Sony Kabushiki a/t/a Sony Corporation v. John Zuccarini d/b/a RaveClub Berlin
Claim Number: FA0206000114714
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.
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.
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 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.
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.
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.
Respondent failed to submit a Response in this proceeding.
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.
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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