Sony Kabushiki Kaisha TA Sony Corporation v. Isabella Wempa
Claim Number: FA1205001443142
Complainant is Sony Kabushiki Kaisha TA Sony Corporation (“Complainant”), represented by Luna M. Samman of Arent Fox LLP, Washington, D.C., USA. Respondent is Isabella Wempa (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonypt.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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 electronically May 9, 2012; the National Arbitration Forum received payment May 9, 2012.
On May 10, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <sonypt.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 11, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 31, 2012, 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@sonypt.com. Also on May 11, 2012, 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 June 5, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant owns trademark rights in its SONY mark through trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 770,275 registered May 26, 1964). See Exhibit A. Complainant owns trademark registrations globally, in countries in North and South America, Australia, Europe, and Asia. Complainant uses its SONY mark to advertise and promote its electronic devices and uses its mark in a domain name (<sony.com>) to advertise its products on the Internet. The <sonypt.com> previously belonged to Complainant’s subsidiary Sony Precision Technology (“Sony PT”), which maintained the text and graphics on the resolving website and provided product information promotions. Sony PT changed its name to “Sony Manufacturing Systems” in 2004. Complainant’s SONY mark has significant exposure and goodwill associated with its products through extensive advertisement and website promotions.
Respondent registered the <sonypt.com> domain name on or about January 31, 2009, without authorization from Complainant. Respondent’s disputed domain name resolves to a website that displays some of the original content from the website created by Sony PT including the SONY mark and logo, as well as links to third-party websites sponsored by businesses that compete with Complainant. See Exhibit D. Respondent’s resolving website deceptively suggests an affiliation with Complainant by displaying press releases regarding Complainant’s products. The disputed domain name is confusingly similar to Complainant’s mark. Respondent is not commonly known by the disputed domain name and takes advantage of the goodwill established by Complainant’s company. Respondent makes a profit by receiving click-through fees for each visitor clicking on the links. Respondent had actual and constructive knowledge of Complainant’s rights in the SONY mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant established that it has rights in the mark contained in its entirety in the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Complainant has rights in the mark long before Respondent registered the disputed domain name.
Respondent has no rights to or legitimate interests in the disputed domain name containing Complainant’s protected mark.
Respondent registered and used the disputed domain name in bad faith.
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."
Paragraph 4(a) of the Policy requires Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Complainant claims to own trademark rights in its SONY mark through trademark registrations with the USPTO (e.g., Reg. No. 770,275 registered May 26, 1964) and to also have trademark registrations in countries throughout the world. Registering a mark with the USPTO demonstrates a complainant’s rights in the mark. See 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)); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO). The Panel finds that Complainant’s registrations of its SONY mark with the USPTO establish its rights in the mark under Policy ¶ 4(a)(i). The Panel further finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the location where Respondent resides and operates. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the Policy whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant alleges that the <sonypt.com> domain name is confusingly similar to its SONY mark. Complainant states that it originally created and registered the disputed domain name on behalf of its subsidiary Sony PT and that the disputed domain name uses the SONY mark in its entirety. The Panel notes that the disputed domain name also includes the generic top-level domain (“gTLD”) “.com.” The panel in Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000), held that the <kelsonmd.com> domain name is “identical or confusingly similar” to the complainant’s KELSON mark. The panel in Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003), found that the addition of a gTLD is irrelevant when analyzing whether a disputed domain name is confusingly similar under the Policy. The Panel finds that Respondent’s use of Complainant’s SONY mark in the domain name, coupled with the added letters “pt” and the gTLD “.com,” creates a confusingly similar domain name to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden of proof shifts to Respondent to show it does have such rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant alleges that Respondent does not utilize a personal or company name or title that incorporates the <sonypt.com> domain name and that Respondent does not own trademark or service mark registrations that are related to the SONY mark. Complainant further alleges that Respondent is not licensed to use the SONY mark. The Panel observes that the WHOIS information identifies “Isabella Wempa” as the registrant. The panel in Xerox Corp. v. Anti-Globalization Domains, FA 210224 (Nat. Arb. Forum Dec. 22, 2003), found that the respondent could not easily demonstrate rights or legitimate interests in the domain name considering the complainant’s long history of use of the famous XEROX mark. The panel in Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001), found that the respondent did not have rights in the disputed domain name when the respondent is not known by the complainant’s mark. Based on the fame of the SONY mark, Respondent’s identifying WHOIS information, and Respondent’s failure to rebut Complainant’s allegation that Complainant has not authorized Respondent to use the mark, the Panel here finds that Respondent is not commonly known by the <sonypt.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that Respondent’s disputed domain name offers hyperlinks to third-party websites sponsored by businesses who are direct competitors of Complainant’s business. Complainant also contends that some of the content featured on the resolving website was originally created by Complainant and includes information relating to Complainant’s products, giving Internet users the impression that Complainant endorses the web page. Complainant argues that Respondent’s use of the disputed domain name does not reflect a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds that using the <sonypt.com> domain name to offer Complainant’s consumers hyperlinks to competing businesses, as well as to display content created by Complainant, is not a bona fide offering of goods and services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See Wal-Mart Stores, Inc. v. Power of Choice Holding Co., FA 621292 (Nat. Arb. Forum Feb. 16, 2006) (finding that the respondent’s use of domain names confusingly similar to the complainant’s WAL-MART mark to divert Internet users seeking the complainant’s goods and services to websites competing with the complainant did not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not 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), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and used the disputed domain name in bad faith. Complainant urges that Respondent uses the disputed domain name to display commercial links to third-party websites sponsored by businesses that compete with Complainant’s business, as well as to post content created originally by Complainant that generates confusion among website visitors. Complainant argues that Respondent receives “click-through” referral fees caused by Internet traffic clicking on the hyperlinks. The Panel finds that Respondent’s use of the disputed domain name to attract Internet users by featuring confusingly similar content to that of Complainant, and profiting from such use, demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(iv). 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 Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant also contends that because it registered its SONY mark many years before Respondent’s registration of the <sonypt.com> domain name, Respondent had constructive knowledge of Complainant’s rights in the mark at the time it registered the disputed domain name. Complainant also argues that Respondent had prior actual knowledge of Complainant’s rights in the SONY mark when it registered and began using the disputed domain name to maintain a website displaying Complainant’s content and third-party hyperlinks. Constructive knowledge of a mark as a general rule is not sufficient to support bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel, however, finds that actual knowledge is shown by Respondent’s acquisition and use of the disputed domain name and that this actual knowledge does support a finding of bad faith registration and use under Policy ¶ 4(a)(iii). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the link between the complainant's mark and the content advertised on the respondent's website was obvious, the respondent "must have known about the Complainant's mark when it registered the subject domain name").
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN Policy¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sonypt.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: June 19, 2012.
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