national arbitration forum

 

DECISION

 

Sony Kabushiki Kaisha TA Sony Corporation v. Stanley Pace

Claim Number: FA1111001415253

 

PARTIES

Complainant is Sony Kabushiki Kaisha TA Sony Corporation (“Complainant”), represented by Ross Q. Panko of Arent Fox LLP, Washington D.C., USA.  Respondent is Stanley Pace (“Respondent”), Texas, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <sonyentertainment.com>, registered with Fabulous.com Pty Ltd.

 

PANEL

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.

 

Honorable Karl V. Fink (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on November 11, 2011; the National Arbitration Forum received payment on November 11, 2011.

 

On November 14, 2011, Fabulous.com Pty Ltd. confirmed by e-mail to the National Arbitration Forum that the <sonyentertainment.com> domain name is registered with Fabulous.com Pty Ltd. and that Respondent is the current registrant of the name.  Fabulous.com Pty Ltd. has verified that Respondent is bound by the Fabulous.com Pty Ltd. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On November 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sonyentertainment.com.  Also on November 17, 2011, 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On December 14, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <sonyentertainment.com> domain name is confusingly similar to Complainant’s SONY mark.

 

2.    Respondent does not have any rights or legitimate interests in the <sonyentertainment.com> domain name.

 

3.    Respondent registered and used the <sonyentertainment.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Sony Kabushki Kaisha TA Sony Corporation, advertises, promotes, and sells electronic devices, computers, computer game software, computer game hardware, and related products under its SONY mark.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its SONY mark (e.g., Reg. No. 1,207,979 registered September 14, 1982).

 

Respondent, Stanley Pace, registered the <sonyentertainment.com> domain name on November 26, 2005.  The disputed domain name resolves to a website hosting hyperlinks that resolve to Complainant’s website and the third-party websites of Complainant’s competitors. 

 

In previous UDRP cases, Respondent was ordered by the panels to transfer domain names to the respective complainants.  See Baylor Univ. v. Pace, FA 1370357 (Nat. Arb. Forum Mar. 8, 2011); see also Assurant, Inc. v. Pace, FA 1396626 (Nat. Arb. Forum Aug. 9, 2011); see also Tenaris Connections BV v. Pace, D2011-1448 (WIPO Oct. 14, 2011); see also Am. Auto. Ass’n, Inc. v. Pace, D2011-0969 (WIPO Aug. 21, 2011); see also Weil Cadillac-Hummer, Inc. v. Pace, D2010-1711 (WIPO Dec. 7, 2010); Kayak Software Corp. v. Pace, D2010-1178 (WIPO Sept. 16, 2010); see also Viacom Int’l Inc. v. Pace, D2010-1149 (WIPO Sept. 21, 2010); see also Starkey Labs., Inc. v. Pace, D2010-0774 (WIPO July 7, 2010); see also Flow Cos., LLC v. Pace, D2010-0651 (WIPO June 10, 2010); see also Novartis AG v. Pace, D2009-1738 (WIPO Feb. 28, 2010).

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Policy ¶ 4(a)(i) requires a complainant to demonstrate that a disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. 

 

Policy ¶ 4(a)(i) first requires the Panel to determine if Complainant owns rights in its SONY mark.  Complainant submits its trademark registrations with the USPTO for its SONY mark (e.g., Reg. No. 1,207,979 registered September 14, 1982).  The Panel concludes that Complainant’s USPTO trademark registrations are sufficient to establish rights in its SONY mark pursuant to Policy ¶ 4(a)(i).  See Enter. Rent-A-Car Co. v. David Mizer Enters., Inc., FA 622122 (Nat. Arb. Forum Apr. 14, 2006) (finding that the complainant’s registration of the ENTERPRISE, ENTERPRISE RENT-A-CAR, and ENTERPRISE CAR SALES marks with the USPTO satisfied the requirement of demonstrating rights in the mark under consideration pursuant to Policy ¶ 4(a)(i)); see also Disney Enters., Inc. v. Kudrna, FA 686103 (Nat. Arb. Forum June 2, 2006) (finding that the complainant’s registration of the DISNEY trademark with the USPTO prior to the respondent’s registration of the disputed domain name is sufficient to prove that the complainant has rights in the mark pursuant to Policy ¶ 4(a)(i)).

