Sony Kabushiki Kaisha a/t/a Sony Corporation v. Versata Software, Inc. c/o Versata Hostmaster
Claim Number: FA0905001264110
Complainant is Sony
Kabushiki Kaisha a/t/a Sony
Corporation (“Complainant”), represented by Anthony V. Lupo, of Arent Fox LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <sonycreativesoftwear.com>, registered with Red Register, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 20, 2009; the National Arbitration Forum received a hard copy of the Complaint on May 21, 2009.
On May 25, 2009, Red Register, Inc. confirmed by e-mail to the National Arbitration Forum that the <sonycreativesoftwear.com> domain name is registered with Red Register, Inc. and that Respondent is the current registrant of the name. Red Register, Inc. has verified that Respondent is bound by the Red Register, Inc. 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 May 27, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 16, 2009 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@sonycreativesoftwear.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 19, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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 National Arbitration 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 makes the following assertions:
1. Respondent’s <sonycreativesoftwear.com> domain name is confusingly similar to Complainant’s SONY mark.
2. Respondent does not have any rights or legitimate interests in the <sonycreativesoftwear.com> domain name.
3. Respondent registered and used the <sonycreativesoftwear.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant is a manufacturer of consumer and professional electronics products. Complainant has conducted its business under the SONY mark since 1955 and promotes its business under the SONY mark worldwide. Complainant owns registrations for the SONY mark all over the world, including a registration with the United States Patent and Trademark Office (“USPTO”) for the SONY mark (i.e., Reg. No. 1,622,127 issued November 13, 1990). Complainant also owns and operates the <sonycreativesoftware.com> domain name in connection with its line of software products. Complainant has used this domain name since 2003.
Respondent registered the <sonycreativesoftwear.com> domain name on July 31, 2007. Respondent is using the disputed domain name to operate a website featuring adult oriented images and content for Respondent’s commercial advantage. Respondent also uses <sonycreativesoftwear.com> in connection with mouse-trapping.
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 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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also 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.”).
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:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(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.
The Panel finds Complainant has established rights under Policy 4(a)(i) in the SONY mark through its registration of the mark with the USPTO. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
Respondent’s <sonycreativesoftwear.com> domain name is confusingly similar to Complainant’s SONY mark because Respondent’s name incorporates the SONY mark, adds the generic phrase “creative softwear,” which although misspelled describes Complainant’s software business, and adds the generic top-level domain “.com.” The Panel finds the addition of the generic phrase does not distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). The Panel further finds that a top-level domain is irrelevant in a Policy ¶ 4(a)(i) analysis and thus finds the disputed domain name is identical to Complainant’s mark. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds non-distinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have any
rights or legitimate interests in the <sonycreativesoftwear.com>
domain name. Once Complainant makes a prima facie case in support of its
allegations, the burden shifts to Respondent to prove that it does have rights
or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a
sufficient prima facie case. Due to Respondent’s failure to respond to the
Complaint, the Panel may assume that Respondent does not have rights or
legitimate interests in the disputed domain name. However, the Panel will examine the record to
determine whether Respondent has rights or legitimate interests in the disputed
domain name under Policy ¶ 4(c). See Talk City, Inc. v. Robertson,
D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a
substantive answer in a timely fashion, the Panel accepts as true all of the
allegations of the complaint.”); see also
Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Respondent is using the <sonycreativesoftwear.com> domain name to operate a website featuring adult-oriented images and content for Respondent’s commercial advantage. Respondent further uses the <sonycreativesoftwear.com> domain name in connection with pop-up advertisements presumably for the commercial advantage of Respondent. Complainant asserts that such use resembles mouse-trapping. Respondent’s use of a domain name that is confusingly similar to the SONY mark to redirect Internet users for these purposes is not a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant’s mark and does not evidence noncommercial or fair use of the domain name by a respondent”); see also De La Rue Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent was not using the <delaru.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use because the respondent was using the domain name to “subject unsuspecting users to a barrage of unsolicited [pop-up] advertisements,” presumably for commercial benefit).
Respondent has offered no evidence,
and there is no evidence in the record, suggesting that Respondent is commonly
known by the <sonycreativesoftwear.com> domain name.
Complainant asserts that Respondent is not authorized to use the SONY
mark. The WHOIS information identifies
Respondent as “Versata Software, Inc.”
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the <sonycreativesoftwear.com> domain name
pursuant to Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B.
v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the
respondent failed to establish rights and legitimate interests in the
<emitmortgage.com> domain name as the respondent was not authorized to
register domain names featuring the complainant’s mark and failed to submit
evidence of that it is commonly known by the disputed domain name); see also Coppertown Drive-Thru
Sys., LLC v. Snowden, FA 715089 (Nat.
Arb. Forum July 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <sonycreativesoftwear.com> domain name, which is confusingly similar to Complainant’s SONY mark, to redirect Internet users to Respondent’s website featuring adult-oriented images and content for Respondent’s commercial advantage. Therefore, Respondent’s use of the disputed domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).
The Respondent also uses the disputed domain name in connection with mouse-trapping. Presumably, Respondent profits from these pop-up advertisements. Therefore, the Panel finds Respondent’s use of the <sonycreativesoftwear.com> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Worldwinner.com, Inc. v. Cupcake Patrol, FA 175289 (Nat. Arb. Forum Sept. 22, 2003) (equating the practice of “mouse-trapping” to bad faith registration and use because mouse-trapping serves no useful purpose and is inherently deceptive); see also De La Rue Holdings PLC v. Video Images Prods. L.L.C., FA 196054 (Nat. Arb. Forum Oct. 27, 2003) (“In the past, Panels have determined that mouse-trapping by itself is a prima facie showing of bad faith use and registration.”).
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 relief shall be GRANTED.
Accordingly, it is Ordered that the <sonycreativesoftwear.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 30, 2009
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum