Sony Kabushiki Kaisha a/t/a Sony
Corporation v. Intercardnetwork
Claim
Number: FA0503000435612
Complainant is Sony Kabushiki Kaisha a/t/a Sony Corporation (“Complainant”), represented by Robert B.G. Horowitz, of Cooper and Dunham LLP,
1185 Avenue of the Americas, New York, NY 10036. Respondent is Intercardnetwork
(“Respondent”), 5679 Autumn Chase Circle, Sanford, FL 32773.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <sonyspecialist.com> and <sonyvaiorepair.com>,
registered with Wild West Domains, Inc.
The
undersigned certifies that he or she has acted independently and impartially
and to the best of his or her knowledge has no known conflict in serving as
Panelist in this proceeding.
Sandra
Franklin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on March
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on March 7, 2005.
On
March 7, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <sonyspecialist.com> and <sonyvaiorepair.com>
are registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the names. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains,
Inc. 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
March 15, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
April 4, 2005 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@sonyspecialist.com and
postmaster@sonyvaiorepair.com by e-mail.
Having
received no Response from Respondent, using the same contact details and
methods as were used for the Commencement Notification, the National
Arbitration Forum transmitted to the parties a Notification of Respondent
Default.
On
April 7, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Sandra Franklin
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." 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sonyspecialist.com>
and <sonyvaiorepair.com> domain names are confusingly similar to
Complainant’s SONY and VAIO marks.
2. Respondent does not have any rights or
legitimate interests in the <sonyspecialist.com> and <sonyvaiorepair.com>
domain names.
3. Respondent registered and used the <sonyspecialist.com>
and <sonyvaiorepair.com> domain names in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant,
Sony Kabushiki Kaisha, is a world leader in the field of consumer
electronics. Complainant has spent
billions of dollars in research and development in creating various consumer
electronics products, including computers, tape players/recorders, video games,
stereos, video camcorders, digital cameras and televisions. Complainant uses the SONY mark in connection
with all of their electronic products, and specifically uses the VAIO mark in
connection with its computers.
Complainant and
its products have gained international renown as a leader in the electronics
market. Complainant has been in business
for nearly 49 years and has annual sales in excess of $70 billion dollars. Complainant is a publicly held corporation
that employs over 153,000 people worldwide.
Shares of Complainant’s stock are listed on 13 stock exchanges worldwide
including New York, Tokyo and London.
Complainant has
registered the SONY (Reg. No. 1,622,127 issued November 13, 1990) and VAIO
(Reg. No. 2,091,993 issued August 26. 1997) marks with the United States Patent
and Trademark Office (“USPTO”).
Respondent
registered the <sonyspecialist.com> domain name on April 24, 2003
and the <sonyvaoirepair.com> domain name on April 8, 2004. Respondent’s domain names resolve to a
website for an Internet based IT service, which offers computer repair services
and system installation and configuration services.
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."
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.
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 has
established rights in the SONY and VAIO marks through registration of the marks
with the USPTO. See Men’s Wearhouse, Inc. v. Wick,
FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law,
registered marks hold a presumption that they are inherently distinctive and
have acquired secondary meaning.”); see also 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. The respondent has the burden of refuting
this assumption).
Respondent’s <sonyspecialist.com>
and <sonyvaiorepair.com> domain names are confusingly similar to
Complainant’s SONY and VAIO marks.
Respondent’s <sonyspecialist.com> domain name incorporates
Complainant’s SONY mark in its entirety and merely adds the generic term
“specialist.” Respondent’s <sonyvaiorepair.com>
domain name combines Complainant’s SONY and VAIO marks and adds the generic
term “repair.” Such changes are not
enough to overcome a finding of confusing similarity pursuant to Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd.
v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in
dispute contains the identical mark of the complainant combined with a generic
word or term); see also Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that
“[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark SONY”
and thus Policy ¶ 4(a)(i) is satisfied); see also Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000)
(finding confusing similarity where the respondent combined the complainant’s
POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name).
Furthermore, the
addition of the generic top-level domain “.com” is insufficient to negate the
confusing similarity between Respondent’s domain names and Complainant’s marks
pursuant to Policy ¶ 4(a)(i). See Busy
Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“the
addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without
legal significance since use of a gTLD is required of domain name
registrants”); see also Rollerblade,
Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top
level of the domain name such as “.net” or “.com” does not affect the domain
name for the purpose of determining whether it is identical or confusingly
similar).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Thus, the Panel may accept all reasonable allegations and assertions set
forth by Complainant as true and accurate.
