Sharp Electronics Corporation v. Yosi Hasidim
Claim Number: FA0110000100493
Complainant is Sharp Electronics Corporation, Mahwah, NJ (“Complainant”) represented by Susan J. Kohlmann, of Pillsbury Winthrop LLP. Respondent is Yosi Hasidim, Petah Tikva, Isreal (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sharp-electronics.com>, registered with Network Solutions, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on October 9, 2001; the Forum received a hard copy of the Complaint on October 11, 2001.
On October 10, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain name <sharp-electronics.com> is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 5.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 11, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 31, 2001 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to email@example.com by e-mail.
Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.
On November 15, 2001, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson as Panelist.
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 for Uniform Domain Name Dispute Resolution Policy (the “Rules”) “to employ reasonably available means calculated to achieve actual notice to Respondent.” Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant asserts the following:
The <sharp-electronics.com> domain name is confusingly similar to Complainant's mark. Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has been using the SHARP trademark in commerce for almost forty years in connection with the sale of consumer electronics and household appliances. Complainant first registered the SHARP mark in 1961, and currently holds 17 active trademark registrations in the United States for SHARP in connection with the sale of a variety of consumer and business electronics products, household appliances, computers, handheld devices and other related products. Complainant also holds numerous trademark registrations worldwide.
Complainant has spent considerable sums of money promoting the SHARP mark, and as a result has become one of the foremost manufacturers and distributors of electronics worldwide. Through Complainant's continuous and extensive use of the SHARP mark it has become famous in the field of electronics products.
Complainant owns the domain name <sharpelectronics.com>, as well as <sharp-usa.com>.
Respondent registered the <sharp-electronics.com> domain name on November 28, 1999. Respondent also registered at least fifty other well-known corporate names as domain names. Respondent has not developed the disputed domain name in issue into a website and has not made any other use of the domain name since its registration.
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.”
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.
Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
(2) 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.
Complainant, through registration and use, has established that it has rights in the SHARP mark. Furthermore, the domain name registered by Respondent, <sharp-electronics.com>, is on its face confusingly similar to Complainant's mark because it merely adds a hyphen and the generic term "electronics". The addition of a hyphen to another's well known mark does not create a distinct mark. See Nintendo Of Am. Inc. v. This Domain Is For Sale, D2000-1197 (WIPO Nov. 1, 2000) (finding <game-boy.com> identical and confusingly similar the Complainant’s GAME BOY mark, even though the domain name is a combination of two descriptive words divided by a hyphen). The term "electronics" is generic and descriptive of the business Complainant engages in and therefore does not create a distinctive mark capable of defeating a claim of confusing similarity. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the Complainant combined with a generic word or term); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has established its rights to and legitimate interests in the SHARP mark contained in its entirety in the domain name registered by Respondent. In this proceeding, Respondent did not come forward with any response and therefore it is presumed that Respondent has no rights or legitimate interests in the <sharp-electronics.com> domain name. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).
Furthermore, when Respondent fails to submit a response the Panel is permitted to make all inferences in favor of Complainant. See Talk City, Inc. v. Robertson, D2000-0009, (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint”).
Complainant is commonly known by the SHARP mark. There is no evidence on the record, and Respondent has not come forward to establish any, that shows that Respondent is commonly known by the <sharp-electronics.com> domain name pursuant to Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001) (finding no rights or legitimate interests because Respondent is not commonly known by the disputed domain name or using the domain name in connection with a legitimate or fair use); see also CBS Broadcasting, Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that Respondent has failed to demonstrate any rights or legitimate interests in the <twilight-zone.net> domain name since Complainant had been using the TWILIGHT ZONE mark since 1959).
Furthermore, Respondent has failed to establish a website at the disputed domain name even though it has owned <sharp-electronics.com> for almost two years. Respondent's passive holding of the domain name demonstrates a lack of rights and legitimate interests. See Ziegenfelder Co. v. VMH Enter., Inc., D2000-0039 (WIPO Mar. 14, 2000) (finding that failure to provide a product or service or develop the site demonstrates that Respondents have not established any rights or legitimate interests in said domain name); see also Bloomberg L.P. v. Sandhu, FA 96261 (Nat. Arb. Forum Feb. 12, 2001) (finding that no rights or legitimate interest can be found when Respondent fails to use disputed domain names in any way).
Moreover, based on the fame of Complainant's SHARP mark, it would be very difficult for Respondent to show that it had rights and legitimate interests in the disputed domain name. Any use by Respondent of the <sharp-electronics.com> domain name, which on its face is confusingly similar to Complainant's famous mark and Complainant’s use of the mark, would be an opportunistic attempt to attract customer's via Complainant's famous mark. See Nike, Inc. v. B. B. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing Complainant's distinct and famous NIKE trademark).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Registration and Use in Bad Faith
The <sharp-electronics.com> domain name is confusingly similar to Complainant's mark and the Internet user who attempts to access the disputed domain name will likely believe that there is an affiliation between Respondent and Complainant. Registration of the confusingly similar <sharp-electronics.com> domain name is evidence of bad faith. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that bad faith registration and use where it is “inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the Complainant”).
Furthermore, because of the famous and distinctive nature of Complainant's SHARP mark, Respondent is thought to have been on notice of the existence of Complainant's mark at the time Respondent registered the infringing <sharp-electronics.com> domain name. See Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (evidence of bad faith includes actual or constructive knowledge of commonly known mark at the time of registration); see also Victoria's Secret et al v. Hardin, FA 96694 (Nat Arb. Forum Mar. 31, 2001) (finding that, in light of the notoriety of Complainants' famous marks, Respondent had actual or constructive knowledge of the BODY BY VICTORIA marks at the time she registered the disputed domain name and such knowledge constitutes bad faith).
In addition Respondent has engaged in a course of conduct similar to that shown in this dispute. Respondent has registered other domain names infringing upon the marks of other famous trademarks. It has been found that a pattern of such conduct is evidence of bad faith. See Armstrong Holdings, Inc. v. JAZ Assoc., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names which infringe upon others’ famous and registered trademarks); see also Encyclopaedia Britannica Inc. v. Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that the requested relief shall be hereby granted. Accordingly, it is Ordered that the domain name <sharp-electronics.com> be transferred from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 27, 2001.
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