Sony Corporation v. Patricia Baker
Claim Number: FA1402001542270
Complainant is Sony Corporation (“Complainant”), represented by Mark Sommers of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is Patricia Baker (“Respondent”), Washington, D.C., USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonyswag.com>, registered with Register.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.
Mr. Maninder Singh as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 4, 2014; the National Arbitration Forum received payment on February 4, 2014.
On February 5, 2014, Register.com confirmed by e-mail to the National Arbitration Forum that the <sonyswag.com> domain name is registered with Register.com and that Respondent is the current registrant of the name. Register.com has verified that Respondent is bound by the Register.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On February 5, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sonyswag.com. Also on February 5, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and found to be complete on February 19, 2014.
On February 26, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Mr. Maninder Singh 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant in its Complaint has made the following contentions : -
· Complainant—Sony Corporation—claims that it is a global leader of audio, video, communications and information technology products for the consumer and professional markets. Its motion picture, television, computer entertainment, music, and online businesses also make it one of the most respected entertainment companies of the world. It employs over a hundred thousand people worldwide.
· Complainant claims that it offers various products and services under the mark SONY, such as, cameras and computers for consumers and professionals; digital imaging, including security systems, professional-use cameras, and medical equipment; semiconductors; gaming systems; mobile communication services; entertainment / media products and services such as movie, music, and game content; and financial services.
· Complainant further claims that it owns and uses the trademark and service mark SONY since 1955. It claims that the mark SONY enjoys unquestionable fame as a result of its long, extensive use, advertising, promotion, and favorable public acceptance and recognition thereof worldwide. The mark SONY is one of the most recognized brands of the world and ranks amongst world’s top 100 brands. To substantiate its claim that the mark SONY ranked among one of the “Best Global Brands” and valued at more than $8.4B by Interbrand in 2013, Complainant has attached as Exhibit 3, a printout of Interbrand’s Report - “2013 Ranking of the Top 100 Brands”. It claims to sell billions of dollars’ worth products and services under the mark SONY every year and even in 2013 alone, Complainant claims to have recorded a consolidated annual sales of approximately $72 billion.
· Complainant contends that it owns numerous registrations for the SONY mark in the United States and worldwide, including the following U.S. federal representative registrations:
a) Registration No. 770,275 in International Class 9 for the mark SONY in standard characters, since May 26, 1964 (first used March 30, 1961).
b) Registration No. 1,258,436 in International Class 9 since November 22, 1983 (first used August 1963).
c) Registration No. 1,622,127 in International Class 9 since November 13, 1990 (first used December 15, 1969).
· Complainant claims that it has extensively and widely advertised and promoted its products and services under the mark SONY spending millions each year, for more than a half century. Complainant further contends that it extensively promotes its products and services under the SONY mark on the Internet.
· Complainant contends that it maintains numerous websites located at SONY-formative domain names, such as, <sony.com>, <sony.co.jp>, <sony.co.uk>, <sony.eu>, and <sonypictures.com>. In this regard, Complainant has attached as screen-shots (Exhibit-4) of its websites, <sony.com>, <sony.co.jp>, and <sony.co.uk>.
· Complainant contends that its trademark rights in the mark SONY based on its trademark registrations and its common-law rights, long predate Respondent’s registration of the disputed domain name.
· Complainant contends that the Respondent has registered the disputed domain name on November 10, 2013, i.e. well after Complainant’s use and registration of the mark SONY.
· Complainant alleges that the Respondent has registered the disputed domain name <sonyswag.com> primarily to sell the same to Complainant for profits.
· Complainant contends that the Respondent contacted Complainant on December 21, 2013, informing Complainant that Respondent has registered the disputed domain name, and offered the disputed domain name to Sony against a payment of $10,000.00 (ten thousand dollars). Complainant further contends that the Respondent also informed Complainant that if it does not wish to purchase the disputed domain name, then the Respondent would offer the same for sale to any third party, including the competitors of Complainant. Complainant alleges that the Respondent has admitted in her December 21 e-mail (Exhibit 6) that she had been warned that registration of the disputed domain name could potentially present an issue of infringement, yet it (Respondent) had proceeded to register the disputed domain name regardless of the same.
