Sony Interactive Entertainment, Inc. v. Olga Buzova
Claim Number: FA2109001962163
Complainant is Sony Interactive Entertainment, Inc. (“Complainant”), represented by Arthur Fouré of IP Twins, France. Respondent is Olga Buzova (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names here at issue are <buyps5.us>, <ps5buy.us>, <play-station.us>, <play-station5.us>, <playstationfive.us>, <ps5-shop.us> and <shopps5.us>, each of which is registered with either Porkbun LLC or NameCheap, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 2, 2021; the Forum received payment on September 2, 2021.
On September 2, 2021, Porkbun LLC and NameCheap, Inc. confirmed, by e-mail message addressed to the Forum, that the domain names <buyps5.us>, <ps5buy.us>, <play-station.us>, <play-station5.us>, <shopps5.us>, <playstationfive.us> and <ps5-shop.us> are registered with Porkbun LLC or NameCheap, Inc. and that Respondent is the current registrant of the names. Porkbun LLC and NameCheap, Inc. have verified that Respondent is bound by the Porkbun LLC and NameCheap, Inc. registration agreements and has thereby agreed to resolve domain disputes brought by third parties in accordance with U.S. Department of Commerce’s usTLD Disputed Resolution Policy (the “Policy”).
On September 7, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 27, 2021, by which Respondent could file a Response to the Complaint, via e-mail messages addressed to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, as well as to the attention of the following: postmaster@buyps5.us, postmaster@ps5buy.us, postmaster@play-station.us, postmaster@play-station5.us, postmaster@playstationfive.us, postmaster@ps5-shop.us and postmaster@shopps5.us. Also, on September 7, 2021, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On October 1, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules to the usTLD Dispute Resolution Policy (“Rules”). Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the usTLD Policy, usTLD Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
(1) all seven of the domain names were registered within a period of thirty-two days, two of them being registered on the same date;
(2) all of the domain names share the same “.us” country code Top Level Domain (“usTLD”);
(3) all of the domain names share one or the other of two common structures, either (Ps5 + “shop” or “buy” + “.us”) or (Play Station [with or without an intervening hyphen] + “Five” or “5” + “.us”);
(4) five of the domain names share the same IP Address;
(5) six of the domain names share the same registrar);
(6) five of the domain names report an IP Location of “Moskva” Russia, while two report an IP Location of Los Angeles, CA;
(7) six of the domain names identify their registrant as “Redacted for Privacy,” while one of them identifies the registrant as “Olga Buzova;” and
(8) six of the domain names report their registrant’s state as CA, while one reports its registrant’s city and state as Moscow, Russia.
Because Respondent does not refute any of this, and because it appears from the facts that they cannot be explained by reference to mere coincidence, the Panel determines that Complainant’s request must be granted. Accordingly, throughout this Decision we will refer to the two identified respondents as a single Respondent. See, for example, Caterpillar v. Arendt, FA1789701 (Forum July 2, 2018):
The Panel finds that the domain names are under common control because the three domain names are constructed in the same manner, were registered on the same date with the same registrar, have been used in the same way, and use … [the same]… servers…. These elements are sufficient to find that the domain names were registered by the same … holder.
A. Complainant
Complainant is a multinational video game and digital entertainment firm.
Complainant holds registrations for the trademark PLAYSTATION and the trademark/service mark PS5, which are on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 4,372,780, registered July 23, 2013, and Registry No. 6,279,642, registered March 2, 2021, respectively.
Respondent registered the following domain names on the dates indicated for each: <play-station.us> on May 2, 2021; <ps5buy.us> on May 15, 2021; <buyps5.us> on May 16, 2021; <shopps5.us> on May 27, 2021; <play-station5.us> on June 1, 2021; <ps5-shop.us> on June 1, 2021; and <playstationfive.us> on June 10, 2021.
All of the domain names are confusingly similar to one or the other of Complainant’s PLAYSTATION and PS5 marks.
Respondent has not been commonly known by any of the domain names.
Complainant has not licensed or otherwise authorized Respondent to use either its PLAYSTATION mark or its PS5 mark in a domain name.
