanges worldwide including Tokyo, London and New York.

The Complainant has been doing business for over 40 years. It currently has annual sales in excess of $ 63 billion dollars and employs over 189,000 people worldwide. It’s vast business encompasses music, motion pictures, television production, computer entertainment operations, online businesses and is a leading manufacturer of audio, video, communications and information technology products.

The Complainant conducts its business almost exclusively in connection with the name and trademark SONY. The trademark SONY is registered in over 150 countries including Japan, Switzerland, and the United States.

The Complainant owns over 400 trademark registrations for the SONY mark or marks containing SONY in Japan, over 50 such registrations in the United States, where the Registrar for the Domain Name is located and over 20 such registrations in Switzerland where the Respondent is located. The Complainant has filed a representative selection of the details of these registrations obtained from online database searches.

The Complainant invests billions of dollars in research and development which have resulted in creating innovative SONY brand products and have become household items such as Trinitron colour Television, Walkman -personal stereo, Discman portable CD player, Handycam video camcorder, Playstation video game console and more recently Wega flat screen television and Vaio laptop computer.

Furthermore the Complainant spends millions of dollars each year advertising and promoting the SONY trade mark throughout the world, and has been rated as one of the top ten most recognized and respected brand names in the world according to a survey conducted by Landor Associates, the San Francisco based corporate image consultant.

The Complainant conducts business on the Internet and operates a website “http://www.sony.com” which has online games, information concerning music, movies, TV electronics, Playstation video games and information and links to the Complainant and its affiliates worldwide.

5. Parties’ Contentions

A. Complainant

The Complainant has additionally put forth the following legal and factual contentions, referring to several UDRP decisions to support its contentions.

Identical or Confusing Similarity

The domain name <sonysource.com> is identical or confusingly similar to the Trademark SONY. The first and dominant element of the domain name incorporates the trademark, which is distinctive and widely recognized in association with the Complainant and its business activities.

The presence of the TLD “.com” suffix is irrelevant in the comparison of a domain name to a trademark.¹

The relevant portion of the domain name combines the Trademark with the word “source”. A famous and invented mark when combined with a noun or adjective in a domain name has been found to be confusingly similar to the well known mark. ²

The addition of either as prefix or suffix does not detract from the overall impression of the dominant part of the name, namely the famous trademark SONY. A reader of the disputed domain name would be confused to thinking it was associated with the Complainant.³

Addition of the word ‘source’ increases likelihood of confusion as the English word source may signify maker, manufacturer or supplier of goods or service. So “sony source” would mean the maker, manufacturer or supplier of SONY goods or services.

Right and Legitimate Interests.

The Respondent has not been licensed, contracted, acquiesced or otherwise permitted by the Complainant in anyway to use the SONY trademark or apply it for any domain name. At no time did the Respondent have authorization from the Complainant to register the domain name sonysource.com.

The Complainant’s attorney had sent a letter dated April 15, 2004, requesting the registrant to cease using domain name, there was no response. A subsequent reminder dated June 4, 2004, was returned by the postal department.

The Respondent does not use “Sony Source” as part of its trade or company name nor is otherwise commonly known in reference to SONY or SONY SOURCE.

Given the fame and goodwill associated with the SONY mark it is impossible to conceive of a circumstance in which the Respondent could legitimately use the domain name without creating a false impression of association with the Complainant ⁴.

The Complainant’s adoption and used the trademark for over 40 years precedes the registration of the domain name. It can be inferred that the Respondent had notice of the SONY trademark when the domain name was registered.

SONY is a distinctive trademark and is a coined and invented word in English and Japanese. It can be inferred that the domain name <sonysource.com> would not have been registered but for the renown trademark⁵ and gives rise to the presumption that the Respondent has no right or legitimate interest in the domain name.⁶

The Respondent does not use the domain name in connection with a bona fide offering of goods and services. The domain name <sonysource.com> is associated with a web page that provides information regarding penile enlargements.

The use of a domain name that incorporates a well known trademark to direct visitors to an unconnected website does not constitute bona fide use and to link it to websites offering sexually explicit material is evidence that Respondent is trying to capitalize on the Complainant’s well known trademark.⁷

Bad faith

The complaint states that the Respondent has registering and used the domain name in bad faith for the following reasons:

The Respondent who allegedly resides in Switzerland is likely to have notice of the existence of the Complainant’s mark at the time the domain name was registered, from which an inference of opportunistic bad faith can be made.⁸

Incorporating the Complainant’s well-known trademark in the disputed domain name and subsequently using that domain name to direct Internet users to websites containing sexually explicit material is evidence of bad faith.⁹

The website contains the notice “this domain name is for sale” due to the fame of the mark it can be reasonably inferred that the Respondent would seek excessive monetary consideration in excess of its expenses for the sale.¹⁰

The Respondent registered the domain name in order to prevent the Complainant from reflecting the mark in a corresponding domain name.