Contentions relating to Disputed Domain Name being Confusingly
Similar to Complainant’s SONY Mark
· Complainant contends that the disputed domain name is confusingly similar to its famous and registered SONY mark because it comprises its mark SONY in its entirety, the generic term “swag”, and the non-distinctive gTLD “.com.” Complainant contends that UDRP panels have consistently held that a domain name comprising a mark and a generic term is confusingly similar to the mark at issue, and that hyphens and gTLDs are inconsequential when conducting confusing similarity analysis. In this regard, Complainant has relied upon the following decisions of this Forum in –
(i) Sony Corp. v. Fundacion Private Whois / Domain Administrator (NAF FA1310001522726) – holding that “Respondent’s domain name consists of Complainant’s SONY mark, the generic term “store,” along [with] the top level domain name “.com.” Respondent’s inclusion of a generic term does not distinguish the domain name from Complainant’s trademark and thus in that case the Panel had concluded that Respondent’s <sonystore.com> domain name is confusingly similar to Complainant’s SONY mark pursuant to Policy 4(i)”
(ii) Sony Kabushiki Kaisha TA Sony Corp. v. Stanley Pace (NAF FA1111001415253) holding that “In the disputed domain name, Complainant claims that Respondent simply attaches the descriptive term ‘entertainment’ and the generic top-level domain (‘gTLD’) ‘.com’ to Complainant’s mark. Based on these minor alterations, the Panel had found that Respondent’s <sonyentertainment.com> domain name is confusingly similar to Complainant’s SONY mark under Policy 4(a)(i).”
(iii) Sony Corp. v. D.N.S. Register / Taiwan Domain Name Service Center (NAF FA1311001530868) – holding that “Respondent’s <sonytaiwan.com> domain name is confusingly similar to Complainant’s mark because it wholly incorporates Complainant’s SONY mark notwithstanding the addition of the geographic term ‘taiwan’ and the gTLD ‘.com.’ Respondent’s addition of a geographical term does not differentiate the disputed domain name from Complainant’s mark under Policy 4(a)(i). Accordingly, the Panel had found that Respondent’s <sonytaiwan.com> domain name is confusingly similar to Complainant’s SONY mark.”
(iv) Sony Kabushiki Kaisha a/t/a Sony Corp. v. EOS1\EOS-1, Inc. (NAF FA0506000493110) – holding that “Respondent’s <www-sony.com> domain name is confusingly similar to Complainant’s SONY mark, as the domain name incorporates Complainant’s mark and adds a ‘www’ prefix, a hyphen, and the generic top-level domain (‘gTLD’) ‘.com.’ The Panel in that case had concluded that under the Policy, none of these additions distinguish the domain name from Complainant’s mark because each addition is irrelevant for purposes of conducting a Policy 4(a)(i) analysis.”
(v) Sony Kabushiki Kaisha a/t/a Sony Corp. v. 0-0 Adult Video Corp. (NAF FA0505000477159) – holding that “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 had found that such minor additions do not significantly distinguish Respondent’s domain name from Complainant’s mark pursuant to Policy 4(a)(i).”
(vi) Sony Kabushiki Kaisha a/t/a Sony Corp. v. Jairo Acevedo (NAF FA0504000463035) holding that “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).”
Contentions relating to Respondent having No Rights or Legitimate Interest in
the Disputed Domain Name
· Complainant contends that the Respondent clearly has no rights or legitimate interests in the disputed domain name. Complainant contends that Respondent’s attempt to extract an exorbitant amount of money, does not confer upon Respondent a legitimate right or interest in the disputed domain name. Complainant contends that UDRP panels have held that the registration and use of a domain name under such circumstances constitutes a lack of rights or legitimate interests in the domain name. In this regard, Complainant has relied upon the following decisions : –
(i) Microsoft Corp. v. Domain Admin / Registration Suspended – Trademark (NAF FA1206001449122) – holding that “The Panel agrees and finds Respondent has acquired the [microsoft-windows.com] domain name with the intention to sell for more than its out of pocket costs and consequently lacks rights or legitimate interests in the disputed domain name pursuant to Policy 4(a)(ii).”
