Sony Kabushiki Kaisha a/t/a Sony
Corporation v. Jairo Acevedo
Claim
Number: FA0504000463035
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 Jairo
Acevedo (“Respondent”), 5679 Autumn Chose Circle, Sanford, FL, 32773.
REGISTRAR
AND DISPUTED DOMAIN NAMES
The
domain names at issue are <sonyspecialists.com> and <sonyvaioservice.com>,
registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
The
undersigned certifies that she has acted independently and impartially and that
to the best of her knowledge she has no known conflict in serving as Panelist
in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically April
14, 2005; the National Arbitration Forum received a hard copy of the Complaint April
18, 2005.
On
April 14, 2005, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by
e-mail to the National Arbitration Forum that the domain names <sonyspecialists.com>
and <sonyvaioservice.com>
are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that
Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide verified that
Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide registration
agreement and thereby has 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 21, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
May 11, 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@sonyspecialists.com and
postmaster@sonyvaioservice.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 17, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn
Marks Johnson as Panelist.
Having
reviewed the communications records, the Administrative Panel (the
"Panel") finds that the National Arbitration Forum 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. The domain names that Respondent
registered <sonyspecialists.com> and <sonyvaioservice.com>
are confusingly similar to Complainant’s SONY and VAIO marks.
2. Respondent has no rights to or legitimate
interests in the <sonyspecialists.com> and <sonyvaioservice.com>
domain names.
3. Respondent registered and used the <sonyspecialists.com>
and <sonyvaioservice.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
products. Complainant is also involved
in a wide range of businesses, including entertainment, finance (including consumer
credit card financing and lending), life insurance, chemicals and many
others. Complainant has been in
business for nearly fifty years and has annual sales in excess of $70 billion
dollars. Complainant employs over
153,000 people worldwide. It is a
publicly held corporation with shares listed on thirteen stock exchanges
worldwide.
Complainant
registered many marks with the United States Patent and Trademark Office
(“USPTO”), including SONY (Reg. No. 1,622,127 issued November 13, 1990) for
general consumer electronics and VAIO (Reg. No. 2,188,191 issued September 8,
1998) for computers.
Respondent
registered the <sonyvaioservice.com> domain name December 5, 2004,
and the <sonyspecialists.com> domain name December 7, 2004. These disputed domain names resolve to a
website for Respondent’s computer laptop repair service.
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
will draw such inferences as the Panel considers appropriate pursuant to
paragraph 14(b) of the Rules.
Paragraph 4(a)
of the Policy requires Complainant to 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
established using extrinsic proof in this proceeding that it has 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 Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001)
(finding that successful trademark registration with the United States Patent
and Trademark Office creates a presumption of rights in a mark).
The domain names that Respondent registered, <sonyspecialists.com>
and <sonyvaioservice.com>, are confusingly similar to
Complainant’s SONY and VAIO marks.
Respondent’s <sonyspecialists.com> domain name incorporates
Complainant’s SONY mark in its entirety and adds the generic term
“specialists,” while Respondent’s <sonyvaioservice.com> domain
name incorporates both of Complainant’s marks entirely and adds the generic
term “service.” Additionally, both
domain names add the generic top-level domain “.com.” Such minor additions are not enough to overcome a finding of
confusing similarity between Respondent’s domain names and Complainant’s marks
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 Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) (“[T]he 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.”).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Complainant
established its rights to and legitimate interest in the mark contained in its
entirety in the two disputed domain names and asserts that Respondent has no
such rights or interests. Respondent
failed to respond to the Complaint.
Therefore, the Panel accepts all reasonable allegations set forth by
Complainant as true and accurate. See
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); 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.”).
Further, where
Complainant asserts that Respondent has no rights or legitimate interests in
the disputed domain names, Respondent must come forward to rebut this
allegation. This Respondent has not
done so. The Panel construes Respondent’s failure to respond as evidence that
Respondent lacks rights and legitimate interests in the <sonyspecialists.com>
and <sonyvaioservice.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 for Respondent’s
laptop repair service. The Panel finds
that such use is not a use in connection with a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) and it is not 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 eBay Inc. v. Sunho Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating
that the “use of complainant’s entire mark in infringing domain names makes it
difficult to infer a legitimate use”).
Furthermore,
nothing in the record indicates that Respondent is either commonly known by the
disputed domain names or authorized to register domain names featuring
Complainant’s SONY and VAIO marks.
Therefore, the Panel finds that Respondent has not established rights or
legitimate interests in the <sonyspecialists.com> and <sonyvaioservice.com>
domain names pursuant to Policy ¶ 4(c)(ii).
See 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); see also RMO, Inc. v. Burbridge, FA 96949
(Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a
showing that one has been commonly known by the domain name prior to
registration of the domain name to prevail”).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Because
Respondent’s <sonyspecialists.com> and <sonyvaioservice.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. Respondent’s commercial use of the disputed domain names
constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website); see also 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).”).
Respondent registered the <sonyspecialists.com> and <sonyvaioservice.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 as well as the immense international renown Complainant’s marks have
acquired. Moreover, the Panel infers
that Respondent registered the domain names with actual knowledge of Complainant’s
rights in the marks due to the obvious connection between Respondent’s computer
repair website and Complainant’s products.
Registration of domain names that are confusingly similar to another’s
marks 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 <sonyspecialists.com> and <sonyvaioservice.com>
domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 31, 2005
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