See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21,
2000) (“Failure of a respondent to come forward to [contest complainant’s
allegations] is tantamount to admitting the truth of complainant’s assertion in
this regard”); see also Vertical Solutions Mgmt., Inc. v. webnet-Mktg., 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).
Complainant has
asserted that Respondent has no rights or legitimate interests in the disputed domain
names, and Respondent, in not submitting a response, has failed to rebut this
assertion. Thus, the Panel may
interpret Respondent’s failure to respond as evidence that Respondent lacks
rights and legitimate interests in the <sonyspecialist.com> and <sonyvaiorepair.com>
domain names pursuant to Policy ¶ 4(a)(ii). See Parfums Christian Dior v. QTR Corp.,
D2000-0023 (WIPO Mar. 9, 2000) (finding that, by not submitting a Response,
Respondent has failed to invoke any circumstance which could demonstrate any
rights or legitimate interests in the domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure
to respond not only results in its failure to meet its burden, but also will be
viewed as evidence itself that Respondent lacks rights and legitimate interests
in the disputed domain name.”).
Respondent is
using the confusingly similar domain names to operate a website that offers
computer repair services. Such use is
not a use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Bank of
Am. Corp. v. NW. Free Cmty. Access, FA
180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also G.D.
Searle & Co. v. Pelham,
FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that, because the
respondent is using the infringing domain name to sell prescription drugs it
can be inferred that the respondent is opportunistically using the
complainant’s mark in order to attract Internet users to its website).
Furthermore,
nothing in the records indicates that Respondent is either commonly known by
the disputed domain names or authorized to register domain names featuring
Complainant’s famous marks. Thus, the
Panel finds that Respondent lacks rights and legitimate interests in the <sonyspecialist.com>
and <sonyvaiorepair.com> domain names pursuant to Policy ¶
4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in the respondent’s WHOIS
information implies that the respondent is ‘commonly known by’ the disputed
domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Compagnie de Saint Gobain v. Com-Union
Corp., D2000-0020 (WIPO
Mar. 14, 2000) (finding no rights or legitimate interests where the respondent
was not commonly known by the mark and never applied for a license or
permission from the complainant to use the trademarked name).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Since
Respondent’s <sonyspecialist.com> and <sonyvaiorepair.com>
domain names are confusingly similar to Complainant’s SONY and VAIO marks,
consumers accessing Respondent’s domain names may become confused as to
Complainant’s affiliation with the resulting website. Thus, the Panel finds that Respondent’s commercial use of the
disputed domain names constitutes bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Qwest
Communications Int’l Inc. v. Ling Shun Shing, FA
187431 (Nat. Arb. Forum Oct. 6, 2003) (“Respondent's attempt to commercially benefit from the misleading
domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv).”); see
also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21,
2000) (finding bad faith where the respondent directed Internet users seeking
the complainant’s site to its own website for commercial gain).
Furthermore, Respondent registered the <sonyspecialist.com>
and <sonyvaiorepair.com> domain names with actual or constructive
knowledge of Complainant’s rights in the SONY and VAIO marks due to
Complainant’s registration of the marks with the USPTO and the immense
international fame that the marks have acquired. Furthermore, the Panel infers that Respondent registered the
disputed domain names with actual knowledge of Complainant’s rights in the
marks due to the connection between Respondent’s website (offering computer
repair services) and Complainant’s business (manufacturing and selling
computers and other electronic goods).
Registration of a domain name featuring another’s mark despite actual or
constructive knowledge of the mark holder’s rights is evidence of bad faith
registration and use pursuant to Policy ¶
4(a)(iii). See Samsonite
Corp. v. Colony Holding,
FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith
includes actual or constructive knowledge of a commonly known mark at the time
of registration); see also Exxon
Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that the
respondent had actual and constructive knowledge of the complainant’s EXXON
mark given the worldwide prominence of the mark); see also Orange Glo Int’l
v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002) (“[T]he complainant’s
OXICLEAN mark is listed on the Principal Register of the USPTO, a status that
confers constructive notice on those seeking to register or use the mark or any
confusingly similar variation thereof.”); see also Pfizer, Inc. v. Suger,
D2002-0187 (WIPO Apr. 24, 2002) (finding that, because the link between the
complainant’s mark and the content advertised on the respondent’s website was
obvious, the respondent “must have known about the complainant’s mark when it
registered the subject domain name”).
The Panel finds
that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <sonyspecialist.com> and <sonyvaiorepair.com>
domain names be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
April 21, 2005
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