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Sony Kabushiki Kaisha, also trading as Sony Corporation v. Richard Mandanice [2005] GENDND 53 (20 January 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

Sony Kabushiki Kaisha, also trading as Sony Corporation v. Richard Mandanice

Case No. D2004-1046

1. The Parties

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

The Respondent is Richard Mandanice, Domain Strategy Inc., of Canada.

2. The Domain Name and Registrar

The disputed domain name <sony-z5.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 10, 2004. On December 13, 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 14, 2004, OnlineNic, Inc. d/b/a China-Channel.com 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. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on December 13, 2004. The Center verified that the Complaint together with the amendment 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 17, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was January 6, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 7, 2005.

The Center appointed The Honourable Neil Anthony Brown QC as the sole panelist in this matter on January 13, 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 large international company and one of the foremost entertainment and electronic companies in the world. It operates in a wide range of fields and is involved in manufacturing and also in finance, life insurance and many other fields. Some of its products such as the Walkman, the Handycam and Playstation are so well known that they are embedded in the culture. The common theme through virtually all of the company’s extensive operations is the use of its name and trademark SONY. This trademark is registered in more than 150 countries, has been so for many years and is promoted by the expenditure of millions of dollars every year, as a result of which it is internationally known. The products with which the company and the trademark are associated have a reputation for quality, design and reliability.

One of Sony’s products is the SONY CMD- Z5, a mobile telephone that was launched in February 2000, is commonly known as the SONY Z5 and capable of being used in connection with the Internet and email. It is still on the market although it has been superceded by more advanced models.

On August 3, 2002, about 5 months after the Complainant launched the Z5, the Respondent registered the domain name <sony-z5.com> which accordingly consisted of both the Complainant’s name and its product, the Z5 mobile telephone.

The Complainant had not then and has not since then, agreed to the Respondent using its name or its product to create his domain name or for any other purpose.

The domain name thus created, however, does not lead to any information about Sony or its products, but visitors who use the domain name <sony-z5.com> are diverted to another website, “www.free-for-all.com” which supplies sexually explicit material.

Naturally, Sony has demanded that the Respondent cease and desist from this use of its trademark and product name, but the Respondent has not replied to any of these representations and has taken no part in the proceedings.

5. Parties’ Contentions

A. Complainant

The Complainant’s case is that the contentious domain name should be transferred to it and that this should be done because it can make out all three of the elements provided for in paragraph 4(a) of the Policy. Those three elements must be made out before such an order for transfer may be made. The Complainant contends, first, that it is the owner of the registered trademark SONY in all of its manifestations in over 150 countries and that the name chosen by the Respondent for his website is confusingly similar to that mark.

Secondly, it says that the Respondent has no rights or legitimate interests in respect of the domain name, as he has never used it in connection with a bona fide offering of goods or services, he is not known by the domain name himself and he has clearly seized on a well-known product of this prominent company which itself has such a distinctive name, so as to trade off its good will and reputation, in such an inappropriate way as to direct internet traffic intended for the Complainant to go instead to a pornographic site.

Thirdly, it says that all of these circumstances and others show that the Respondent registered the domain name in bad faith and that he has continued to use it in bad faith, not only because he has acted in such an opportunistic way in having consumers misleadingly directed to a sexually explicit internet site, but because he has a history of registering domain names confusingly similar to prominent registered trademarks.

Sony therefore contends that having made out each of the three elements, the appropriate remedy is to have the contentious domain name transferred to it.

B. Respondent

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

6. Discussion and Findings

Paragraph 15 of the Rules provides that the Panel is to decide the Complaint on the basis of the statements and documents submitted. It is appropriate, therefore, to note the fact that the Respondent has not made a Response to the Complaint does not avoid the necessity of examining the issues and of doing so in the light of the evidence.

In fact, paragraph 4 of the Policy expressly provides that in administrative proceedings ‘…the complainant bears the onus of proof’. As the proceeding is a civil one, the standard of proof is on the balance of probabilities.

The onus of proof therefore remains on the Complainant even where, as in the present case, the Respondent has not made a Response or put in a submission. That principle has been enunciated on many occasions by UDRP panels.

The Complainant must therefore establish all three of the elements specified in paragraph 4(a) of the Policy on the balance of probabilities before an order can be made to transfer the domain name.

However, it is equally true that, in the course of deciding whether that onus has been discharged, it is possible to draw inferences both from the evidence that has been submitted and, in appropriate cases, from silence. Indeed, paragraph 14 of the Rules specifically provides that if a Party does not comply with its obligations, the Panel is still required to proceed to a decision, but it is also required to draw such inferences ‘as it considers appropriate’ from the non-compliance.

That being so, the Panel will now proceed to enquire if the Complainant has discharged its onus to prove each of the three elements specified in paragraph 4(a) of the Policy. The three elements, each of which must be proved, are:

A. That the domain name is identical or confusingly similar to a trade or service mark in which the Complainant has rights; and

B. That the Respondent has no rights or legitimate interests in respect of the domain name; and

C. That the domain name has been registered and is being used in bad faith.

The Panel will deal with each of these requirements in turn.

