Sony Kabushiki Kaisha a/t/a Sony
Corporation v. Mitch Anderson
Claim Number: FA0309000198809
PARTIES
Complainant
is Sony Kabushiki Kaisha a/t/a Sony Corporation, (“Complainant”) represented by Robert B.G. Horowitz, of Cooper & Dunham LLP, 1185 Avenue of the Americas, New York, NY
10036. Respondent is Mitch Anderson, (“Respondent”) 2995
Whitestar Avenue, Anaheim, CA, USA, 92806.
REGISTRAR AND DISPUTED DOMAIN NAMES
The
domain names at issue are <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com>, <sonymemory.com> and <sonyvaiobattery.com>, registered with Register.Com.
PANEL
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.
Judge
Richard B. Wickersham, Ret., as Panelist.
PROCEDURAL HISTORY
Complainant
submitted a Complaint to the National Arbitration Forum (the “Forum”)
electronically on September 29, 2003; the Forum received a hard copy of the Complaint
on October 2, 2003.
On
September 30, 2003, Register.Com confirmed by e-mail to the Forum that the
domain names <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com>, <sonymemory.com> and <sonyvaiobattery.com> are registered with Register.Com and
that Respondent is the current registrant of the names. Register.Com has
verified that Respondent is bound by the Register.Com registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the
“Policy”).
On
October 8, 2003, a Notification of Complaint and Commencement of Administrative
Proceeding (the “Commencement Notification”), setting a deadline of October 28,
2003 by which Respondent could file a Response to the Complaint, was
transmitted to Respondent via e-mail, post and fax, to all entities and persons
listed on Respondent’s registration as technical, administrative and billing
contacts, and to postmaster@sonyacadapter.com, postmaster@sonycamcordersbattery.com,
postmaster@sonylaptopbattery.com, postmaster@sonymemory.com and postmaster@sonyvaiobattery.com
by e-mail.
A
timely Response was received and determined to be complete on October 27, 2003.
An
Additional Submission was received on October 31, 2003 and it was timely. The Additional Submission was considered by
Panel along with the other materials already received in accordance with The
Forum’s Supplemental Rule 7.
On November 6, 2003, pursuant to Complainant’s request
to have the dispute decided by a single-member
Panel, the Forum appointed Judge Richard B.
Wickersham, Ret., as Panelist.
RELIEF SOUGHT
Complainant
requests that the domain names be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Essentially,
this proceeding is against five SONY-formative domain names (with one including
Sony’s registered VAIO trademark) that are used for the offer and sale of
non-SONY goods that directly compete with SONY goods.
(1)
Respondent’s
domain names, <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> are identical or confusingly similar to
Complainant’s trademark SONY and are likely to cause confusion, and <sonyvaiobattery.com> is
identical or confusingly similar to Complainant’s trademarks SONY and VAIO and
is likely to cause confusion;
(2)
Respondent
has no rights or legitimate interests in the domain names; and
(3)
The domain
names were registered in bad faith.
FACTUAL BACKGROUND
Sony is a world leader in, among
other areas, the field of consumer electronics products, including computers and video
camcorders. Sony is also involved in a
wide range of businesses
including entertainment, finance, life insurance, chemicals and many others, all in connection with the SONY
trademark.
Sony
conducts its businesses almost exclusively with the name and trademark SONY, a
coined term having no meaning in any language, and has registered the SONY
trademark in 193 countries including Japan and the United States.
Sony
has been in business for over 46 years and has annual sales in excess of $63
billion dollars. It employs over
189,000 people worldwide. Sony is
publicly held with shares listed on 16 stock exchanges worldwide including New
York, Tokyo and London.
Sony
has spent billions of dollars in research and development to create innovative
SONY-branded products which are household items, such as VAIO computers,
HANDYCAM video camcorders, CYBERSHOT digital cameras, PLAYSTATION video game
units and WALKMAN tape players/recorders.
These products all have state of the art performance, innovative design
and flawless reliability.
Sony
spends millions annually to advertise and promote its SONY trademark throughout
the world, in all advertising media including print media, broadcast and cable
television programming, radio broadcasting, and online advertising and
promotion. During 2002, Sony spent in
excess of $100 million advertising products and services with the SONY trademark
worldwide.