Respondent is not using the domain names in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent uses the domain names <play-station.us> and <buyps5.us> to impersonate Complainant online to facilitate the unauthorized sale of Complainant’s products, and Respondent uses the <ps5buy.us> domain name to resolve to a website unrelated to the business of Complainant while the remaining domain names are passively held.
Respondent does not have any rights to or legitimate interests in any of the domain names.
Respondent knew of Complainant and its rights in the PLAYSTATION and PS5 marks when it registered the domain names.
Respondent registered or uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of any of the domain names; and
(3) the same domain names were registered and are being used by Respondent in bad faith.
Paragraph 15(a) of 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:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered or is being used by Respondent in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent, as applicable, in rendering its decision.
Complainant has rights in the PLAYSTATION and PS5 marks sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of those marks with a national trademark authority, the USPTO. See, for example, Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum December 28, 2018) (finding that a complainant’s registration of its mark with the USPTO sufficiently confirmed its rights in the mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent claims to reside or do business (here, as to five of the challenged domain names, Russia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <buyps5.us>, <ps5buy.us>, <play-station.us>, <play-station5.us>, <shopps5.us>, <playstationfive.us> and <ps5-shop.us> domain names are confusingly similar to one or the other of Complainant’s PS5 and PLAYSTATION marks. Each of the domain names incorporates one of the marks in its entirety, with only the addition of a generic term (“buy” or “shop”), each of which references Complainant’s place in the stream of commerce, and with the terms of some of the domain names separated by a hyphen (-), plus the country code Top Level Domain (ccTLD) “.us.” These alterations of the marks, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See, for example, MIGROS-GENOSSENSCHAFTS-BUND v. Tayfun yalcin, FA 1621184 (Forum July 8, 2015):
In light of the fact that Respondent’s disputed domain name incorporates Complainant’s whole mark and merely adds the ccTLD “.us,” the Panel here finds that the disputed domain name is identical to Complainant’s … mark.
See also Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018):
Where a relevant trademark is recognisable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not prevent a finding of confusing similarity under the first element [of the Policy].
Finally, as to Respondent’s insertion of a hyphen into three of the domain names, this feature of the domains is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent lacks rights to and legitimate interests in the contested domain names, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See, for example, Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain names. See, for example, Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iv), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names that are cognizable under the Policy.
We begin by noting that there is nothing in the record before us suggesting that Respondent is the owner or beneficiary of a trademark or service mark that is identical to any of the challenged domain names. We conclude, therefore, that Respondent has no claim of rights to or legitimate interests in the domain names under Policy ¶ 4(c)(i). See, for example, Pepsico, Inc. v. Becky, FA 117014 (Forum September 3, 2002), finding that, because there was no evidence showing that a respondent owned a trademark or service mark reflecting a specific domain name, it could not lay claim to rights to or legitimate interests in that domain name under Policy ¶ 4(c)(i).
We next observe that Complainant asserts, without any objection from Respondent, that Respondent makes no active use of the four domain names
<play-station5.us>, <shopps5.us>, <playstationfive.us> and <ps5-shop.us>, (called “passive holding”). Because Respondent makes no active use of these domain names, it cannot be said to use any of them in connection with a bona fide offering of goods or services within the contemplation of Policy ¶ 4(c)(ii). See, for example, Morgan Stanley v. Francis Mccarthy / Baltec Marine LLC, FA 1785347 (Forum June 8, 2018):
Inactive holding of a domain name does not qualify as a bona fide offering of goods or services ….
We also take note of Complainant’s further assertion, to which Respondent likewise does not object, that Respondent uses the domain names <play-station.us> and <buyps5.us> to impersonate Complainant online in order to facilitate the unauthorized sale of Complainant’s products, and that Respondent uses the <ps5buy.us> domain name to resolve to a website unrelated to the business of Complainant, presumably to profit from the confusion the domain name causes among Internet users as to the possibility of Complainant’s association with it. Because such uses are inherently illegitimate, they do not satisfy the express requirement of Policy ¶ 4(c)(ii) that Respondent’s employment of the domain names be “in connection with a bona fide offering of goods or services.”
