Sony Corporation v. Jack S. Alvarado
Claim Number: FA1310001526174
Complainant is Sony Corporation (“Complainant”), represented by Gina M. McCreadie of Nixon Peabody LLP, Massachusetts, USA. Respondent is Jack Alvarado (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonyusa-careers.com>, which is registered with BIZCN.COM, INC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on October 23, 2013; the National Arbitration Forum received payment on October 24, 2013.
On October 23, 2013, BIZCN.COM, INC. confirmed by e-mail to the National Arb-itration Forum that the <sonyusa-careers.com> domain name is registered with BIZCN.COM, INC. and that Respondent is the current registrant of the name. BIZCN.COM, INC. has verified that Respondent is bound by the terms of the BIZCN.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 October 24, 2013, the Forum served the Complaint and all Annexes, includ-ing a Written Notice of the Complaint, setting a deadline of November 13, 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, administrat-ive, and billing contacts, and to postmaster@sonyusa-careers.com. Also on October 24, 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 19, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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 has used the SONY mark continuously for decades in the marketing of an array of electronic goods and services.
Complainant holds registrations for the SONY trademark, on file with the United States Patent and Trademark Office ("USPTO") (including Registry No. 770,275, registered May 26, 1964).
Respondent registered the <sonyusa-careers.com> domain name on July 12, 2013.
The domain name is confusingly similar to the SONY mark.
Respondent has not been commonly known as <sonyusa-careers.com>.
Respondent is in no way connected with, or an affiliate of, Complainant.
Respondent has no license or other authorization to use the SONY mark in a domain name.
Respondent has no rights to or legitimate interests in the domain name.
Respondent uses the domain name to make fraudulent offers of employment by Complainant.
This is not a bona fide use of this domain name.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent is likely phishing for the personal and financial information of the victims of its fraudulent use of the domain name.
Respondent knew of Complainant and its rights in the SONY mark when register-ing and using this domain name.
Respondent both registered and uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the SONY trademark adequate for purposes of Policy ¶ 4(a)(i) by reason of registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a UDRP complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering them with the USPTO).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <sonyusa-careers.com> domain name is con-fusingly similar to Complainant’s SONY trademark. The domain name includes the mark in its entirety, with the addition of the geographic term “usa,” a hyphen, the term “careers,” and the generic Top-Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that the addition of hyphens and top-level domains to the mark of another in creating a domain name is irrelevant for purposes of analysis under Policy ¶ 4(a)(i)).
As to appending the geographic term “usa” to Complainant’s mark in forming the domain name, see AXA China Region Ltd. v. KANNET Ltd., D2000-1377 (WIPO Nov. 29, 2000) (finding that the <axachinaregion.com> domain name “is con-fusingly similar to the Complainant's trade mark ‘AXA’” because “common geo-graphic qualifiers or generic nouns can rarely be relied upon to differentiate the mark if the other elements of the domain name comprise a mark or marks in which another party has rights”).
And, as to the addition of the term “careers,” which is descriptive of an aspect of Complainant’s business, see Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to the mark of another in forming a domain name does not distinguish the domain name under Policy ¶ 4(a)(i)).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known as <sonyusa-careers.com>, that Respondent is in no way connected with, or an affiliate of, Complainant, and that Respondent has no license or other authorization to use the SONY mark in a do-main name. Moreover, the domain name’s WHOIS information identifies the reg-istrant only as “Jack S. Alvarado,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <sonyusa-careers.com> domain name so as to have demonstrated that it has rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See, for example, St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding that a UDRP respondent had no rights to or legitimate interests in a disputed domain name under Policy ¶ 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses the <sonyusa-careers.com> domain name to make fraud-ulent offers of employment purportedly on behalf of Complainant, and that Re-spondent is likely phishing for the personal and financial information of the vic-tims of its fraudulent use of the domain name. This use of the domain name is neither a bona fide offer of goods or services use under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
The Panel therefore finds that complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Our examination of the question of bad faith in the registration and use of the contested <sonyusa-careers.com> domain name is not limited to consideration of the provisions of Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). We may therefore look to the totality of the circumstances presented in this proceeding to determine whether Respondent has registered and uses the domain name in bad faith.
In this connection, we take note of Complainant’s undenied assertion that Re-spondent is likely phishing for the personal and financial information of the vic-tims of its fraudulent use of the domain name. This behavior is evidence of bad faith registration and use of the domain name. See Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that a UDRP respondent demonstrated bad faith in the registration and use of a domain name where it attempted to acquire the personal and financial information of Internet users via a domain name that was confusingly similar to the mark of another).
As well, we are persuaded by the evidence that Respondent knew of Complain-ant and its rights in the SONY trademark when registering this domain name. This, too, is evidence of bad faith registration of the domain name. See, for example, Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith registration of a domain name under Policy ¶ 4(a)(iii) where a respondent was "well-aware of” a UDRP complainant's YAHOO! mark at the time of domain name registration).
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <sonyusa-careers.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 2, 2013
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