Sony Corporation v. JAMES .K.J / SONY TOURS & TRAVELS
Claim Number: FA1408001572975
Complainant is Sony Corporation (“Complainant”), Japan. Respondent is JAMES .K.J / SONY TOURS & TRAVELS (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonytravels.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2014; the National Arbitration Forum received payment on August 7, 2014.
On August 2, 2014, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <sonytravels.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 August 7, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 2014 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@sonytravels.com. Also on August 7, 2014, 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.
A timely Response was received and determined to be complete on August 14, 2014.
A stay order was imposed on August 20, 2014. This stay order was lifted on September 16, 2014 and the proceedings continued thenceforth.
On September 16, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant has rights in the SONY mark under Policy ¶ 4(a)(i). Complainant has used the SONY mark in connection with the design, manufacture, and selling of electronics, games, and entertainment products and services since its inception in 1955. Complainant owns the SONY mark through various registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 785,967 registered march 2, 1965) and India (e.g., Reg. No. 196,589 registered June 20, 1960). Respondent’s <sonytravels.com> domain name is confusingly similar to Complainant’s SONY mark. Respondent merely adds the generic term “travels” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the <sonytravels.com> domain name. Respondent is not commonly known by the disputed domain name, and Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent registered and is using the <sonytravels.com> domain name in bad faith, and intentionally uses the SONY mark without consent from Complainant to attract Internet users to Respondent’s website for commercial gain.
Respondent had actual notice of Complainant’s SONY mark at the time respondent registered the disputed domain name.
B. Respondent
Respondent is only in Kerala, whereas Complainant is renowned Internationally as an electronics company. Respondent is not interested in having a dispute, no longer wishes to use the disputed domain name, and essentially concedes that the domain name be transferred to Complainant.
C. Additional Submissions were submitted by both parties, but were considered surplusage.
(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.
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.
Complainant asserts that it has rights in the SONY mark under Policy ¶ 4(a)(i). Complainant argues that it has used the SONY mark in connection with the design, manufacture, and selling of electronics, games, and entertainment products and services since its inception in 1955. Complainant states that it owns the SONY mark through various registrations with the USPTO (e.g., Reg. No. 0785,967 registered march 2, 1965) and India (e.g., Reg. No. 196,589 registered June 20, 1960).
Complainant also claims that Respondent’s <sonytravels.com> domain name is confusingly similar to Complainant’s SONY mark under Policy ¶ 4(a)(i). Complainant explains that Respondent merely adds the generic term “travels” and the gTLD “.com.” Panels have frequently found that adding a generic term and a gTLD does not differentiate a disputed domain name from a given mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Metro-Goldwyn-Mayer Studios Inc. v. Antigua Domains, FA 1073020 (Nat. Arb. Forum Oct. 17, 2007). The Panel finds that the domain name is confusingly similar to Complainant’s.
The Panel notes that 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 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).
Complainant asserts that Respondent has no rights or legitimate interests in the <sonytravels.com> domain name under Policy ¶ 4(a)(i). Complainant explains that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for Respondent’s disputed domain name lists “James K.J.” as registrant. Complainant further alleges that Respondent has provided false WHOIS contact information, in that there is no company known by “Sony Tours & Travels.”
The Panel finds that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name, and that Respondent’s disputed domain name resolves to a website displaying a political message and threats, which, on the surface, seem to be noncommercial, and are in no way affiliated with Complainant.
Complainant alleges that Respondent registered and is using the <sonytravels.com> domain name in bad faith under Policy ¶ 4(b)(iv), and the Panel so finds. Complainant established that Respondent intentionally uses the SONY mark without consent from Complainant to attract Internet users to Respondent’s website for commercial gain.
Complainant makes the point that Respondent has likely listed false or non-functioning information in the WHOIS record for the disputed domain name. Complainant explains that Respondent’s WHOIS record indicates that the disputed domain name is owned by “James K.J.” at a company called “Sony Tours and Travels.” Complainant contends that no such person or entity is listed in the content of the disputed domain name website and there is no evidence or record of such a business.
Complainant alleges that Respondent had actual notice of Complainant’s SONY mark at the time respondent registered the disputed domain name.
The 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 <sonytravels.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: September 24, 2013
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