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Sony Ericsson Mobile Communications International AB, Sony Corporation, Telefonaktiebolaget LM Ericsson v. Dariusz Pietras [2005] GENDND 536 (29 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Ericsson Mobile Communications International AB, Sony Corporation, Telefonaktiebolaget LM Ericsson v. Dariusz Pietras

Case No. D2005-0553

1. The Parties

1.1 The Complainants are:

(a) Sony Ericsson Mobile Communications International AB, Lund, Sweden (the “1^st Complainant”);

(b) Telefonaktiebolaget LM Ericsson, Stockholm, Sweden (the “2^nd Complainant”); and

(c) Sony Corporation, Tokyo, Japan (the “3^rd Complainant”),

(the 1^st Complainant, the 2^nd Complainant and the 3^rd Complainant are jointly referred to as the “Complainants”)

1.2 The Complainants are represented by the law firm of Göhmann Wrede Haas Kappus & Hartmann of Germany.

1.3 The Respondent is Dariusz Pietras of Poland (the “Respondent”).

2. The Domain Name and Registrar

The disputed domain name is <sony-ericsson.org> which is registered with eNom, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 26, 2005. On May 25, 2005, the Center transmitted by email to eNom, Inc. a request for registrar verification in connection with the domain name at issue. On May 26, 2005, eNom, Inc. 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 15, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 5, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 7, 2005.

The Center appointed Syed Naqiz Shahabuddin as the sole panelist in this matter on July 15, 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 following summary sets out the uncontested factual submissions made by the Complainants:

4.1 The 3^rd Complainant is the owner of the trademark “SONY” whereas the 2^nd Complainant is the owner of the trademark “ERICSSON”.

4.2 The 3^rd Complainant and the 2^nd Complainant have secured the following trademark registrations:

(a) The “SONY” trademark was registered with the EU Office for Harmonization in the Internal Market on May 5, 1998 (No.000000472) for inter alia apparatus and instruments for data communication.

(b) The “ERICSSON” trademark was registered with the EU Office for Harmonization in the Internal Market on March 23, 1999 (No.000107003) and February 15, 2001 (No. 001459130) respectively for inter alia apparatus and instruments for data communications, and with the German Patent Office on October 8, 1982 (No.1039430).

4.3 The trademark “ERICSSON” is one of the most famous trademarks in the field of mobile communications and mobile telephones whereas the trademark “SONY” is one of the most famous trademarks in the field of mobile communications, multimedia and entertainment.

4.4 The 1^st Complainant is a joint venture company which was established by the 2^nd and 3^rd Complainants in October 2001. It is licensed to use and enforce the rights to the “SONY” and “ERICSSON” trademarks, as a combined trademark, for its products and as its company name. In the relatively short period of time since its formation, the combined trademark “SONY ERICSSON”, as used by the 1^st Complainant, has become a globally recognised trademark in the field of mobile telephones and is well known in the telecommunications industry and amongst the respective consumers.

4.5 In addition, the 1^st Complainant also operates a website located at “www.sonyericsson.com” where the 1^st Complainant provides internet users with information about its products (in particular mobile phones) and other related topics.

4.6 The Complainants had on January 27, 2003, succeeded in comparable proceedings before the Center, Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128 (<sonyeriksson.com>, <sonyerisson.com>, <sonyericson.com> and <sonyerricsson.com>).

5. Parties’ Contentions

5.1 Complainant

(a) The Complainants contend that the first part of the domain name <sony-ericsson.org> is identical to the famous trademark of the 3^rd Complainant and that the second part of the domain name is identical to the famous trademark of the 2^nd Complainant. The domain name in issue is confusingly similar to the combination of trademarks which is used by the 1^st Complainant. The only difference is that the word “SONY” and “ERICSSON” in the domain name are hyphenated.

(b) The Complainants contend further that they had never authorized the Respondent to use their trademarks in any way. In fact, the Complainants contend that:

(i) the Respondent cannot demonstrate that he has made any use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;

(ii) the Respondent cannot establish rights in the domain name because the Respondent (whether as an individual, business, or other organization) has never been commonly known by the domain name and has not acquired trademark or service mark rights in the domain name. The Respondent has never been called by, affiliated with or commonly known by the domain name in dispute;

(iii) the Respondent does not make any legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademarks in question. The Respondent shows advertisements on its web site and offers mobile telephones for sale. The Complainants submit that this indicates an intent for commercial gain connected to the Respondent’s use of the domain name;

(iv) the Respondent also offers the sale of a terminator dongle which is a device that is used to unlock Sony Ericsson mobile telephones. The Complainants argue that such unlocking devices interfere with the mobile telephones’ software and therefore constitute copyright infringement. The Complainants also argue that they are considered as trademark infringements as they harm customers’ trust in the products that are sold under the trademark; and

(v) the Respondent displays on its web site, at several places, the characteristic “Liquid Identity” logo of the 1^st Complainant. The Complainants state that this logo is protected as a European trademark under the numbers 002634632 and 002799203. Moreover, the Respondent is using the trademark “Sony Ericsson” in the distinctive style at the top of his homepage. This also constitutes trademark infringement and creates the impression that it is an official Sony Ericsson web site. The Complainants contend that by referring to his web site as a “klub”, the Respondent gives the impression of having a non-commercial web site.

