Sony Corporation v. Mustafa Dolek
Claim Number: FA1209001461873
Complainant is Sony Corporation (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Mustafa Dolek (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <sonykamerasistemi.com> and <sonynvm.com>, registered with Reg2c.com, Inc.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 10, 2012; the National Arbitration Forum received payment on September 10, 2012. The Complaint was submitted in both English and Turkish.
On September 11, 2012, Reg2c.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sonykamerasistemi.com> and <sonynvm.com> domain names are registered with Reg2c.com, Inc. and that Respondent is the current registrant of the names. Reg2c.com, Inc. has verified that Respondent is bound by the Reg2c.com, Inc. 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 September 13, 2012, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of October 3, 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@sonykamerasistemi.com, postmaster@sonynvm.com. Also on September 13, 2012, the Turkish language 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 October 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), as Panelist.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
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 issues 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant:
a) Complainant has rights in the SONY mark, used in connection with audio, video, and information technology products, including security devices.
i. Complainant is the owner of the United States Patent and Trademark Office (“USPTO”) registrations for the SONY mark (e.g., Reg. No. 770,275 registered May 26, 1964).
ii. Complainant also owns a trademark registration with the Turkish Patent Institute (“TPI”) for the SONY mark (Reg. No. 2008/65153 registered May 11, 2009).
b) The <sonykamerasistemi.com> and <sonynvm.com> domain names are confusingly similar to Complainant’s SONY mark.
i. Respondent adds to each domain name a descriptive term and the generic top-level domain (“gTLD”) “.com.”
c) Respondent has neither rights nor legitimate interests in the <sonykamerasistemi.com> and <sonynvm.com> domain names.
i. Respondent is not commonly known by the disputed domain names.
ii. The <sonykamerasistemi.com> and <sonynvm.com> domain names resolve to websites which offer both Respondent’s and Complainant’s products.
d) Respondent registered and is using the <sonykamerasistemi.com> and <sonynvm.com> domain names in bad faith.
i. Respondent has developed a bad faith pattern of registering infringing domain names.
ii. The <sonykamerasistemi.com> and <sonynvm.com> domain names are disruptive to Complainant’s business.
iii. Respondent intentionally attracted, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with Complainant and the SONY mark.
iv. Respondent had knowledge of Complainant’s rights in the SONY make when it registered the <sonykamerasistemi.com> and <sonynvm.com> domain names.
B. Respondent
Respondent failed to submit a Response.
For the reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 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.
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.”).
Complainant asserts that it has rights in the SONY mark. Complainant notes that it uses its mark in connection with audio, video, and information technology products, including security devices. Complainant provides the Panel with evidence that Complainant is the owner of USPTO registrations for the SONY mark (e.g., Reg. No. 770,275 registered May 26, 1964). Further, Complainant has also supplied the Panel with evidence that Complainant is the owner of a TPI registration for the SONY mark (Reg. No. 2008/65153 registered May 11, 2009). Panels have found that registration of a mark with the national trademark authorities, such as the USPTO and TPI, is sufficient to satisfy Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through the complainant’s national trademark registrations). The Panel finds that Complainant has rights in the SONY mark pursuant to Policy ¶ 4(a)(i).
According to Complainant, the <sonykamerasistemi.com> and <sonynvm.com> domain names are confusingly similar to the SONY mark. Complainant contends that Respondent merely adds the gTLD “.com” and a descriptive term to each of the disputed domain names. Complainant asserts that the term “kamerasistemi” is the Turkish translation for “camera system” and “nmv” is the Turkish abbreviation for “video monitoring.” Panels have found that the addition of a descriptive term does not distinguish a disputed domain name from the mark within it. See 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). Panels have also held that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See 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 Respondent’s <sonykamerasistemi.com> and <sonynvm.com> domain names are confusingly similar to the SONY mark pursuant to Policy ¶ 4(a)(i).
Complainant has proven this element.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have 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 asserts that Respondent is not commonly known by the disputed domain names. Complainant argues that Respondent has not been authorized to use the SONY mark. The Panel notes that the WHOIS records for the <sonykamerasistemi.com> and <sonynvm.com> domain names list “Mustafa Dolek” as the domain name registrant. Panels have held that the information on the record, including the WHOIS information, is illustrative of whether a Respondent is commonly known by a disputed domain name. See 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 Respondent is not commonly known by the <sonykamerasistemi.com> and <sonynvm.com> domain names pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent’s use of the <sonykamerasistemi.com> and <sonynvm.com> domain names does not provide Respondent with rights or legitimate interests in the domain names. Complainant contends that the <sonykamerasistemi.com> and <sonynvm.com> domain names resolve to websites where Respondent offers Complainant’s and Respondent’s products in the security and technology industry for sale. The Panel finds that Respondent’s use of the <sonykamerasistemi.com> and <sonynvm.com> domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use).
Complainant has proven this element.
Complainant contends that Respondent registered and is using the <sonykamerasistemi.com> and <sonynvm.com> domain names in bad faith. Complainant asserts that Respondent has developed a bad faith pattern of registering infringing domain names. Complainant notes that Respondent registered two infringing domain names in this dispute and another two domain names incorporating the SONY mark as alleged in another, current UDRP dispute. Complainant also notes that Respondent has registered many other domain names which incorporate the trademarks of third parties. Panels have found that the registration of multiple domain names incorporating the complainant’s mark is evidence that the respondent is attempting to prevent the complainant from being able to reflect its mark in a domain name thus creating a pattern of bad faith. See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)). The Panel finds that, under Policy ¶ 4(b)(ii), Respondent registered and is using the <sonykamerasistemi.com> and <sonynvm.com> domain names in a pattern of bad faith under Policy ¶ 4(b)(ii).
Complainant next alleges that the <sonykamerasistemi.com> and <sonynvm.com> domain names are disruptive to Complainant’s business. Complainant notes that the disputed domain names resolve to websites where Respondent offers Complainant’s products as well as Respondent’s competing products. Panels have found that operating a competing business and selling the complainant’s products are uses which are disruptive to the complainant’s business. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). The Panel finds that Respondent’s <sonykamerasistemi.com> and <sonynvm.com> domain names are disruptive and thus were registered and are used in bad faith under Policy ¶ 4(b)(iii).
Complainant asserts that Respondent intentionally attracted, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with Complainant and the SONY mark. Complainant states that the disputed domain names resolve to websites where Respondent offers both its own and Complainant’s products to Internet users. Complainant notes that Respondent chose two confusingly similar domain names to operate and offers Internet users Complainant’s products in an attempt to increase the presumed association between Complainant and the <sonykamerasistemi.com> and <sonynvm.com> domain names. The Panel finds that Respondent intentionally attracted, for commercial gain, Internet users to the disputed domain names by creating a likelihood of confusion with Complainant and the SONY mark. Therefore, the Panel holds that Respondent registered and is using the <sonykamerasistemi.com> and <sonynvm.com> domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market); see also Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods).
According to Complainant, Respondent had knowledge of Complainant’s rights in the SONY make when it registered the <sonykamerasistemi.com> and <sonynvm.com> domain names. Complainant argues that the SONY mark has acquired fame around the world and that Respondent is a competitor of Complainant, thus demonstrating knowledge of Complainant. While panels have found that constructive knowledge is not enough for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant’s rights in the SONY mark, and finds that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <sonykamerasistemi.com> and <sonynvm.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon Karl V. Fink (Ret.), Panelist
Dated: October 11, 2012
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