The Respondent has engaged in a pattern of registering trademarks as domain names which amounts to bad faith. ¹¹ This can be seen in the following cases:

- Toastmasters International v Bealo Group S.A., NAF 167968 concerning domain name <toast master57.org>;

- Target Brands, Inc v. Bealo Group S.A., NAF 128684 concerning domain name <targetstore.net>;

- Radisson Hotels v. Bealo Group S.A. d/b/a Promotechnology.com, NAF 214459 concerning domain name <raddisonmemphisairport.com>.

That the Respondent has registered and used the domain name to intentionally attract for commercial gain, Internet users to the Respondent’s website by creating a likelihood of confusion with the Complaint’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

The affiliation of the SONY trademark with a web site offering sexually explicit material damages the goodwill and reputation of the Complainant. The likelihood of such confusion is enough to satisfy the bad faith standards set forth under the Policy 4(b)(iv).¹²

Respondent’s provision of false contact information for the domain name registration is evidence of bad faith and further maintaining of such false information after registration constitutes bad faith. ¹³

B. Respondent

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

6. Discussion and Findings

The Complainant has to establish the following three elements mentioned in Para 4(a) of the Policy in order to obtain the relief sought for:

(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.

(ii) The Respondent has no right or legitimate interests in respect of the domain name.

(ii) That the domain name has been registered and used in bad faith.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the “SONY” mark and has provided sufficient evidence that the mark is distinctive, being an invented and coined word, which is rated among the top few ‘most recognized trademarks’ world wide.

The Panel concurs with the contention made by the Complainant that the domain name <sonysource.com> is confusingly similar to the trademark and that the TLD “.com” suffix is irrelevant in the comparison of a domain name to a trademark.

The domain name which is a composite term ‘sonysource’, is an amalgam of the trademark with the word ‘source’. The word ‘source’ would heighten the confusion as it signifies origin, foundation or basis, when used in conjunction with the SONY mark it would be interpreted as goods or service emanating from SONY.

The Panel has independently verified that the domain name <sonysource.com> has links to several online game sites, such as “Games Link”, and “Strider Otaku News”. An Internet user who encounters the domain name will anticipate that the domain name originates from the Complainant and is likely to associate it with the Complainant.

The Panel finds the domain name is confusingly similar to the Complainant’s trademark. The Complainant has fulfilled the requirement in paragraph 4(a) (i) of the Policy.

B. Rights or Legitimate Interests

The Complainant’s adoption and use of the SONY mark precedes the registration of the domain name by almost four decades. The fame and goodwill associated with the SONY mark is acknowledged worldwide. It is reasonable to conclude that the Respondent could not legitimately use the domain name without creating a false impression of association with the Complainant.

It is evident from the information provided to the registrar, that the Respondent, is not known by the disputed domain name or any similar name. There is no license from the Complainant to use or apply its trademark to the domain name held by the Respondent. The Respondent does not use the domain name in connection with a bona fide offering of goods and services.

The onus is on the Respondent, under Paragraph 4(c) of the Policy to prove rights or legitimate interests, if any. It is sufficient for the Complainant to put forward a prima facie case that the Respondent does not have any legitimate right to the domain name (Eauto, Inc v. Available Domain Names.com d/b/a Intellectual Assets.com WIPO Case No. D2000-0120). There is no cogent evidence in the records to show that the Respondent has any rights or legitimate interest in the domain name.

The Panel accordingly finds that the Respondent does not have any right or legitimate interests in respect of the domain name, and the Complainant has fulfilled the requirement in paragraph 4(a) (ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy lists circumstances which, without limitation, if found present constitute evidence of registration and use of a domain name in bad faith.

The Panel finds that the Respondent has deliberately used the domain name to create a like hood of confusion with the Complaint’s well known trademark and has intentionally attempted to attract, Internet users to the Respondent’s website which does gives rise to a presumption of opportunistic bad faith. The Respondent’s website offers sexually explicit material, and this in itself will constitute bad faith registration and use under the Policy paragraph 4(b)(iv).