(c) The Complainants contend that the domain name was registered and used in bad faith. In this regard, the Complainants rely on the following acts of the Respondent:

(i) the Complainants had previously demanded the transfer of the domain name and agreed to bear the costs of the transfer. However, the Respondent apparently responded by indicating that he had received an offer from a company in Asia, that was willing to purchase the domain name for $3000. The Respondent pointed out that only a financially more attractive offer could make the Respondent consider a transfer of the domain name to the Complainants;

(ii) the Respondent intentionally attempts to attract Internet users to the Respondent’s web site and other online locations for commercial gain by creating a likelihood of confusion with the Complainants’ marks as to the source, affiliation or endorsement thereof. The web page contains links to other web pages, where it is possible to purchase other products. The page contains advertisements and offers relating to mobile phones. The Complainants contends that the Respondent derives profit from these links, advertisements and offers;

(iii) the Respondent not only uses the trademark “Sony Ericsson” as a heading for his web site but also uses the same as well as the “Liquid Identity” logo of the 1^st Complainant in its content pages; and

(iv) the use of the domain name has to be considered as bad faith even if the web page was a non-commercial “fan site”. The deliberate use of somebody’s trademark cannot be regarded as fair use and the potential for damage lies in the fact that the Complainants’ reputation and goodwill is out of their control and rests with the Respondent.

5.2 Respondent

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

6. Discussion and Findings

In order to succeed in its Complaint, the Complainant is required to establish the following elements set out under paragraph 4(a) of the Policy:

(a) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(b) that the Respondent has no rights or legitimate rights in respect of the domain name; and

(c) that the domain name has been registered and is being used in bad faith.

6.1 Identical or Confusing Similarity Between the Trademarks and the Domain Name

The Panel is satisfied that the Complainants have rights to the trademarks “SONY”, “ERICSSON” and the combined “SONY ERICSSON” trademark. In particular, the 1^st Complainant has rights to the combined trademark “SONY ERICSSON” and the 3^rd and 2^nd Complainants have rights to the trademarks “SONY” and “ERICSSON” respectively. A visual and comparison between the said combined trademark and the domain name in issue indicates that the Respondent had reproduced the trademark of the 1^st Complainant in its domain name in its entirety and had partially reproduced the trademarks of the 2^nd and 3^rd Complainants.

With regard to the use of a hyphen to separate the trademarks “SONY” and “ERICSSON”, there has been numerous other Panel decisions regarding the use of hyphens in domain names. These cases indicate that the use of hyphenated marks does not mean that the domain name is not identical or confusingly similar to the trademarks concerned (See Dr. Sally Jensen v. Dissertationdoctors.com and Dissertation-doctors.com, WIPO Case No. D2003-0348). In fact, there is a technical need to fill the gap between two separate words for the purposes of registering the same as a domain name. Blank spaces between words are not allowed in domain name registrations. As such, where the name comprises two words, the registrant would be forced to either combine the two words as one or otherwise use some form of connector such as a hyphen. The reason why trademarks comprising more than one word, when used in domain names, do not appear exactly the same way in which it is registered is therefore based purely on technical grounds. This reason, by itself, ought not prevent a Complainant from arguing that the trademark and the domain name are identical or confusingly similar. The Panel is satisfied that the domain name is identical or at least confusingly similar to the Complainants’ trademarks.

Based on the confusing similarity between the Complainants’ trademarks and the Respondent’s domain name, the Panel is satisfied that the first element of paragraph 4(a) of the Policy has been proven by the Complainants.

6.2 Rights or Legitimate Interests in the Domain Name

The failure of the Respondent to respond to the Complainants’ contentions and the evidence adduced by the Complainant leads the Panel to find that the Respondent has no rights or legitimate interest in the domain name. The Panel could find no justification, rights or legitimate interests on the part of the Respondent to the words or trademarks comprising the domain name. To say that the Respondent is making a legitimate non commercial or fair use of the domain name is incorrect as the website is in fact being used for a commercial purpose by way of advertisements, links and sale offers (whether or not conducted directly by the Respondent). A different name could have been used for this purpose, one in which the Respondent could prove that it had legitimate interests or rights. Nor has any evidence been adduced to indicate that the Respondent is known by the name “SONY” or “ERICSSON”.

Based on the above circumstances, the Panel is therefore satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainants.

6.3 Registration and Use in Bad Faith

The only inference which the Panel can reasonably draw from the circumstances surrounding the registration and use of the domain name is that the Respondent intended to divert internet users to the Respondent’s website by relying on the initial interest confusion played on the minds of the users as to the true owner of the domain name. Past panel decisions, including Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128 found that the deliberate creation of initial internet confusion and the consequent diversion of internet traffic is sufficient to establish bad faith on the Respondent’s part notwithstanding that the internet users who have visited the Respondent’s site would not be confused into believing that it was the Complainant’s site. This Panel agrees with the view that initial interest confusion, when coupled with sufficient evidence of intention or deliberate creation, can give rise to bad faith.

The fact that the Respondent decided to use a famous trademark in the mobile communications industry to offer for sale and to advertise mobile communications products indicates that the Respondent intended to usurp the reputation and goodwill of the Complainants. Given the notoriety of the Complainants’ trademarks, the manner of use of the Complainants’ trademarks throughout the website, the types of products offered for sale by the Respondent through the website and the offer to sell the domain name at a ‘higher than cost’ price, it would be difficult, if not impossible, for the Respondent to argue that it did not know of the Complainants’ trademarks or that it did not intend to usurp the Complainants’ established reputation and goodwill. The reasonable assumption to draw in light of the prevailing evidence and the failure of the Respondent to submit a Response is that there was an intention from the outset to usurp the goodwill and reputation of the Complainants. A finding of such conduct satisfies the third element of paragraph 4(a) of the Policy in that the domain name was registered and used in bad faith.

Accordingly, the Panel is also satisfied that the third element of paragraph 4(a) of the Policy has been satisfactorily proven by the Complainants.

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-ericsson.org> be transferred to the 1^st Complainant.

Syed Naqiz Shahabuddin
Sole Panelist

Dated: July 29, 2005