Sony Corporation v. Vu Van Hung
Claim Number: FA1403001548362
Complainant is Sony Corporation (“Complainant”), represented by Gina M. McCreadie of Nixon Peabody LLP, Massachusetts, USA. Respondent is Vu Van Hung (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonyviet.com>, registered with P.A. Viet Nam Company Limited.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Calvin A. Hamilton as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 12, 2014; the National Arbitration Forum received payment on March 13, 2014.
On March 25, 2014, P.A. Viet Nam Company Limited confirmed by e-mail to the National Arbitration Forum that the <sonyviet.com> domain name is registered with P.A. Viet Nam Company Limited and that Respondent is the current registrant of the name. P.A. Viet Nam Company Limited has verified that Respondent is bound by the P.A. Viet Nam Company Limited 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 March 25, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 14, 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@sonyviet.com. Also on March 25, 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 determined to be complete on March 30, 2014.
A timely Additional Submission from Complainant was received and determined to be complete on April 4, 2014.
On May 28, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Calvin A. Hamilton 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
Complainant makes the following contentions:
1. Complainant has rights in its well-known SONY mark.
a. Complainant is well known for its development in electronic products and services. Complainant is the co-developer of the CD, DVD, and Blue-ray Disk format. Complainant offers a plethora of other electronics such as televisions, game stations, smart phones, professional cameras, and computers.
b. Complainant owns hundreds of registrations for the SONY mark in countries throughout the world, including with the United States Patent and Trademark Office (“USPTO”) and the Vietnamese National Office of Intellectual Property (“NOIP”).
i. USPTO (e.g., Reg. No. 770,275 registered May 26, 1964).
ii. NOIP (Reg. No. 3,513 registered October 16, 1991).
c. Respondent’s <sonyviet.com> domain name is confusingly similar to Complainant’s SONY mark.
i. Respondent’s <sonyviet.com> domain name fully incorporates Complainant’s SONY mark with the geographic abbreviation “viet” indicating the abbreviation for Vietnam. Respondent also adds the generic top-level domain (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <sonyviet.com> domain name.
a. Respondent is not commonly known by the disputed domain name.
i. Complainant has not authorized or licensed Respondent to use its mark in any way. Complainant has established that it owned rights in the SONY mark previous to Respondent’s use of the disputed domain name.
b. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent uses Complainant’s SONY mark to attract Internet users to its website. Complainant has also acquired international fame in relation to the SONY mark. Respondent uses the disputed domain name to redirect Internet users to the website resolving from the disputed domain name which prominently features Complainant’s SONY mark as well as information and forums on SONY products. Respondent further receives pay-per-click fees when Internet users click on the links featured on the resolving website.
3. Respondent registered and is using the <sonyviet.com> domain name in bad faith.
a. Respondent uses the disputed domain name to resolve to a website located at <sonyviet.vn>. Complainant states that the resolving website prominently features Complainant’s SONY mark and displays news about Complainant’s products.
b. Respondent had actual knowledge of Complainant and its famous SONY mark when Respondent registered the disputed domain name.
B. Respondent
Respondent makes the following contentions:
a. Respondent uses the <sonyviet.com> domain name to share its passion for Complainant with other people. Respondent aims to unite fans of Complainant’s products. Respondent aims to provide a forum providing information and shared experiences involving Complainant’s products.
b. Respondent started using the disputed domain name in January 2012. Respondent states that the purpose of its website is, “to bring Vietnamese people who have the same passion for Sony together, to give help to new Sony users and create a channel for them to discuss, and to share any breaking news about Sony new products.”
c. Respondent’s home page features news articles about Sony products translated from English into Vietnamese. Respondent’s “Forum” section provides topics for discussing Complainant’s products. Respondent’s fan page located at <facebook.com/sonyviet> has more than 100,000 members.
d. Respondent claims that presently, Respondent’s resolving website receives 1,000,000 to 1,600,000 views per month.
e. Respondent states that it has allowed advertisements on its resolving website for six months in order to increase the budget for maintaining the website.
f. Respondent’s use of the disputed domain name does not cause damage to Complainant’s SONY mark.
C. Additional Submissions
Complainant’s additional submissions:
1. Respondent admits that it has used Complainant’s SONY mark without authorization and “totally know[s] that this action is not appropriate.” See Response.
2. Respondent provides no evidence that it has any demonstrable rights or legitimate interests in the disputed domain name. Respondent admits to using Complainant’s mark for commercial gain by accepting advertising revenue for products that compete with Complainant’s products.
3. The links featured on the disputed domain name redirect Internet users to at least six separate third-party sites selling competing products from which Respondent collects revenue.
4. Respondent has failed to rebut that Complainant has established its rights in the famous SONY mark.
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 initiates its claim against Respondent by first arguing that it is well-known for its development of electronic products and services. Complainant affirms that it is the co-developer of the CD, DVD, and Blue-ray Disk format. Complainant states that it offers a plethora of other electronics such as televisions, game stations, smart phones, professional cameras, and computers. Complainant states that it owns hundreds of registrations for the SONY mark in countries throughout the world, including with the USPTO (e.g., Reg. No. 770,275 registered May 26, 1964) as well as with the Vietnamese NOIP (Reg. No. 3,513 registered October 16, 1991). See Annex 2. The Panel notes the decision in the Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) dispute holding that complainant had rights in a mark that it registered with various trademark authorities internationally, including the USPTO. The Panel also notes the decision in Australia & New Zealand Banking Group Ltd. v. Nguyen The Anh/ Cong ty CP Duoc Pham ANZ Tai Viet Nam, FA 1351993 (Nat. Arb. Forum December 1, 2010) which concluded that complainant’s registration with Vietnam’s NOIP was sufficient to establish rights in a given mark.
