Sony Kabushiki Kaisha a/t/a Sony
Corporation v. 4198Domain 4198Administrator
Claim
Number: FA0504000451912
Complainant is Sony Kabushiki Kaisha a/t/a Sony Corporation (“Complainant”), is represented by Robert B.G. Horowitz, of Cooper and Dunham LLP,
1185 Avenue of the Americas, New York, NY, 10036. Respondent is 4198Domain
4198Administrator (“Respondent”),
TV 4198, XZ, 80346 US.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <sonystyle-kw.com>, registered with Enom,
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 April
5, 2005; the National Arbitration Forum received a hard copy of the Complaint
on April 7, 2005.
On
April 06, 2005, Enom, Inc. confirmed by e-mail to the National Arbitration
Forum that the domain name <sonystyle-kw.com> is registered with Enom,
Inc. and that Respondent is the current registrant of the name. Enom, Inc. has
verified that Respondent is bound by the Enom, 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
April 12, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 2, 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@sonystyle-kw.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
May 6, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sonystyle-kw.com>
domain name is confusingly similar to Complainant’s SONY STYLE mark.
2. Respondent does not have any rights or
legitimate interests in the <sonystyle-kw.com> domain name.
3. Respondent registered and used the <sonystyle-kw.com>
domain name 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 SONY STYLE mark in connection
with its retail shop services for general merchandise and electronic retailing
services via a global computer network.
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 SONY
STYLE (Reg. No. 2,762,137 issued September 9, 2003) marks with the United
States Patent and Trademark Office (“USPTO”).
Respondent
registered the <sonystyle-kw.com> domain name on April 6, 2005.
Respondent’s domain name resolves to a website featuring pornographic content.
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 STYLE mark through registration of the mark 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 <sonystyle-kw.com>
domain name is confusingly similar to the Complainant’s SONY STYLE
mark. Respondent’s <sonystyle-kw.com> domain name incorporates
Complainant’s SONY STYLE mark in its entirety and merely adds a hyphen
and the generic letters “kw” which mean keyword. 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 Complainant combined with a generic word or term); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum
Nov. 18, 2000) (finding that, by misspelling words and adding letters to words,
a Respondent does not create a distinct mark but nevertheless renders the
domain name confusingly similar to Complainant’s marks).
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 name, 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 <sonystyle-kw.com>
domain name 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 name to operate a website featuring
pornographic content. Such use of a confusingly similar domain name is not 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 Dipaolo v. Genero, FA 203168 (Nat.
Arb. Forum Dec. 6, 2003) (“Diversion to pornography
is not a bona fide offering of goods or services or a legitimate
noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and
(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 record indicates that Respondent is either commonly known by the
disputed domain name or authorized to register domain names featuring
Complainant’s famous mark. Thus, the Panel finds that Respondent lacks rights
and legitimate interests in the <sonystyle-kw.com> domain name
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
whether or not Policy ¶ 4(c)(ii) applies); 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.
Because
Respondent’s <sonystyle-kw.com> domain name is confusingly similar
to Complainant’s SONY STYLE mark, consumers accessing Respondent’s domain name
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
name 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).
Respondent registered the <sonystyle-kw.com>
domain name with actual
or constructive knowledge of Complainant’s rights in the SONY STYLE mark due to
Complainant’s registration of the mark with
the USPTO and the immense international fame that the mark has acquired.
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”).
Furthermore, Respondent’s
use of the misleading domain name to redirect Internet users to an
adult-oriented website tarnishes Complainant’s mark and is evidence of bad
faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc. and Peter Carrington,
FA 144647 (Nat. Arb. Forum March 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith); see also Six Continents Hotels, Inc. v. Nowak,
D2003-0022 (WIPO March 4, 2003) (stating that “whatever the motivation of
Respondent, the diversion of the domain name to a pornographic site is itself
certainly consistent with the finding that the Domain Name was registered and
is being used in bad faith”).
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 <sonystyle-kw.com> domain name be TRANSFERRED
from Respondent to Complainant.
Sandra Franklin, Panelist
Dated:
May 18, 2005
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