(ii) George Weston Bakeries Inc. v. McBroom (NAF FA933276) - holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name.
(iii) Yahoo! Inc. v. SDN Group (NAF FA1201001425454) – holding that “Complainant argues Respondent is not making a bona fide offering of goods or services in relation to the disputed domain name, as evidenced by its attempt to sell the name for an inflated price. The <videoyahoocom.com> domain name previously resolved to website that offered to sell the domain name for $200,000.00. The Panel in that case had concluded that Complainant’s registration of the disputed domain name with the intent to sell it for an excessive price amounts to a lack of bona fide offering of goods and services under Policy 4(c)(i) and does not constitute a legitimate noncommercial or fair use under Policy 4(c)(iii).”
(iv) Cruzeiro Licenciamentos Ltda v. Sallen (WIPO D2000-0715) - holding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark.
· Complainant further contends that Respondent is not and has not been commonly known by the Domain Name. Nothing in Respondent’s WHOIS information or the record demonstrates that Respondent is commonly known by the disputed domain name, and Complainant has not authorized Respondent to use its SONY mark. Complainant contends that UDRP panels have found a respondent not to be known by a disputed domain name where there was no evidence in the record (including the WHOIS information) to suggest otherwise for purposes of Policy Paragraph 4(c)(ii). In this regard, Complainant has relied upon the following decisions of this Forum in –
(i) Sony Corp. v. Jack S. Alvarado (NAF FA1310001526174) - holding that “Respondent has not been commonly known as <sonyusa-careers.com>, that Respondent is in no way connected with, or an affiliate of, Complainant, and that Respondent has no license or other authorization to use the SONY mark in a do-main name. Moreover, the domain name’s WHOIS information identifies the registrant only as ‘Jack S. Alvarado,’ which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the <sonyusa-careers.com> domain name so as to have demonstrated that it has rights to or legitimate interests in it within the meaning of Policy 4(c)(ii).”
(ii) Sony Kabushiki Kaisha TA Sony Corp. v. Stanley Pace (NAF FA1111001415253) – holding that “Complainant asserts that Respondent does not own any trademark or service mark registrations relating to the disputed domain name. Complainant claims that Respondent is not licensed or authorized to use Complainant’s SONY mark. The WHOIS information lists ‘Stanley Pace’ as the registrant of the <sonyentertainment.com> domain name. Based on this evidence, the Panel concludes that Respondent is not commonly known by the disputed domain name for the purposes of Policy 4(c)(ii).”
(iii) Sony Corp. v. Mustafa Dolek (NAF FA1209001461873) – holding that “The Panel notes that the WHOIS records for the <sonykamerasistemi.com> and <sonynvm.com> domain names list ‘Mustafa Dolek’ as the domain name registrant. Panels have held that the information on the record, including the WHOIS information, is illustrative of whether a Respondent is commonly known by a disputed domain name. The Panel finds that Respondent is not commonly known by the <sonykamerasistemi.com> and <sonynvm.com> domain names pursuant to Policy 4(c)(ii).”
(iv) St. Lawrence Univ. v. Nextnet Tech (NAF FA881234) - concluding that a UDRP respondent had no rights to or legitimate interests in a disputed domain name under Policy 4(c)(ii) where there was no evidence in the record indicating that that respondent was commonly known by the domain name.
· Complainant contends that given the substantial and widespread reputation of Complainant's SONY Mark, Respondent could not be known by the disputed domain name. In this regard, Complainant relies upon the following decisions : -
(i) PNC v. Paksys Consulting (NAF FA0201000103523) - holding the Complainant's PNC and PNC BANK marks “are so unique and well known in the business world that there could be no use of them by [respondent] that would constitute a good faith use.”
(ii) H-D Michigan v. Registrant (NAF FA0711001109413) holding the respondent had no rights or legitimate interests under Section 4(c)(ii) because the WHOIS information does not indicate respondent is commonly known by the disputed domain name and because complainant did not authorize respondent to use its mark.
