Sony Kabushiki Kaisha a/t/a Sony
Corporation v. 0-0 Adult Video Corp.
Claim Number: FA0505000477159
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 0-0 Adult Video
Corp. (“Respondent”), 49 Eaton Ct., Manhasset, NY 11030.
REGISTRAR AND DISPUTED DOMAIN NAME
The
domain name at issue is <sonydvd.com>,
registered with Intercosmos Media Group,
Inc. d/b/a Directnic.com.
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.
Judge
Harold Kalina (Ret.) as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on May
13, 2005; the National Arbitration Forum received a hard copy of the Complaint
on May 16, 2005.
On
May 16, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by
e-mail to the National Arbitration Forum that the domain name <sonydvd.com> is registered with Intercosmos
Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant
of the name. Intercosmos Media Group,
Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos
Media Group, Inc. d/b/a Directnic.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
May 19, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
June 8, 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@sonydvd.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
June 13, 2005, pursuant to Complainant's request to have the dispute decided by
a single-member Panel, the National Arbitration Forum appointed Judge Harold
Kalina (Ret.) 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 <sonydvd.com> domain name is confusingly similar to
Complainant’s SONY mark.
2. Respondent does not have any rights or
legitimate interests in the <sonydvd.com>
domain name.
3. Respondent registered and used the <sonydvd.com> domain name in bad
faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant is a
world leader in the field of consumer electronics products. Complainant has been in business since 1946
and has experienced phenomenal growth, as it has annual sales in excess of $70
billion. Complainant is a publicly held
corporation with shares listed on thirteen stock exchanges worldwide including
New York, Tokyo and London that employs over 153,000 individuals worldwide.
Complainant
conducts its business almost exclusively under the SONY mark, a coined term
having no meaning in any language.
Complainant has registered its SONY mark with the United States Patent
and Trademark Office (“USPTO”) (Reg. No. 1,622,127 issued November 13, 1990)
and in 188 other countries.
Respondent
registered the <sonydvd.com>
domain name on August 21, 2001.
Respondent’s domain name resolves to an adult-oriented website that
offers a variety of sexually explicit DVDs and images and features links to
other commercial adult websites.
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 mark through registration of the mark with the
USPTO. See 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); see
also 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.”).
Respondent’s <sonydvd.com> domain name is
confusingly similar to Complainant’s SONY mark. The domain name incorporates the mark in its entirety and adds
the term “dvd” (an abbreviation of “digital video disk”), a term that is
associated with Complainant’s consumer electronic products. Furthermore, Respondent’s domain name adds
the generic top-level domain “.com.”
The Panel finds that such minor additions do not significantly
distinguish Respondent’s domain name from Complainant’s mark 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 Space
Imaging LLC v. Brownell, AF-0298
(eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The
addition of a top-level domain is irrelevant when establishing whether or not a
mark is identical or confusingly similar, because top-level domains are a
required element of every domain name.”).
The
Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Respondent has
failed to respond to the Complaint.
Therefore, 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 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.”).
Complainant has
asserted that Respondent lacks rights and legitimate interests in the <sonydvd.com> domain name and
Respondent, in not submitting a response, has failed to rebut Complainant’s
assertions. Thus, the Panel construes
Respondent’s failure to respond as evidence that Respondent lacks rights and
legitimate interests in the disputed 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, the respondent has failed to
invoke any circumstance which could demonstrate any rights or legitimate
interests in the domain name); see also
Am. Online, Inc. v. AOL Int’l, D2000-0654 (WIPO Aug. 21, 2000) (finding no
rights or legitimate interests where the respondent fails to respond).
Respondent is
using the <sonydvd.com> domain
name, which is confusingly similar to Complainant’s SONY mark, to operate a
website that sells adult DVDs and features links to other commercial
adult-oriented websites, from which Respondent presumably receives referral
fees. The Panel finds that such
commercial and diversionary use of the disputed domain name 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 WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum
June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users
to websites unrelated to the complainant’s mark, websites where the respondent
presumably receives a referral fee for each misdirected Internet user, was not
a bona fide offering of goods or services as contemplated by the Policy); see also Disney
Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003)
(finding that the respondent’s diversionary use of the complainant’s mark to
attract Internet users to its own website, which contained a series of
hyperlinks to unrelated websites, was neither a bona fide offering of goods or
services nor a legitimate noncommercial or fair use of the disputed domain
names); see also McClatchy Mgmt. Serv.,
Inc. v. Carrington, FA 155902 (Nat. Arb. Forum June 2, 2003) (holding that
the respondent’s use of the disputed domain
names to divert Internet users to a website that features pornographic
material, had been “consistently held” to be neither a bona fide offering of
goods or services . . . nor a legitimate noncommercial or fair use).
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 SONY mark. Thus, the
Panel finds that Respondent has not established rights or legitimate interests
in the <sonydvd.com> domain
name pursuant to Policy ¶ 4(c)(ii). See 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”); 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).
Moreover, the
fact that Respondent is using the <sonydvd.com>
domain name to operate an adult-oriented website is evidence that Respondent
lacks rights and legitimate interests in the disputed domain name pursuant to
Policy ¶ 4(a)(ii). See ABB Asea Brown Boveri Ltd. v. Quicknet, D2003-0215 (WIPO May 26, 2003) (stating that the fact that the
“use of the disputed domain name in connection with pornographic images and
links tarnishes and dilutes [the complainant’s mark]” was evidence that the
respondent had no rights or legitimate interests in the disputed domain name); see also Nat’l Football League Prop., Inc.
v. One Sex Entm’t Co., D2000-0118 (WIPO Apr. 17, 2000) (finding that the
respondent had no rights or legitimate interests in the
<chargergirls.com> and <chargergirls.net> domain names where the
respondent linked these domain names to its pornographic website).
The Panel finds
that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is
using the <sonydvd.com> domain
name to sell products and to divert Internet users to other adult-oriented
websites via a system of hyperlinks, through which Respondent presumably earns
click-through fees. Because Respondent’s
domain name is confusingly similar to Complainant’s SONY mark, consumers
accessing Respondent’s domain name may become confused as to Complainant’s
affiliation with the resulting website.
Thus, Respondent’s commercial use of the disputed domain name
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).”).
Additionally,
the fact that Respondent is using the disputed domain name to display sexually
explicit images and market adult-oriented products is evidence that Respondent
registered and used the domain name in bad faith pursuant to Policy ¶
4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb.
Forum Mar. 18, 2003) (finding that the 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 Microsoft Corp. v. Horner, D2002-0029
(WIPO Feb. 27, 2002) (holding that the respondent’s use of the complainant’s
mark to post pornographic photographs and to publicize hyperlinks to additional
pornographic websites evidenced bad faith use and registration of the domain
name).
Furthermore,
Respondent registered the <sonydvd.com>
domain name with actual or constructive knowledge of Complainant’s rights in
the SONY mark due to Complainant’s registration of the mark with the USPTO and
the immense international fame Complainant’s mark has acquired. Registration of a domain name that is
confusingly similar to 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 Digi Int’l v. DDI Sys., FA 124506
(Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith,
when Respondent reasonably should have been aware of Complainant’s trademarks,
actually or constructively.”); 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) (“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.”).
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 <sonydvd.com>
domain name be TRANSFERRED from
Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated:
June 24, 2005
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