The Panel therefore finds that Complainant has rights in the SONY mark under Policy ¶ 4(a)(i).
Complainant additionally claims that Respondent’s <sonyviet.com> domain name is confusingly similar to Complainant’s SONY mark. Complainant states that Respondent’s <sonyviet.com> domain name fully incorporates Complainant’s SONY mark with the geographic abbreviation “viet” indicating the abbreviation for Vietnam. Complainant argues that Respondent also adds the gTLD “.com.”
Prior panels have routinely found that adding a geographic abbreviation as well as a gTLD are insufficient variations to differentiate a disputed domain name from a registered trademark. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Panel concludes that Respondent’s <sonyviet.com> domain name is confusingly similar to Complainant’s SONY mark under Policy ¶ 4(a)(i).
Rights or Legitimate Interests
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. See 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“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 contends that Respondent has no rights or legitimate interests in the <sonyviet.com> domain name under Policy ¶ 4(c)(ii). Complainant elaborates by claiming that Respondent is not commonly known by the disputed domain name. Complainant assures the Panel that it has not authorized or licensed Respondent to use its mark in any way. Complainant states that it has additionally established that it owned rights in the SONY mark previous to Respondent’s use of the disputed domain name. The Panel notes that the WHOIS information for Respondent’s <sonyviet.com> domain name lists “Vu Van Hung” as registrant.
Prior panels have continuously found that a respondent is not commonly known by a disputed domain name where there is no indication on the record or in the disputed domain name that respondent is commonly known by the disputed domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel concludes that based on the facts of the case, Respondent is not commonly known by the disputed domain name.
Additionally, Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or 4(c)(iii). Complainant explains that Respondent uses Complainant’s famous SONY mark to attract Internet users to its website. Complainant claims that Respondent uses the disputed domain name to redirect Internet users to the website resolving from the disputed domain name which prominently features Complainant’s SONY mark as well as information and forums on SONY products. Complainant further states, and Respondent admits that Respondent receives pay-per-click fees when Internet users click on the links featured on the resolving website. See Respondent’s Response. Complainant states in its Additional Submission that the links featured on Respondent’s resolving website redirect Internet users to at least six separate third-party sites selling competing products. See Complainant’s Additional Annexes 5-6.
Respondent contends that it uses the <sonyviet.com> domain name to share its passion for Complainant with other people. Respondent asserts that it aims to unite fans of Complainant’s products and to provide a forum of information and shared experiences involving Complainant’s products. Respondent states that it started using the disputed domain name in January 2012 and that the purpose of its website is, “to bring Vietnamese people who have the same passion for SONY together, to give help to new Sony users and create a channel for them to discuss, and to share any breaking news about Sony new products.” See Response. Respondent argues that its home page features news articles about Sony products translated from English into Vietnamese. Respondent claims that its “Forum” section provides topics for discussing Complainant’s products. Additionally, Respondent argues that its fan page located at <facebook.com/sonyviet> has more than 100,000 members. Respondent further claims that presently, Respondent’s resolving website receives 1,000,000 to 1,600,000 views per month.
While previous panels have found that a noncommercial use of a domain name to operate a fan website may demonstrate rights and legitimate interests, the Panel however notes that Respondent displays links and advertisements on its website. These hyperlinks direct visitors to third-party web sites in a pay-per-click operation.
Previous panels have found that using a confusingly similar domain name to resolve to a website displaying links and advertisements for third-parties does not convey rights or legitimate interests in the disputed domain name. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Complainant has made a prima facie case and that Respondent has failed to carry its burden of proof to show that it has legitimate rights or interests in the disputed name. Accordingly, the Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant asserts that Respondent registered and is using the <sonyviet.com> domain name in bad faith. Complainant explains that Respondent uses the disputed domain name to resolve to a website located at <sonyviet.vn>. Complainant states that the resolving website prominently features Complainant’s SONY mark and displays news about Complainant’s products. Additionally, Complainant points out that Respondent admits that it has used Complainant’s SONY mark without authorization and “totally know[s] that this action is not appropriate.” See Response 1. Complainant notes that Respondent admits to receiving commercial gain from its use of the disputed domain name. See Response.
Respondent contends that the <sonyviet.com> disputed domain name resolves to a website that shares Internet users’ passion about Complainant’s products. Respondent states that its goal is to provide a website to share experiences about Complainant’s products and provide information and upcoming news regarding Complainant. Respondent claims that it allowed advertisements on the resolving website for six months in order to increase the budget for maintaining the website and holding events for users of Complainant’s products in Vietnam.
Prior panels have concluded that using a domain name to resolve to a fan website does not amount to bad faith use and registration. See Nintendo of Am. Inc. v. Jones, D2000-0998 (WIPO Nov. 17, 2000) (finding no bad faith registration or use of the domain name when it was used as a fan website, it was not offered for sale, it was not registered to disrupt the complainant’s business, it was not used for commercial gain, and the respondent had no pattern of cybersquatting).
However, the Panel notes that Respondent admits to using the advertisements for commercial gain. The Panel cannot therefore view Respondent’s resolving website as merely a fan website, rather the site is also used for commercial gain.
Prior panels have continuously found that using a confusingly similar domain name to resolve to a website featuring pay-per-click links that produce revenue for respondent indicates bad faith use and registration. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Further, that such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant contends that Respondent had actual knowledge of Complainant and its famous SONY mark when Respondent registered the disputed domain name. The Panel is cognizant that Respondent registered the disputed domain name because of its interest in Complainant’s products.
While UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."), the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Respondent’s actions in registering and using the <sonyviet.com> domain name constitutes bad faith under Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sonyviet.com> domain name be TRANSFERRED from Respondent to Complainant.
Calvin A. Hamilton, Panelist
Dated: June 2, 2014
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