 

The second element of Policy ¶ 4(a)(i) instructs the Panel to analyze the identicality or confusing similarity of the <sonyentertainment.com> domain name to Complainant’s SONY mark.  In the disputed domain name, Complainant claims that Respondent simply attaches the descriptive term “entertainment” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  Based on these minor alterations, the Panel finds that Respondent’s <sonyentertainment.com> domain name is confusingly similar to Complainant’s SONY mark under Policy ¶ 4(a)(i).  See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).

 

The Panel determines Complainant satisfies the requirements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Policy ¶ 4(a)(ii) requires a complainant to demonstrate that a respondent lacks rights and legitimate interests in respect of the disputed domain name.  In order to demonstrate rights and legitimate interests, Policy ¶ 4(c) provides three elements that a respondent may satisfy: (i) a respondent is making a bona fide offering of goods or services; (ii) a respondent is commonly known by the disputed domain name; or (iii) a respondent is making a legitimate noncommercial or fair use of the disputed domain name.

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <sonyentertainment.com> domain name.  The burden shifts to Respondent to prove it does have rights or legitimate interests when the Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in a disputed domain name.  See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).  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).

 

The Panel first analyzes whether or not Respondent is commonly known by the <sonyentertainment.com> domain name under Policy ¶ 4(c)(ii).  Complainant asserts that Respondent does not own any trademark or service mark registrations relating to the disputed domain name.  Complainant claims that Respondent is not licensed or authorized to use Complainant’s SONY mark.  The WHOIS information lists “Stanley Pace” as the registrant of the <sonyentertainment.com> domain name.  Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name for the purposes of 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 Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

The Panel next determines if Respondent is making a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the <sonyentertainment.com> domain name under Policy ¶ 4(c)(iii).  The disputed domain name resolves to a website hosting hyperlinks that resolve to Complainant’s website and the third-party websites of Complainant’s competitors.  Respondent likely commercially benefits from the hyperlinks by receiving click-through fees.  After analyzing the Complaint, Complainant’s exhibit, and the rest of the evidence in the record, the Panel holds that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <sonyentertainment.com> domain name.  See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).

 

Complainant asserts that Respondent’s resolving website contains a disclaimer that the disputed domain name is not associated, endorsed, or recommended by Complainant.  The Panel determines that this disclaimer is insufficient to prevent the Panel from concluding that Respondent lacks rights and legitimate interests in the <sonyentertainment.com> domain name pursuant to Policy ¶ 4(a)(ii).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also Las Vegas Sands, Inc. v. Red Group, D2001-1057 (WIPO Dec. 6, 2001) (justifying the conclusion that the respondent wishes to trade on the fame of the complainant’s trademark, regardless of the presence of a small-print disclaimer that is unavailable to Internet users until they have already entered the gambling site, because the disclaimer fails to remedy initial confusion).

 

The Panel determines that Complainant satisfies Policy ¶ 4(a)(ii) because the Panel concludes that Respondent failed to meet any of the Policy ¶ 4(c) elements.

 

Registration and Use in Bad Faith

 

Policy ¶ 4(a)(iii) requires a complainant to demonstrate that a respondent registered and uses a disputed domain name in bad faith.  Policy ¶ 4(b) establishes four different avenues for a complainant to demonstrate bad faith registration and use: (i) the respondent registered the domain name primarily for the purpose of selling the disputed domain name for more than the respondent’s out-of-pocket costs; (ii) the respondent registered and uses the disputed domain name as a part of a pattern to prevent the complainant from reflecting its mark in a corresponding domain name; (iii) the respondent registered and uses the disputed domain name for the purpose of disrupting the complainant’s business; or (iv) the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s website by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

 

Complainant presents no evidence or allegations under Policy ¶ 4(b)(i) so the Panel elects to ignore analyzing Respondent’s registration and use under Policy ¶ 4(b)(i).