(iii) Twentieth Century Fox Film Corp. v. Leverett Consulting (NAF FA0410000338370) - holding the respondent did not establish rights or legitimate interests in the disputed domain names because there was no proof in the record that respondent was known by the domain names and because complainant did not authorize or license respondent to use its FOX SPORTS RADIO and FOX SPORTS marks.
Contentions relating to Bad Faith Registration and Use of the
disputed domain name by Respondent
· Complainant contends that Respondent’s registration and use of the Domain Name squarely meets the grounds of bad faith outlined in UDRP Section 4(b), as well as additional grounds of bad faith defined in previous UDRP decisions.
· Complainant contends that the Respondent has registered and used the Domain Name primarily for the purpose of selling the disputed domain name to the Complainant and/or its competitor for valuable consideration in excess of Respondent’s documented out-of-pocket costs directly related to the disputed domain name. Complainant contends that UDRP panels have consistently held that the registration and use of a domain name for such a purposes is clearly an evidence of bad faith, pursuant to Policy paragraph 4(b)(i). Complainant in this regard relies upon the following decisions : -
(i) Microsoft Corp. v. Domain Admin / Registration Suspended - Trademark (NAF FA1206001449122) – holding that “Complainant argues Respondent’s offer to sell the disputed domain name for $397.00 demonstrates bad faith registration and use. Since it appears to the Panel that Respondent primarily intended to resell the domain name for more than its out of pocket cots when it was registered, the Panel concludes Respondent registered and uses the <microsoftwindows.com> domain name in bad faith pursuant to Policy 4(b)(i).”
(ii) Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc. (NAF FA103186) – holding that “What makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner”
(iii) Yahoo! Inc. v. SDN Group (NAF FA1201001425454) – holding that “The Panel finds registering a domain name that includes another party’s trademark in its entirety, with the intention of selling the domain name to the holder of the trademark, shows bad faith registration and use under Policy 4(b)(i).”);
(iv) World Wrestling Fed’n Entm’t., Inc. v. Bosman (WIPO D99-0001) - holding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket costs.
(v) Dynojet Research, Inc. v. Norman (eResolution AF-0316) - holding that the respondent demonstrated bad faith when he requested monetary compensation beyond out-of-pocket costs in exchange for the registered domain name.
· Complainant further contends that Respondent had knowledge of Sony’s rights in the mark SONY when Respondent had registered and used the disputed domain name. Further, Respondent had contacted Complainant immediately after registering the disputed domain name for the purpose of attempting to re-sell the disputed domain name for a sum of $10,000.00 thereby making it clear that Respondent had full knowledge of Complainant’s mark Sony and its rights in it when Respondent registered and used the disputed domain name. By registering the disputed domain name with complete knowledge of Complainant’s rights in its mark SONY, and then specifically soliciting Sony to buy back a Domain Name reflecting / projecting it to be its own famous mark, Respondent acted in bad faith. Complainant in this regard has relied upon the following decisions : -
(i) Sony Kabushiki Kaisha TA Sony Corp. v. Isabella Wempa (NAF FA1205001443142) - holding that “actual knowledge is shown by Respondent’s acquisition and use of the disputed domain name and that this actual knowledge does support a finding of bad faith registration and use under Policy 4(a)(iii).”
(ii) Sony v. Intercardnetwork (NAF FA0503000435612) holding that - “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 in that case had inferred 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).
(iii) Sony v. seoul venture (NAF FA0404000263529) – holding that “Respondent’s registration of the disputed domain name, a domain name that incorporates Complainant’s well-known registered marks and deviates only with the addition of the gTLD ‘.com’ and the generic or descriptive term, ‘mobile,’ suggests that Respondent knew of Complainant’s rights in the SONY and SONY MOBILE marks. Thus, the Panel in that case had found that Respondent likely chose the <sonymobile.com> domain name based on the distinctive qualities of Complainant’s mark.”