Further, the Panel finds, the circumstances mentioned in Paragraph 4(b) (i) & 4(b) (ii) of the Policy apply to the present case. The Respondent has made an offer to sell the domain name by posting a message on the website that the domain name is for sale. It is evident that the Respondent has registered the domain name to prevent the Complainant, from reflecting the mark in a corresponding domain name and has engaged in a pattern of such conduct.

The circumstances mentioned in paragraph 4(b) do not limit the Panel from finding circumstances other than those described in paragraph 4(b). The Panel finds there are additional indicators of bad faith registration and use of the domain name by the Respondent.

The Respondent’s dubious contact information, attempting to conceal its true identity¹⁴ and trying to evade being identified by ‘cyberflying’ are viewed by the Panel as indications of bad faith registration and use of the domain name.

The Panel finds, in the light of the above reasoning, that the Complainant has established that the domain name was registered and is being used in bad faith as per the requirement in paragraph 4(a) (iii) of the Policy.

7. Decision

The Complainant has succeeded in proving all three elements of paragraph 4(a) of the Policy. In accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sonysource.com> be transferred to the Complainant.

Harini Narayanswamy
Sole Panelist

Dated: January 24, 2005

¹ VAT Holdings V.Vat .com, WIPO Case No D2000-0607; Singapore Airlines Limited v. Robert Nielson (trading as Pacific International Distributors), WIPO Case No. D2000-0644

² Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409

³ Seiko Epson Corporation and Epson America Inc. v. Distribution Purchasing & Logistics Corp, NAF 94219; Dell Computer Corporation v. Alex and Brigitta Ewaldsson WIPO Case No. D2000-1087

⁴ Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin Eonmok, WIPO Case No. D2000-1007

⁵ Nike inc v. B.B de Boer, WIPO Case No. D2000-1397; Société des Produits Nestle SA v. Telemax Management Services WIPO Case No. D2002-0070.

⁶ Gallup Inc Amish Country Store, NAF 96209 and Victoria’s Secret et al v. Asdak st John’s. AG, NAF 96542

⁷ Target Brands v. Bealo Group S.A FA 128684; AltaVista Company v. Andrew Krotov, WIPO Case No. D2000 -1091 Match Net plc v. MAC trading, WIPO Case No. D2000-0205; Chef America Inc v. Sean Murray WIPO Case No. D2000 1481).

⁸ Sony Kabushiki Kaisha also trading as Sony Corporation .v. Inja, Kil WIPO Case No. D 2000-1409, Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok WIPO Case No. D2000-1007, Nintendo of America Inc. v. Pokemon WIPO Case No. D2000-1230, Yahoo! Inc v. David Ashby WIPO Case No. D2000-0241.

⁹ Six Continents Hotels Inc v. Seweryn Novak, WIPO Case No. D2003-0022; Wells Fargo & Co. v Party Night Inc. & Peter Carrington FA 144647; Microsoft Corp v. Paul Horner, WIPO Case No. D2002-0029; Ty, Inc v. O.Z. Names, WIPO Case No. D2000-0370 and Brown & Bigelow, Inc v. Rodela, NAF 96466.

¹⁰ Baby Creysi of America, Inc., Baby Creysi, S.A de C.V, Creysi Bodega, S.A de C.V and Messers. Cohen Hamui Simon and cohen Hamui Abraham v. Asesoria en Computo Integral and Mesrs Flores Gomez Jose Alonso Byrd Nery aida Star, ruiz Jaimez Javier and Perez Parente Martha Adriana, WIPO Case No. D2000-0237; Paul Barnett Puckett, Individually and d/b/a Natures window v. Christopher D Miller WIPO Case No. D2000-0297.

¹¹ Armstrong Holdings Inc v. JAZ Associates FA 95234; Australian Stock Exchange Limited and ASX Operations Pty Ltd v. Community Internet (Australia) Pty Ltd, WIPO Case No. D2000-1384.

¹² Milwaukee Radio Alliance L.L.C v. WLZR-FM LAZER 103, WIPO Case No D2000-0209.

¹³ Chanel v. 1, WIPO Case No. D2003-0218; Action Instruments Inc v. Technology Associates WIPO Case No. D2003-0024.

¹⁴ Provision of fictitious information to a registrar has been held to be bad faith registration of a domain name. See Telstra Corporation v. Nuclear Marshmallows WIPO Case No D2000-0003 and Ticketmaster Corporation v. Dimitri Prem WIPO Case No D2000- 1550.