Sony Corporation v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1310001522726
Complainant is Sony Corporation (“Complainant”), represented by Gina M. McCreadie of Nixon Peabody LLP, Massachusetts, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonystore.com>, registered with INTERNET.BS CORP.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 3, 2013; the National Arbitration Forum received payment on October 7, 2013.
On October 8, 2013, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <sonystore.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 October 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 29, 2013 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@sonystore.com. Also on October 9, 2013, 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 November 1, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, Sony Corporation, is one of the world’s leading developers of electronic products and services for consumer and professional markets, motion pictures, music, and financial services.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the SONY mark (e.g., Reg. No. 770,275, registered May 26, 1964).
The disputed domain name <sonystore.com> is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s SONY mark and merely includes the generic term “store” along with the generic top-level domain (“gTLD”) “.com.”
Respondent should be considered as having no rights or legitimate interests in the <sonystore.com> domain name. There is no evidence to support that Respondent has been commonly known by the <sonystore.com> domain name. Respondent is using the <sonystore.com> domain name to redirect Internet users to the <ezelectronics.com> website, which features links to third-party websites, some of which resolve to pages offering SONY products and others of which resolve to pages offering products that compete with Complainant’s business.
The <sonystore.com> domain name should be considered as having been registered and used in bad faith by Respondent. Respondent is using the <sonystore.com> domain name to disrupt Complainant’s business. Respondent is using the <sonystore.com> domain name to attract and divert Internet users who are interested in purchasing well-known SONY products, as well as competing products, to presumably earn profit through click-through fees.
Respondent was aware of Complainant and the worldwide fame of the SONY mark and the products and services offered under this mark when it used the <sonystore.com> domain name.
Respondent has not submitted a Response to this case.
Respondent registered the <sonystore.com> domain name on February 14, 2001.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for SONY.
Respondent is not affiliated with Complainant and had not been authorized to use the SONY mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in SONY.
Respondent’s <sonystore.com> website redirect Internet users to the <ezelectronics.com> website, which features links to third-party websites, some of which resolve to pages offering SONY products and others of which resolve to pages offering products that compete with Complainant’s business..
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the SONY mark with the USPTO sufficiently demonstrates its rights in the mark under Policy ¶ 4(a)(i). The Policy does not require that Complainant register its mark in the jurisdiction in which Respondent resides, so long as it can show its rights in the mark in some jurisdiction. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”);see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
Respondent’s domain name consists of Complainant’s SONY mark, the generic term “store,” along the top level domain name “.com.” Respondent’s inclusion of a generic term does not distinguish the domain name from Complainant’s trademark and thus the Panel concludes that Respondent’s <sonystore.com> domain name is confusingly similar to Complainant’s SONY mark pursuant to Policy ¶4(i). See NETGEAR, Inc. v.Ultimate Storage Ltd., FA 1201001422587 (Nat. Arb. Forum Jan. 31, 2012) (finding confusing similarity where the domain name <netgearstore.com> merely added "store" and the top level domain name ".com" to complainant's NETGEAR mark); see also Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “Fundacion Private Whois / Domain Administrator” as the at-issue domain name’s registrant. The record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus finds that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). 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); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent uses the <sonystore.com> domain name to redirect Internet users to the <ezelectronics.com> website, which features links to third-party websites, some of which resolve to pages offering SONY products and others of which resolve to pages offering products that compete with Complainant. Respondent’s domain name leads to a competing hyperlink website featuring links titled “Electronic Components,” “Sony Digital Cameras,” “Electronic Parts,” and more. Respondent likely receives pay-per-click fees when the user clicks on the links for the third-party websites. Respondent’s use of the at-issue domain name to provide competing or unrelated links is 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 domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy).
In light of the uncontroverted evidence, Complainant satisfies its burden and conclusively demonstrates Respondent’s lack of rights, and lack of interests, in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned, Respondent uses the confusingly similar domain name to redirect users to a website that displays several links to competing products, such as “Sony Digital Cameras,” “Professional HD Video Cameras,” “Electronic Components,” and others. Respondent’s use of the <sonystore.com> domain name to promote competing links disrupts Complainant’s business and demonstrates bad faith under Policy ¶ 4(b)(iii). See Compania Mexicana de Aviacion, S.A. de C.V. v. Bigfoot Ventures LLC, FA 1195961 (Nat. Arb. Forum July 14, 2008)(finding that “[r]espondent’s competing use of the disputed domain name is additional evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”)
Furthermore, Respondent uses the <sonystore.com> domain name to attract and divert Internet users who are interested in purchasing SONY products, as well as competing products, so that it might benefit from associated click-through fees. Respondent’s use of Complainant’s mark in this manner demonstrates Respondent’s bad faith under Policy ¶4(b)(iv). See 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).”); see also T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Finally, Respondent had actual knowledge of Complainant’s SONY mark prior to registering the <sonyplay.com> domain name. Respondent’s knowledge of Complainant’s SONY mark is inferred from the notoriety of the SONY mark and the fact that the at-issue domain name incorporates the term “store” suggesting Complainant’s retail related business. Respondent’s prior knowledge of Complainant’s rights in the SONY mark additionally shows that Respondent registered the at-issue domain name in bad faith under Policy ¶ 4(a)(iii).See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name"); 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sonystore.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 5, 2013
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