· Complainant alleges that Respondent had knowledge of Complainant’s reputed mark when it had registered and used the disputed domain names because of the fame associated with Complainant's mark. The SONY Mark identifies Complainant and its well-earned reputation among the general public as a trusted provider of high quality products and services for the consumer and professional markets. The mark SONY and its name symbolizes the tremendous goodwill associated with it and constitutes property rights of incalculable value. Complainant contends that due to widespread and substantial use of its mark, the Complainant’s mark and name have become famous, various UDRP panels have found bad faith use and registration in situations involving such substantial fame associated with a mark at issue. In this regard, Complainant relies upon the following decisions of this Forum : -
(i) Sony v. Zuccarini (NAF FA0204000109044) – holding that “Given the fame and distinctiveness of Complainant’s [SONY] mark, Respondent must have been aware of the mark and Complainant’s rights therein when it registered the disputed domain name.”
(ii) Sony v. Domain rajadomain@yahoo.com +1.415.0 (NAF FA0210000128701) – holding that “Based on the fame of Complainant’s SONY mark it can be inferred that Respondent had actual notice of Complainant’s rights when it registered the disputed domain name. Registration of a domain name, despite actual notice of Complainant’s rights is evidence of bad faith registration pursuant to Policy 4(a)(iii).”
(iii) Sony Corp. v. D.N.S. Register / Taiwan Domain Name Service Center (NAF FA1311001530868) – holding that “Complainant asserts there can be no reasonable dispute that Respondent was fully aware of the SONY mark when it registered the disputed domain name in May, 2013, long after the SONY mark became famous, particularly given that Respondent prominently displays the SONY mark and logo on its website. The Panel agrees and finds that, due to the fame of Complainant's mark, and Respondent’s use, Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel finds bad faith under Policy 4(a)(iii).
(iv) Sony Corp. v. Fundacion Private Whois / Domain Admin’r (NAF FA1310001522726) – holding that “Finally, Respondent had actual knowledge of Complainant’s SONY mark prior to registering the <sonyplay.com> domain name. Respondent’s knowledge of Complainant’s SONY mark is inferred from the notoriety of the SONY mark and the fact that the at-issue domain name incorporates the term “store” suggesting Complainant’s retail related business. Respondent’s prior knowledge of Complainant’s rights in the SONY mark additionally shows that Respondent registered the at-issue domain name in bad faith under Policy 4(a)(iii).”
(v) Google Inc. v. hejie / jerry jerry (NAF FA1201001422208) – holding that “The evidence overwhelmingly supports the conclusion that Registrant registered and is using the Domain Name in bad faith. First, the fame and unique qualities of the GOOGLE Mark make it extremely unlikely that the Registrant created the Domain Name independently.
(vi) Microsoft Corp. v. Domain Admin / Registration Suspended - Trademark (NAF FA1206001449122) - holding that “…it is inconceivable Respondent could have registered the <microsoft-windows.com> disputed domain name without actual knowledge of Complainant's rights in the mark in light of the fame and notoriety of Complainant's MICROSOFT and WINDOWS marks.”
· Complainant contends that Respondent has registered the disputed domain name fifty years after the issuance of Sony’s federal registration for its SONY mark, and greater time still after Sony’s date of first use of its SONY Mark by Complainant. Further, Complainant's federal registrations for its SONY Mark constituted constructive notice of its rights in the mark. Respondent's registration of the disputed domain name many decades after Complainant's constructive first use date constitutes bad faith registration. In this regard, Complainant relies upon the following decisions : -
(i) Orange Glo Int'l v. Blume (NAF FA118313) - holding that “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.”
(ii) Digi Int'l v. DDI Sys. (NAF FA124506) - holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant's trademarks, actually or constructively”.
B. Respondent
The Respondent in its Response to the Complaint has made the following submissions : -
· Respondent in her response has stated that the domain name industry involves generating, buying and selling of web domain names. It can be very lucrative as reported on the internet. While citing an example, Respondent has stated that author Daniel Scocco has reported on the internet (www.dailyblogtips.com) that the domain name sex.com sold for a huge amount: $14 million dollars. Respondent further stated that she had recently stumbled upon the domain name business. She opted to enter the domain name industry as according to her it is cheap to get into; and one just need a dictionary, thesaurus, and some imagination to enter this industry. Accordingly Respondent came up with six domain names via her own unique thought process; these six domain names are creations of her own mind. Of these six domain names that Respondent came up with, all were duly purchased from several different online domain companies - Network Solutions, Register.com, etc. According to respondent, disputed domain name <sonyswag.com> is just one of the six domain names that Respondent came up with.