Sony
does business on the internet at a number of different sites incorporating the
SONY name and mark, such as at <sony.com> and <sonystyle.com>. Its <sony.com>
website began in 1996 and the <sonystyle.com>
website began in 1998. SONY and SONY
VAIO goods are also offered on the Internet through Sony’s authorized Internet
dealers.
By
reason of such significant advertising, promotion and sales, the SONY trademark
is one of the most famous marks worldwide and possesses a goodwill which is of
inestimable value.
B.
Respondent
The
Complaint references ICANN Rule 3(b)(vi).
We do not contest that the domain names <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> meet grounds (1) (2) of Rule 3(b)(vi);
namely, that the domain names are confusingly similar to Complainant’s
trademark and that Complainant has a legitimate interest in the trademarked
term “Sony”.
However,
Complainant has not proved that we are violating the third stipulation that we
are using the domain names in “bad faith.”
Complainant argues that we registered the domain names “for the purpose
of intentionally attempting to attract for commercial gain Internet users to
the “Laptops for Less” website by creating a likelihood of confusion with
Sony’s name and marks as to source, sponsorship, affiliation or endorsement of
Respondent’s website or of a product offered there.” The content of the Complaint does not substantiate this charge.
The
domain names accurately reflect the goods available for sale at those
websites. The design and language used
on our domain names clearly indicate that we are a separate company that is
unaffiliated with the Sony corporation.
We do not use distinctive Sony marks, nor do we describe our
non-Sony-branded products as coming from the Sony Corporation. The fact that we were aware of the Sony mark
prior to registering the domain names is irrelevant to the question of “bad
faith.”
As
with any “after-market” for parts, consumers and third parties have a
legitimate interest in using trademarked terms as descriptive adjectives that
identify compatible products.
Complainant has no right to limit others from producing items that are
compatible with the products it manufacturers, and it is incorrect for
Complainant to argue that a company is using “bad faith” when it attempts to
offer those products for sale in a clear and accurate manner.
We
believe there is a critical distinction that must be made between domain names
that purport to represent a corporation, person, or other entity versus those
that describe a marketplace. Sony
created a marketplace for, among other things, batteries for Sony-branded
camcorders. We are within our rights to
signal to the public that we serve that market. The very formation of multi-word-part domain names <sonycamcordersbattery.com>
and <sonylaptopbattery.com> suggests a marketplace of goods rather
than a sponsored or affiliated site of the Sony Corporation.
The
fact that we have engaged in a “pattern of registering domain names that
incorporate well-known third party trademarks” is not relevant to the bad-faith
argument. (WIPO D2000-0818). We offer many products for sale that are
compatible with a variety of brands. We
do not register domain names for items that do not describe what we sell, nor
do we cybersquat. We are engaged in a
legitimate enterprise of offering branded and non-branded parts to consumers
who own branded computers, cameras, and other electronic equipment. It is perfectly reasonable for us to use our
domain names to describe what we sell.
Based
upon the foregoing facts and reasons, the domain names <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> should be left under our control.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain Name
Dispute Resolution Policy (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;
(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.
Findings
The
Panel considered the Additional Submission but it did not influence Panel’s
decision.
Complainant contends that it has
established rights in the SONY and VAIO marks through registration of the marks
with the appropriate governmental agencies worldwide, as well as through
widespread and continuous use of the marks in commerce. See
Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002)
(finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which
creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this
assumption). The Panel agrees.
Complainant alleges that the <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com> domain names are all
confusingly similar to its SONY mark. See
Oki Data Ams., Inc. v. ASD Inc., D2001-0903 (WIPO Nov. 6, 2001) (“the fact
that a domain name wholly incorporates a Complainant’s registered mark is
sufficient to establish identity or confusing similarity for purposes of the
Policy despite the addition of other words to such marks”); see also Space Imaging LLC v. Brownwell,
AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where
Respondent’s domain name combines Complainant’s mark with a generic term that
has an obvious relationship to Complainant’s business). The Panel concurs.
Complainant argues that the <sonyvaiobattery.com> domain name is
confusingly similar to Complainant’s SONY and VAIO marks. See
Nintendo of Am Inc v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding
confusing similarity where respondent combined Complainant’s POKEMON and
PIKACHU marks to form the <pokemonpikachu.com> domain name); see also Brown & Bigelow, Inc. v.