 

Policy ¶ 4(b)(ii) allows the Panel to find bad faith registration and use of the <sonyentertainment.com> domain name if the Panel concludes Respondent registered and uses the disputed domain name as a part of a pattern.  In previous UDRP cases, Respondent was ordered by the panels to transfer domain names to the respective complainants.  See Baylor Univ. v. Pace, FA 1370357 (Nat. Arb. Forum Mar. 8, 2011); see also Assurant, Inc. v. Pace, FA 1396626 (Nat. Arb. Forum Aug. 9, 2011); see also Tenaris Connections BV v. Pace, D2011-1448 (WIPO Oct. 14, 2011); see also Am. Auto. Ass’n, Inc. v. Pace, D2011-0969 (WIPO Aug. 21, 2011); see also Weil Cadillac-Hummer, Inc. v. Pace, D2010-1711 (WIPO Dec. 7, 2010); Kayak Software Corp. v. Pace, D2010-1178 (WIPO Sept. 16, 2010); see also Viacom Int’l Inc. v. Pace, D2010-1149 (WIPO Sept. 21, 2010); see also Starkey Labs., Inc. v. Pace, D2010-0774 (WIPO July 7, 2010); see also Flow Cos., LLC v. Pace, D2010-0651 (WIPO June 10, 2010); see also Novartis AG v. Pace, D2009-1738 (WIPO Feb. 28, 2010).  The Panel determines that these UDRP decisions evidence that Respondent registered and uses the <sonyentertainment.com> domain name in bad faith pursuant to Policy ¶ 4(b)(ii).  See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005) (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another UDRP proceeding against the respondent to find that “this is part of a pattern of such registrations”).

 

Policy ¶ 4(b)(iii) instructs the Panel to find bad faith registration and use if Respondent registered and uses the <sonyentertainment.com> domain name to disrupt Complainant’s business.  Respondent’s disputed domain name resolves to a website that hosts competing hyperlinks.  The Panel infers that Respondent’s registration and use of the disputed domain name disrupts Complainant’s business by redirecting potential customers to Complainant’s competitors.  Based on this inference, the Panel finds Respondent registered and uses the <sonyentertainment.com> domain name in bad faith under Policy ¶ 4(b)(iii).  See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).

 

Policy ¶ 4(b)(iv) allows the Panel to find bad faith registration and use if Respondent is attempting to commercially gain by creating confusion as to Complainant’s affiliation with the disputed domain name and resolving website.  Respondent’s <sonyentertainment.com> domain name resolves to a website hosting competing hyperlinks and a hyperlink to Complainant’s official website.  Respondent presumably profits from these hyperlinks by receiving click-through fees.  The Panel determines that Respondent’s registration and use of the confusingly similar <sonyentertainment.com> domain name for such a purpose is evidence of Policy ¶ 4(b)(iv) bad faith registration and use.  See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees.   Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).

 

Complainant notes that Respondent’s resolving website contains a disclaimer that states that the content is not meant to “imply . . . association, endorsement, or recommendation.”  The Panel determines that this disclaimer does not prevent the Panel finding that Respondent registered and uses the <sonyentertainment.com> domain name in bad faith under Policy ¶ 4(a)(iii).  See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a)(iii)”); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith.  First, the disclaimer may be ignored or misunderstood by Internet users.  Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions.  Such confusion is a basis for finding a violation of Complainant’s rights.”).

 

The Panel concludes that Complainant has sufficiently demonstrated Respondent’s bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <sonyentertainment.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  December 15, 2011

 

 

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