· Respondent submits that the word “swag” does not mean “promotional items” as stated in Complainant’s Complaint, rather it is short for “swagger” and it refers to one’s own style, finesse, or one’s inner cool factor. Respondent contends that it simply thought that the word itself is cute and that she (Respondent) could get a quick sell from the Sony Corporation; and if not from them, then certainly from someone else. Respondent claims that the flipping of domain names is a legitimate business as stated in the book - Get Rich Click by Marc Ostrofsky.
· Respondent submits that she is new to this business. She is aware that mistakes can be made. She believes she has done nothing wrong, and is willing to transfer the domain name to the Sony Corporation, but not for free. Respondent states that she is a great fan of Sony and has over the years provided much support for the Corporation, buying many of its varied electronic products over the years. Respondent claims that she simply viewed this matter as a great business opportunity.
· Respondent contends that it is a fact that Complainant did not come up with the name, “Sonyswag”, Respondent did; it is her intellectual property and it belongs to her. Respondent claims that as stated in her Dec. letter to Complainant, she owns the disputed domain name: <sonyswag.com> which she claims she has legally purchased from Register.com (Exhibit-4). Respondent claims that there is nothing illegal or inappropriate in the manner in which Respondent had approached Sony.
Submissions of Respondent regarding its Registration and Marketing efforts of the disputed domain name not amounting to Bad Faith
· Respondent contends that she has legally purchased the domain name. There is nothing illegal about Respondent attempting to sell the disputed domain name. Respondent contends that she went online to make sure that the disputed domain name was available and upon being told by Registrar - Register.com that the said registration is permissible that she went on to purchase it from them.
· Respondent contends that Complainant’s request to “make” Respondent transfer her domain name to them is illegal, unconscious able, and gives rise to the concept of “Reverse domain name hijacking (also known as reverse cybersquatting)”. Respondent states that this term refers to when a big company tries to take possession of someone else’s domain name from its lawful owner. The Respondent relied upon the definition in this regard given on Wikipedia and also on the decision of WIPO which supports Respondent’s position to retain her domain name in - The Honorable Ron Paul v. DN Capital Inc, Martha Roberts, Case D2013-0371(Exhibit-6)
· Respondent contends that Complainant did not ask for a cease and desist order, instead it wishes to acquire ownership of the domain name that was created by Respondent. Respondent is the rightful, lawful, legal owner of the domain name, <sonyswag.com>.
· Respondent has not tried to hurt the Complainant’s company or professional image in anyway. Respondent has not used or profited from the domain name in such a way as to hurt Complainant. No goods or services have been placed under the domain name by Respondent to negatively impact the Complainant.
· Respondent contends that the domain name registered by it has value; and if Complainant wants it, it needs to buy it from her as she is the legitimate owner of the domain name in question. This venture, is not a hobby. Respondent contends that flipping domain names is a business and because Respondent has rights, the Panel here should not grant Complainant’s request for a transfer without compensating Respondent.
Submissions of Respondent that the Mark is not Confusingly Similar to Complainant’s
· Respondent contends that its domain name is not identical to Complainant’s. Complainant’s corporate name is one word with two syllables. Respondent’s domain name although one word, three syllables. The name Sony by itself is associated with electronics and electronic products; it has nothing to do with style or finesse or “coolness”; Respondent put that spin on her domain name.
· Respondent contends that the general public would not be confused by her eight letter domain name as against Complainant’s four letter company name. Complainant’s mark “SONY” and Respondent’s domain name <sonyswag.com> may be similar, but there is nothing confusing about the two. People are able to tell the difference.
· Respondent submits that Panel should deny the remedy of transfer of the domain name, requested by the Complainant.
· Complainant contends it has rights in the SONY mark through its use and registrations with the USPTO. Complainant claims that it has used the SONY mark worldwide as well as online continuously since 1955. Complainant also claims that it maintains various websites using the mark SONY, such as <sony.com>, <sony.co.jp>, <sony.co.uk>, <sony.eu>, and <sonypictures.com>, to name a few.
