Sony Kabushiki a/t/a Sony Corporation v.
John Zuccarini d/b/a RaveClub Berlin
Claim Number: FA0206000114714
PARTIES
Complainant
is Sony Kabushiki Kaisha a/t/a Sony
Corporation, Tokyo, JAPAN (“Complainant”) represented by Robert B.G. Horowitz, of Cooper & Dunham LLP. Respondent is John Zuccarini d/b/a RaveClub Berlin, Cherry Hill, NJ, USA
(“Respondent”).
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <sonysytle.com>,
registered with Joker.com.
PANEL
On
August 5, 2002, pursuant to Complainant’s request to have the dispute decided
by a single-member Panel, the Forum appointed James P. Buchele as
Panelist. The undersigned certifies
that he has acted independently and impartially and to the best of his
knowledge has no known conflict in serving as Panelist in this proceeding.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on June 27, 2002; the Forum received a hard copy of the
Complaint on June 1, 2002.
On
June 28, 2002, Joker.com confirmed by e-mail to the Forum that the domain name <sonysytle.com> is registered
with Joker.com and that Respondent is the current registrant of the name. Joker.com has verified that Respondent is
bound by the Joker.com 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
July 2, 2002, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of July 22,
2002 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 postmaster@sonysytle.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.
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.
RELIEF SOUGHT
Complainant
requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A.
Complainant
The
<sonysytle.com> domain name is confusingly similar to
Complainant's SONY STYLE and SONY marks.
Respondent
has no rights or legitimate interests in the disputed domain name.
Respondent
registered and used the disputed domain name in bad faith.
B.
Respondent
Respondent
failed to submit a Response in this proceeding.
FINDINGS
Complainant is a world leader in consumer
electronic products. Complainant has
used the SONY mark for over 45 years and has registered the trademark in 193
countries including Japan (Reg. No. 500036) and the United States (Reg.
No.1,258,436). Complainant has annual
sales in excess of $63 billion dollars, it employs over 189,000 people worldwide
and it spends billions of dollars in research and development to create
innovative SONY brand products.
Complainant spends millions annually to advertise and promote its SONY
trademark throughout the world. Complainant
does business on the Internet at a number of different websites, such as,
<sony.com>, and <sonystyle.com>.
Complainant has used its SONY STYLE mark as the title for a magazine
featuring electronic products and audio/video entertainment since at least as
early as May 15, 1993.
Respondent registered the disputed domain
name on February 2, 2002. Respondent is
using the disputed domain name in order to divert Internet users to
<hanky-panky-college.com>, a pornographic website. Respondent is a notorious cybersquatter
whose name is John Zuccarini.
Respondent has registered thousands of domain names that are
misspellings of well-known marks.
Respondent has been the Respondent is countless domain names disputes,
and most recently, the Federal Trade Commission of the United States brought
suit against Respondent for violation of the FTC Act. See Fed. Trade. Comm. v. Zuccarini, 01-CV-4854 U.S.
District Court, Eastern District of Pennsylvania.
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 and
draw such inferences it considers appropriate pursuant to paragraph 14(b) 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 the Respondent is identical or confusingly
similar to a trademark or service mark in which the Complainant has rights; and
(2)
the 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.
Identical and/or Confusingly Similar
Complainant has established that it has
rights in the SONY and SONY STYLE marks through international registration and
continuous and extensive use throughout the world. Respondent’s <sonysytle.com> domain name is
confusingly similar to Complainant’s SONY and SONY STYLE marks because it is
merely a misspelling of Complainant’s SONY STYLE mark. Respondent has transposed the “y” and “t” in
“style” and therefore has not created a distinct mark capable of overcoming a
claim of confusing similarity. See Pier 1
Imp., Inc. v. Success Work,
D2001-0419 (WIPO May 16, 2001) (finding that the domain name <peir1.com>
is confusingly similar to Complainant's PIER 1 mark).see also Google Inc. v. Jon G.,
FA 106084 (Nat. Arb. Forum Apr. 26, 2002) (finding <googel.com> to be
confusingly similar to Complainant’s GOOGLE mark and noting that “[t]he
transposition of two letters does not create a distinct mark capable of
overcoming a claim of confusing similarity, as the result reflects a very
probable typographical error”).
Furthermore, Respondent’s
<sonysytle.com> domain name is confusingly similar to
Complainant’s SONY mark because it incorporates Complainant’s entire mark and
merely adds the generic and misspelled word “sytle.” The addition of a generic term to a well-known mark does not
create a distinct mark capable of overcoming 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 Parfums
Christian Dior v. 1 Netpower, Inc., D2000-0023 (WIPO Mar. 3, 2000) (finding
that four domain names that added the descriptive words "fashion" or
"cosmetics" after the trademark were confusingly similar to the trademark).
The Panel finds that Policy ¶
4(a)(i) has been satisfied.
Rights or Legitimate Interests
Respondent has failed to come forward
with a Response and therefore it is presumed that Respondent has no rights or
legitimate interests in the disputed 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”).
Respondent is using the disputed domain
name that is confusingly similar to Complainant’s famous mark in order to
divert Internet user to a website that features pornographic content. The use of a domain name, such as <sonysytle.com>,
confusingly similar to Complainant’s well-known mark, in order to divert
Internet users to pornographic websites is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair
use pursuant to Policy ¶ 4(c)(iii). See Nat’l Football League Prop., Inc. v. One
Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the
Respondent had no rights or legitimate interests in the domain names
<chargergirls.com> and <chargergirls.net> where the Respondent
linked these domain names to its pornographic website); see also Brown & Bigelow, Inc. v. Rodela, FA
96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that infringing on another's
well-known mark to provide a link to a pornographic site is not a legitimate or
fair use).
Respondent is known to this Panel only as
John Zuccarini and RaveClub Berlin.
Respondent has come forward with no evidence to establish that it is
commonly known as SONY, SONY SYTLE, or <sonysytle.com>. Therefore, Respondent has no rights or
legitimate interests in the disputed domain name pursuant to Policy ¶
4(c)(ii). See Gallup Inc. v. Amish Country Store, FA
96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that Respondent does not have
rights in a domain name when Respondent is not known by the mark); see also
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).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Registration and Use in Bad Faith
Based on the fact that the disputed
domain name <sonysytle.com> is a misspelling of Complainant’s
famous mark it can be inferred that Respondent was on notice as to
Complainant’s rights in the SONY and SONY STYLE marks when it registered the
disputed domain name. Registration of a
domain name that infringes on Complainant’s mark despite notice of
Complainant’s rights is evidence of bad faith registration pursuant to Policy ¶
4(a)(iii). See Entrepreneur Media,
Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that
"[w]here an alleged infringer chooses a mark he knows to be similar to
another, one can infer an intent to confuse"); see also Samsonite Corp. v. Colony Holding, FA
94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration).
Furthermore, Respondent is taking
advantage of a common misspelling of Complainant’s mark in order to divert
Internet users to a pornographic website.
Respondent is therefore creating a likelihood of confusion as to the
source, sponsorship and affiliation of its website and tarnishing Complainant’s
mark. This type of use is considered to
be evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000)
(finding bad faith where the Respondent linked the domain name in question to
websites displaying banner advertisements and pornographic material); see
also Drs. Foster & Smith, Inc. v.
Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where
the Respondent directed Internet users seeking the Complainant’s site to its
own website for commercial gain).
Respondent is engaging in a practice that
is called typosquatting because it is taking advantage of a common misspelling
of Complainant’s mark in order to divert Internet users to Respondent’s
website. This practice of
“typosquatting” has been recognized as a bad faith use of a domain name under
the Policy. See e.g. Hewlett-Packard Co. v. Zuccarini, FA 94454 (Nat.
Arb. Forum May 30, 2000) (awarding <hewlitpackard.com> a misspelling of
HEWLETT-PACKARD to Complainant); see also Bama Rags, Inc. v. Zuccarini, FA 94380 (Nat. Arb. Forum May 8,
2000) (awarding <davemathewsband.com> and <davemattewsband.com>,
common misspellings of DAVE MATTHEWS BAND to Complainant).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
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 <sonysytle.com> be transferred from Respondent
to Complainant.
James P. Buchele, Panelist
Dated:
August 8, 2002
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