Rodela, FA96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the
<hoylecasino.net> domain name is confusingly similar to Complainant’s
HOYLE mark, and that the addition of “casino,” a generic word describing the
type of business in which Complainant is engaged, does not take the disputed
domain name out of the realm of confusing similarity). The Panel agrees.
Accordingly, the Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant maintains that Respondent is
a direct competitor of Complainant, as it sells products not associated with
Complainant at the disputed domain names, and that this use of Complainant’s
marks is not a bona fide offering of goods or services. See
Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no
rights or legitimate interests in the <pitneybowe.com> domain name where
Respondent purports to resell original Pitney Bowes’ equipment on its website,
as well as goods of other competitors of Complainant); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7,
2002) (finding no “bona fide” offering of goods or services where Respondent
used Complainant’s mark without authorization to attract Internet users to its
website, which offered both Complainant’s products and those of Complainant’s
competitors). The Panel concurs.
Complainant argues that Respondent is not
licensed to use Complainant’s SONY and VAIO marks in a domain name, additional
evidence that Respondent lacks rights or legitimate interests in the disputed
domain names. See Allen-Edmonds Shoe Corp. v. Takin’ Care of Bus., D2002-0799
(WIPO Oct. 10, 2002) (“without a specific agreement between the parties, the reseller
does not have the right to use the licensor’s trademark as a domain name”); see also Toyota Jidosha Kabushiki Kaisha v.
Double Time Jazz, FA 113316 (Nat. Arb. Forum July 10, 2002) (“Respondent
cannot use Complainant’s trademark in a domain name when Respondent, even
though selling Complainant’s goods, has no permission to use the trademark as
the domain name”). The Panel agrees
Accordingly, the Panel finds that
Respondent does not have rights or legitimate interests in the disputed domain names under Policy
¶ 4(a)(ii)..
Complainant urges that Respondent is
using the disputed domain names to create a likelihood of confusion with
Complainant’s famous SONY and VAIO marks for Respondent’s own commercial gain,
evidence that the disputed domain names were registered and used in bad faith
pursuant to Policy ¶ 4(b)(iv). See Hewlett-Packard Co. v. OfficeOnWeb Ltd.,
FA 151537 (Nat. Arb. Forum May 21,
2003) (holding that Respondent’s unauthorized use of the LASERJET mark to
operate as a reseller of Complainant’s products constituted bad faith use and
registration pursuant to Policy ¶ 4(b)(iv); see
also Procter & Gamble Co. v. Hlad, FA 126656 (Nat. Arb. Forum Nov. 20,
2002) (find that the disputed domain name was registered and used in bad faith
where Respondent, a distributor of Complainant’s products who was not a
licensee of Complainant, used Complainant’s mark in its domain name, suggesting
a broader relationship with Complainant and fostering the inference that
Respondent was the creator of Complainant’s products rather than a mere
distributor). The Panel concurs.
Complainant alleges that Respondent has
engaged in a pattern of registering domain names that incorporate well-known
third party trademarks, evidence that the disputed domain names were registered
and used in bad faith pursuant to Policy ¶ 4(b)(ii). See Philip Morris Inc. v.
r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that Respondent’s previous
registration of domain names such as <pillsbury.net>,
<schlitz.net>, <biltmore.net> and <honeywell.net> and
subsequent registration of the disputed <Marlboro.com> domain name
evidenced bad faith registration and use pursuant to Policy ¶ 4(b)(ii); see also Hachette Filipacchi Presse v.
Fortune Int’l Dev., FA 96685 (Nat. Arb. Forum Apr. 6, 2001) (finding that
where Respondent has registered over 50 domain names that correspond to
different well-known trademarks, evidence of a pattern exists). The Panel agrees.
The Panel thus finds that Respondent
registered and used the disputed domain names in bad faith, and that Policy ¶ 4(a)(iii) is satisfied.
DECISION
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com>, <sonymemory.com> and <sonyvaiobattery.com> domain names be TRANSFERRED from
Respondent to Complainant.
________________________________________________
Judge Richard B. Wickersham, Ret.,
Panelist
Dated: November 20, 2003
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