· Respondent has registered the disputed domain name in November 2013 and had no plans to use it for any business activity but rather wanted to exploit it to gain profits by selling the disputed domain name for huge consideration to Complainant or to its competitors.
· Respondent contends that the disputed domain name <sonyswag.com> comprises of common and generic terms and thus cannot be deemed confusingly similar to Complainant’s mark. Registration and use of disputed domain name comprising such common terms cannot be said to be done in bad faith.
· The Panel finds that the use of the domain name <sonyswag.com> by the Respondent is in bad faith and the Respondent has no rights or legitimate interests in relation to the domain name.
· The Panel also finds that the domain name <sonyswag.com> deserves to be transferred to the Complainant and the Respondent is not entitled to use this domain name. The Complaint deserves to be allowed forthwith and the Panel decides accordingly. However, in terms of the ICANN Policy and the requirements thereunder, the formal observations / findings of the Panel are as under.
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."
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 claims to have used the SONY mark in commerce for decades. Complainant argues that in the year 2013 alone over $72 billion USD in sales were made under the SONY mark. Complainant has registered the SONY mark with the USPTO (e.g., Reg. No. 770,725 registered on May 26, 1964). The Panel finds that USPTO registration is compelling evidence of registration in this case, especially as Respondent is also a resident of the United States. The Panel finds that a previous panel of this Forum in W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) has held that “the Panel finds that USPTO registration is sufficient to establish these [Policy 4(a)(i)] rights even when Respondent lives or operates in a different country.”
Complainant argues that the disputed domain name <sonyswag.com> is confusingly similar to its SONY mark. Complainant contends that Respondent has added the generic term “swag” and the gTLD “.com” to the SONY mark, and argues that the addition is not sufficient to avoid confusing similarity. Prior panels have agreed that gTLDs and generic terms do not distinguish a domain name that is otherwise nothing more than another party’s trademark. In this regard, the Panel relies upon the decision of this Forum in - Google Inc. v. N/A/ k gautam, FA 1524232 (Nat. Arb. Forum Nov. 18, 2013) - holding that the disputed domain name is confusingly similar to the at-issue mark despite the misspelling of the mark by omitting letters, the addition of a generic term, and the addition of a generic top-level domain.
Respondent argues that consumers are smart enough to decipher between the official SONY mark and the <sonyswag.com> domain name. The Panel finds that Policy 4(a)(i) does not look at whether an anecdotal sample group may be confused or not, rather Policy 4(a)(i) applies tenets of trademark law in determining whether the disputed domain name is confusingly similar to the underlying trademark. The Panel thus finds that in the absence of any compelling argument as to how the term “swag” does anything beyond serve as a referent to the SONY mark, Respondent’s argument against a finding of Policy 4(a)(i) is not compelling.
Hence, the Panel agrees that the disputed domain name <sonyswag.com> is confusingly similar to the SONY mark under Policy 4(a)(i).
The Panel is reminded that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. The following decisions of this Forum in this regard are relevant : -
(i) Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) - holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name);
(ii) AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) – holding that “Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”
Complainant argues that Respondent has not been commonly known by the <sonyswag.com> domain name. Complainant notes that there is no evidence in this record to suggest otherwise. The Panel observes that Respondent claims that she is “Patricia L. Baker,” and otherwise also makes no representation that she is commonly known by the disputed domain name. Hence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy 4(c)(ii). The Panel, in this regard, relies upon the decision of this Forum in LawyerLocate.ca Inc v. J Kirby Inwood / CanLaw, FA 1496334 (Nat. Arb. Forum June 20, 2013) - holding that “Respondent’s name is J Kirby Inwood and his organization’s name is CanLaw. There is no evidence Respondent is known by the Domain Names nor by the names Lawyerlocate or Lawyerlocate.ca.”
Complainant further argues that Respondent’s use of the domain name is neither legitimate nor bona fide because Respondent has made it clear that it sought to gain $10,000.00 through the transfer of the disputed domain name. The Panel observes that Complainant has evidence of a letter illustrating Respondent’s intent to sell the domain name for no less than $10,000.00. The Panel in this regard relies upon the decision of this Forum in Compl., at in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007 – holding that the panel found that the respondent lost its credibility in claiming a bona fide offering of legitimate noncommercial or fair use when the facts showed that the domain name had been registered to capitalize on the use of another party’s trademark through the sale of the domain name.