A: Identical or Confusingly Similar

It is clear that the Complainant has the rights to the trademark SONY. As part of its very detailed and documented case, the Complainant has included Annexure A to its Complaint which is an exhibit consisting of 47 pages of registrations of the SONY trademark around the world. There is no doubt that the existence of the SONY trademark is well established.

The Panel finds that the domain name <sony-z5.com> is confusingly similar to that trademark.

That is so for the following reasons. First, as the substance of the domain name consists of the entirety of the trademark, the two must by definition be at least similar.

Secondly, the only additions that have been made to the trademark by the Respondent to create the domain name are a hyphen and the term ‘z5’, meaning clearly that the name of the entity being so described is Sony Z5. The substance of the domain name still remains as Sony.

Thirdly, as the substance of the domain name and the entirety of the trademark are the same word, there must, prima facie be scope for some confusion between the two.

Fourthly and more significantly, the addition of the term’z5’ has exacerbated the confusion, because it makes a new suggestion to the reader, namely that the sony z5 in the domain name is part of the official Sony range, which is the event giving rise to this dispute.

Finally, there is strength in the Complainant’s argument that, as it uses the internet itself and has its own website at “www.sony.com” for its products and services, potential customers, or even the merely curious, will inevitably combine the Sony name with one of its products to create a domain name they believe will lead them to the particular product they want to know about or buy. So the domain name devised by the Respondent is confusingly similar to the name of supplier of the product, Sony, which is of course also the trademark.

The real test is how an objective bystander would construe the two names. The Panel has no hesitation in saying that an objective bystander would say that the domain name is very similar to the trademark and that the one would certainly be confused with the other.

It should also be said that it is now well established that the addition of a hyphen and the ‘. com’ in a domain name does not prevent the domain name from being confusingly similar to a trademark: InfoSpace.co v. Tenenbaum Ofer, WIPO Case No. D2000-0075; VAT Holding AG v. Vat.com, WIPO Case No. D2000-0607; and Singapore Airlines v. Robert Nielson, WIPO Case No. D2000-0644.

Accordingly, the Panel finds that the first element, set out in paragraph 4(a)(i) has been established.

B. Rights or Legitimate Interests

The Panel’s task in deciding if a registrant has any rights or legitimate interests in a domain name is made more difficult when the registrant is in default and does not make a Response or any other form of submission. That is so in the present case, where the Respondent was given notice on December 17, 2004, that the administration proceeding had been commenced and was served with a copy of the Complaint, which included the allegation that he had no rights or legitimate interests in the domain name <sony-z5.com>. So the Respondent was put on notice that this was an issue.

The Respondent was also given notice that he had until January 6, 2005, to send his Response to the Complainant and to the Center, that he would be in default if he did not do so and that, by virtue of paragraph 14 of the Rules, the Panel might draw such inferences from his default as it considered appropriate.

As the Respondent is in default, the Panel, after considering all of the evidence and drawing all reasonable inferences both from the evidence and from the default, concludes that the Respondent has no rights or legitimate interests in the domain name. That is so for the following reasons:

First, if the Respondent had any such rights or interests it was a simple matter for him to say what they were.

Secondly, the Respondent chose as his domain name a very unique name which is neither a Japanese nor an English word, but which is clearly a combination of the Complainant’s famous trademark and business name and one of its well-known products. It stretches credulity to breaking point to believe that this was a mere coincidence or that the Respondent was doing anything other than misappropriating the Complainant’s name and the name of its product. Such conduct cannot create rights or legitimate interests.

Moreover, he registered his domain name on or about August 3, 2000, when the Complainant had been in business under its own name for about 40 years and long after it had acquired prominence in its field and become a household name. These events raise the inference that the Respondent chose his domain name for some illegitimate purpose. That is not conclusive, of course, but if there were a more innocent or legitimate explanation, the Respondent could have given it. The absence of such an explanation re-enforces the inference that there is no innocent or legitimate explanation for the Respondent’s choice of the name. See: Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

Thirdly, the evidence that has been collected and adduced by the Complainant shows that the Respondent has been trading on the Complainant’s goodwill in an entirely illegitimate manner. The evidence shows that the Respondent has been infringing the Complainant’s rights to its trademarks, disrupting its business by ensnaring its customers and, potentially, even children and young people and redirecting their internet searches to a pornographic site. The Respondent must surely have been doing this for money and has refused to cease and desist when asked to do so. The Panel has no hesitation in saying that when the acquisition and use of a domain name is based on a clear intention to use the name for deception, it cannot give rise to rights and when all of the activities just described are illegitimate, as they are, they cannot create legitimate interests.

These conclusions reached by the Panel are consistent with many UDRP decisions including those cited by the Complainant: Target Brands, Inc v. Bealo Group S.A., FA 128684; MatchNet plc v. MAC Trading, WIPO Case No. D2000-0205, Chef America, Inc. v. Sean Murray, WIPO Case No. D2000-1481 and Brown & Bigelow, Inc. v. Bostjan Rodelka, FA96466.