With particular regard to Respondent’s use of the domain names <play-station.us> and <buyps5.us>, see, for example, Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018):
Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under [UDRP] Policy ¶’s 4(c)(i) & (iii).
And, specific to Respondent’s employment of the <ps5buy.us> domain name, see, for example, Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017):
Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services …. The Panel therefore finds that Respondent’s unrelated use of the … domain name evinces a lack of rights and legitimate interests under [UDRP] Policy ¶ 4(c)(i) ….
We turn then to Complainant’s final contention under this head of the Policy, which Respondent, once again, does not deny, that Respondent has not been commonly known by any of the challenged domain names. In this connection we note that the pertinent WHOIS information identifies the registrant of six of the domain names only as “Redacted for Privacy,” while one of them identifies the registrant as “Olga Buzova.” Neither of these appellations resembles any of the domain names. On this record, we conclude that Respondent has not been commonly known by any of the contested domain names so as to have acquired rights to or legitimate interests in any of them within the ambit of Policy ¶ 4(c)(iii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018), finding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent only as “Bhawana Chandel.” See also Emerson Electric Co. v. Cai Jian Lin / Shen Zhen Shi colorsun Zi Dong Hua You Xian Gong Si, FA 1798802 (Forum August 31, 2018):
UDRP panels have consistently held that evidence of a registrant name that is materially different from the domain name at issue is competent evidence that the respondent is not commonly known by the domain name.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent uses the domain names <play-station.us> and <buyps5.us> to impersonate Complainant online in order to facilitate the unauthorized sale of Complainant’s products, and that Respondent may be presumed to profit from its employment of those domain names. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using those domain names. See, for example, Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where “Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant or is otherwise affiliated or associated with Complainant.”).
We are likewise convinced by the evidence that Respondent uses the <ps5buy.us> domain name to resolve to a website unrelated to the business of Complainant. In the circumstances described in the Complaint, we may comfortably presume that Respondent profits from this use of the domain name, whether from the receipt of pay-per-click fees or otherwise. This use of the domain name therefore constitutes proof of Respondent’s registration and use of the domain name in bad faith. See, for example, Tom Cruise v. Network Operations Center / Alberta Hot Rods, D2006-0560 (WIPO July 5, 2006):
[T]he disputed domain name has identified a site almost wholly devoted to third-party products and advertisement. The Panel does not consider this pattern of usage of the disputed domain name to constitute a bona fide offer of services …. The Panel considers that Respondent has attempted to take unfair advantage of Complainant’s rights in his mark by using it to attract Internet users to a website largely devoted to third-party advertisement and links. Respondent’s alleged bona fide use of the disputed domain name is a pretext for attracting Internet users to its advertising and revenue-generating site.
As to Respondent’s passive holding of several of the disputed domain names, given that Respondent has registered seven domain names, each confusingly similar to one or the other of Complainant’s PS5 and PLAYSTATION marks, and considering that we are unable to conceive of any legitimate use to which any of them might be put, we conclude that the fact that Respondent has not as yet deployed four of them is no barrier to our conclusion that it has registered the domain names <play-station5.us>, <shopps5.us>, <playstationfive.us> and <ps5-shop.us> in bad faith. And, because Respondent’s passive holding of these domain names prevents Complainant from reflecting its marks in corresponding domain names, we also conclude that Respondent has both registered and is now using these domain names in bad faith. See, for example, CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum February 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
Moreover, the record shows that Respondent knew of Complainant and its rights in the PS5 and PLAYSTATION marks when it registered the <buyps5.us>, <ps5buy.us>, <play-station.us>, <play-station5.us>, <shopps5.us>, <playstationfive.us> and <ps5-shop.us> domain names. This further demonstrates Respondent’s bad faith in registering them. See, for example, Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO December 18, 2000) (finding that a respondent knew of a UDRP complainant’s rights in a mark when it registered a confusingly similar domain name, and further finding that that respondent registered the domain name in bad faith).
For all of these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the usTLD Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that all of the domain names <buyps5.us>, <ps5buy.us>, <play-station.us>, <playstationfive.us>, <play-station5.us>, <ps5-shop.us> and <shopps5.us> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 5, 2021
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page