Hence the Panel finds that Respondent’s registration of the disputed domain name <sonyswag.com> was, admittedly, for purposes of resale and thus Respondent lacks a Policy 4(c)(i) bona fide offering of goods or services, or a Policy 4(c)(iii) legitimate non-commercial or fair use.
Complainant claims that Respondent registered the domain name to exploit Complainant into paying for the domain name in question. Complainant argues that Respondent specifically requested $10,000.00 for this domain name in an e-mail to Complainant. Respondent has admitted that she has registered the disputed domain name so that she could “could get a quick sell from the Sony Corporation; and if not from them, then certainly from someone else.”
The Panel observes that a panel of this Forum in Toyota Motor Sales, U.S.A., Inc. v. Above.com Domain Privacy, FA 1535107 (Nat. Arb. Forum Jan. 29, 2014) has concluded that the registration of a domain name for purposes of a targeted resale to the complainant was evidence of Policy 4(b)(i) bad faith. Hence the Panel agrees that Respondent has likewise acted in bad faith under Policy 4(b)(i).
Complainant argues that Respondent had actual knowledge of Complainant’s rights when registering the disputed domain name <sonyswag.com>, yet registered the infringing domain name anyway. The Panel observes that Respondent had knowledge about Complainant’s SONY mark in her Response and through her e-mail correspondence of December 2013 with Complainant. Hence, the Panel finds the Policy 4(a)(iii) - bad faith registration, as Respondent has undertaken the registration of the disputed domain name <sonyswag.com> with actual knowledge of Complainant’s rights in the SONY mark. In this regard, the Panel finds strength from the decision of this Forum in - Bloomberg Finance L.P. v. Hildegard Gruener, FA 1538345 (Nat. Arb. Forum Feb. 17, 2014) - holding that the complainant’s substantial prominence under the BLOOMBERG mark was in itself enough evidence to show that respondent knew of the mark before registering the domain name.
The Panel finds that the Respondent has registered and is using the disputed domain name in bad faith under Policy 4(b)(iii).
Reverse Domain Name Hijacking
The Panel observes that Complainant has satisfied all the elements of Policy 4(a)(i), 4(a)(ii) & 4(a)(iii). The Panel finds that Complainant has not engaged in reverse domain name hijacking. The Panel in this regard finds strength from the following decisions : -
(i) World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) – holding that “Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”.
(ii) Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) – holding that no reverse domain name hijacking where complainant prevailed on the “identical/ confusingly similar” prong of the Policy.
Respondent in her response has argued that Complainant is engaged in Reverse Domain Name Hijacking. In this regard, she has relied on the decision of WIPO in the case of The Honorable Ron Paul v. DN Capital Inc., Martha Roberts, D2013–0371 (WIPO May 11, 2013). However, the Panel observes that in that case, domain name involved was used for political noncommercial speech, the panel in that case held that “in view of the unique facts of this case, in which the evidence demonstrates that Respondent offered to give the Domain Name <ronpaul.org> to Complainant for no charge, with no strings attached, the Panel is inclined to agree. Instead of accepting the Domain Name, Complainant brought this proceeding. A finding of Reverse Domain Name Hijacking seems to this Panel to be appropriate in the circumstances.” The Panel observes that the Complainant is a worldwide renowned company having various registrations for the mark SONY and has been using the said mark since 1955. It has various websites using its mark SONY. The Respondent, admittedly having been fully aware of the reputation of Complainant’s mark SONY, has registered the disputed domain name in November 2013, using Complainant’s mark adding the generic term “swag” with gLTD to earn illegitimate gains by selling the disputed domain name to the Complainant or to any of its competitor thereby indulging in domain name hijacking.
The Panel is therefore of the view that the Complainant has not indulged in reverse domain name hijacking.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED in favour of the Complainant.
Accordingly, it is Ordered that the <sonyswag.com> domain name be TRANSFERRED from Respondent to Complainant.
Maninder Singh, Panelist
Dated: March 10, 2014
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page