Fourthly, it should not be forgotten that the Policy provides a straightforward mechanism under which a Respondent may establish rights or legitimate interests in the domain name. Paragraph 4(c) sets out three criteria, any one of which, if proved, ‘is to be taken to demonstrate’ the Respondent’s rights or legitimate interests in the domain name. In other words, a Respondent may rely on any one of the three. However, the Respondent has not endeavoured to establish even one of those criteria, giving rise to the inevitable inference that he could not do so by credible evidence.

Indeed, the Complainant has adduced a wealth of factual material set out in several exhibits to the Complaint and, as a result, all of the evidence then shows that the Respondent has not used the domain name for a bona fide offering of goods and services, he is not commonly known by the domain name and he is certainly not making a legitimate non-commercial or fair use of the domain name, thus making it impossible for him to make out any of the three grounds in paragraph 4(c).

For these reasons, the Panel finds that the Respondent has no rights or legitimate interests in the domain name.

C: Registered and Used in Bad Faith

Here again the Policy is of assistance in resolving whether the domain name has been used and registered in bad faith, for its sets out, in paragraph 4(b), four circumstances, proof of any one of which is evidence of that issue. However, those circumstances are not exclusive and it is also open to a Complainant to rely on other matters to show what might be called general bad faith on the part of a Respondent domain name owner.

The Panel finds that in the present case there was bad faith even at the time of registration of the domain name, for the Respondent, who is apparently located in Canada, must have known of such a famous name and mark as Sony and its product the Z5 and yet opportunistically registered a domain name brazenly appropriating both of them. That shows bad faith from the very time of registration.

Such a finding is consistent with a similar finding in Sony Kabushiki Kaisha also trading as Sony Corporation v. Inja, Kil, WIPO Case No. D2000-1409, the only difference being the variations on the Sony name, which had been misappropriated in that case. There are also other decisions of UDRP panels to a like effect.

The Complainant also contends that this is a case falling within paragraph 4(b)(ii) which is where, in substance, the Respondent has registered the domain name to prevent the trademark owner from using the trademark in a corresponding domain name, provided that the Respondent has engaged in a practice of such conduct. In support of that submission, the Complainant points out that in this case, the Respondent has already been found to have engaged in a pattern of registering famous trademarks as domain names, that this was recorded in Expedia, Inc. v. Richard Mandanice, FA0302000146598 where it was noted that the respondent had registered over 50 domain names including the famous names <amazondirect.com> and <lycosdirect.com> and that this decision puts the matter beyond doubt.

Furthermore, at least 7 UDRP cases concerning the Respondent, the names of and references to which are set out in the Complaint, have come to light and in all of them the registration of the domain name was found to have been effected in bad faith.

Accordingly, the Respondent must in the present case be found to have transgressed paragraph 4(b)(ii).

The Complainant also contends that the case is one that comes within paragraph 4(b)(iv) of the Policy, where bad faith may be found if the Respondent has intentionally attempted to attract for commercial gain, Internet users to the Respondent’s site or another site by creating a likelihood of confusion with the Complainant’s site as to the source, sponsorship, affiliation or endorsement of products or services on the Respondent’s site.

On this issue, the Panel finds on the evidence and by drawing reasonable inferences that the Respondent has intentionally attempted to attract internet users to his own website and then to the site at “www.free-for-all.com”. It also finds that he has done so by creating an actual or, at least, a likely confusion as to whether the services being offered on that site were sourced, sponsored, affiliated, endorsed or approved by Sony. This is so because the average user would assume that, having sought out the Sony site but been directed to a pornographic site, this may well have been done with Sony’s knowledge or at least that it had done nothing to stop it.

The only inference open is that the Respondent has engaged in this activity for money.

This conduct shows bad faith by the Respondent in the use of the domain name, for it has been held that using a well-known trademark for the purpose of a domain name and then directing internet users to sexually explicit material is itself acting in bad faith: Virgin Enterprises Limited v. Imran Zafar, WIPO Case No. D2002-0696 and the cases there cited. It is therefore bad faith, being both within the criterion set out in paragraph 4(b)(iv) and also general bad faith in the use of the domain name and by inference, in its registration.

Moreover, the whole modus operandi of the Respondent amounts to acting in bad faith, for, as the Complainant submits, using the well-known Sony mark to create a link to a website unconnected with the Complainant, shows both registration and use in bad faith for commercial gain at the expense of the Complainant, its goodwill and reputation: America Online v. Xianfeng Fu, WIPO Case No. D2000-1374.

All of these matters show that the requirement of bad faith, both with respect to the registration and the use of the domain name, have been made out.

That being so, the Complainant has made out all three elements required to be established under paragraph 4(a) of the Policy before a decision in favour of transfer can be made.

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, <sony-z5.com> be transferred to the Complainant.

The Honourable Neil Anthony Brown QC
Sole Panelist

Date: January 20, 2005