Sony Corporation v. VINOD SINGH / VAANIKA ENTERPRISES
Claim Number: FA1407001568462
Complainant is Sony Corporation (“Complainant”), represented by Steven M. Levy, Pennsylvania, USA. Respondent is VINOD SINGH / VAANIKA ENTERPRISES (“Respondent”),India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonygroup.com>, registered with Snappyregistrar.com LLC.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2014; the National Arbitration Forum received payment on July 14, 2014.
On July 21, 2014, Snappyregistrar.com LLC confirmed by e-mail to the National Arbitration Forum that the <sonygroup.com> domain name is registered with Snappyregistrar.com LLC and that Respondent is the current registrant of the name. Snappyregistrar.com LLC has verified that Respondent is bound by the Snappyregistrar.com LLC 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 July 22, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 11, 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@sonygroup.com. Also on July 22, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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. 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
As set forth more fully below, the Complainant owns certain trademarks and makes extensive use of them such that they have become famous.
Complainant Owns Its Marks. Complainant is the owner of the distinctive and world-famous SONY trademarks (the “SONY Marks”). Since long prior to the creation of the <SonyGroup.com> domain, Complainant commenced use of the SONY Marks in connection with the design, manufacture, and selling of electronics, games, and entertainment products and services. Since the inception of the SONY Marks in 1955, Complainant has continually used such Marks in international commerce.
The SONY Marks Are Extensively Used, Promoted and Protected. Complainant is one of the most famous brands in the world and is ranked 87th on the 2012 list of Fortune Global 500 companies and the SONY trademark is ranked 80th on the Forbes list of the World’s Most Valuable Brands. With a long and storied history behind it, Complainant starting out as a manufacturer of electronic products for the consumer and professional markets but has expanded its interests over time to include not just television sets and sound systems but also cameras, computers, mobile phones, a music recording label, and a motion picture production studio. This diversity of interests makes Complainant one of the most comprehensive entertainment companies in the world and it is often referred to as “Sony Group”.
Complainant extensively promotes its SONY Marks through, web, email, social media, billboard, print, and television advertising and expends millions of dollars in this effort each year. Complainant also sponsors major sporting events such as World Cup football and sometimes engages celebrities to endorse its products. Complainant has also been the subject of extensive media coverage including stories in the New York Times, CNN.com and many other outlets. Business, however, is not the sole focus of Complainant and it takes its public service obligation seriously through the Sony Corporate Social Responsibility program.
Complainant generates significant sales revenue as a result of the advertising and marketing it conducts on its websites reached through the <Sony.com>, <Sony.co.uk>, <Sony.co.in> and many other domains. In 2013 Complainant’s worldwide revenue exceeded US$76 Billion. As a result of Complainant’s long usage and promotion of the SONY Marks, they have become famous and widely recognized by consumers.
The SONY Marks are aggressively protected through registration and enforcement. Complainant owns many trademark registrations, in a number of different countries, for the SONY Marks, including the following:
SONY IC 001 009 010. US 026. G & S: Analysis apparatus and equipment-namely, [ automatic analog correlators, automatic transient waveform recorders ] and data recorders, [ correlators and meters ]. FIRST USE: 19620127. FIRST USE IN COMMERCE: 19620127 0785967 (US) 2-Mar-1965 (Filed 21-Jun-1963)
SONY IC 015. US 036. G & S: Electrical sound recording apparatus, including electric record players, electrically driven record changers, and automatic phonograph record changers. FIRST USE: 19640530. FIRST USE IN COMMERCE: 19640610 0801885 (US) 11-Jan-1966 (Filed 14-Oct-1964)
SONY Int’l. Class 9: 1622127 (US) 13-Nov-1990 (Filed 3-Oct-1988)
IC 009. US 021 026 027 036 038. G & S: Radios, televisions, tape recorders (sound recording and reproduction machines), and accessories and parts thereof, namely cabinet stands, carrying cases, rechargeable battery packs, car battery cords, antennas, hand straps and parts thereof; tape for tape recorders, reels for tape, audiotapes featuring music recital and educational programs, wired and wireless microphones, announcing machines, loudspeakers for stereophonic and monophonic sound reproduction, automatic-transformers, erasers of recorded tape, microphone-mixers, amplifiers, inverters, monoprinters, signal tracers, signal injectors, transistors, batteries, electric vacuum-tubes, converters (rectifier units for operation of battery radio), pickups; electric-communicating apparatus, namely, facsimile telephones and telephones with two way video transmitters; dictating machines, television cameras, electrical sound recording apparatus, comprising electric record players, electrically driven record changers, and automatic phonograph record changers, video tape recorders, video disc players, video cameras, recorded video tapes featuring motion pictures and musical performances, unrecorded video tapes, computers, word processors, telephones, computer work stations, computer programs and program manuals all sold as a unit for use in the field of [ bustry ] * business, industry * , financial accounting, operating programs, word processing and database management. Compact disc players, transceivers, headphones, personal stereos, car stereos, tuners, cartridges, speakers, unrecorded audio cassette tapes, and prerecorded cassette tapes featuring musical performances, earphones, graphic equalizers, electric juicers, electric irons, nine volt batteries, binoculars, radios combined with alarm clocks, semi-conductors, television tubes, computer monitors, computer floppy discs, magnetic scales, vidicons, magnetic heads for tape recorders, cathode ray tubes, remote control units for television receivers, magnetic measuring apparatus and digital counter, bimorph tracking heads which provide for variable playback speeds for video tape recorders, digital micro meters; pulse code modulation audio systems, namely pulse code modulation audio units, magnetic video recorders and/or players and magnetic media therefor, namely video tapes featuring entertainment and educational programs; high fidelity sound units used as external component parts of television systems, television monitors with and without television tuners. Electronic digital gauging system comprised of digital display units, gauging probes, calibration rings and calibration blocks, non-electric sound amplifiers in the shape of headphones, color temperature switches for television receivers, projection televisions, video cameras combined with video tape recorders, floppy disc drives, computer joysticks, computer connection cables and connectors, high speed video tape duplicating machines, color video projectors, micro televisions, compact disc changers used to change playback and selection of multiple compact discs, video camera lenses, optical scales and encoders for (linear or angular) position sensing, utilizing lasers, units for measuring displacement (linear or angular) which utilize diffraction grating and laser units, floppy disc video players, floppy disc video cameras, floppy discs for use in video players and cameras; video tape recorder accessories, namely, editors, switchers, special effects generators and remote controls; replaceable fluorescent television picture tubes which function as single pixels in giant television screens, time base correctors; video camera control units comprised of video camera signal processor, video camera control power unit, video camera operational control unit and wave form monitor; video camera accessories, namely, optical fiber links, video camera image enhancers and video camera cable; electronic still cameras and parts and accessories therefor, namely, magnetic disks. FIRST USE: 19691215. FIRST USE IN COMMERCE: 19691215
SONY Int’l. Class 9 0000472 (CTM) 1-Apr-1996 (Filed 5-May-1998)
SONY Intl’l Class 9: Cellular phones; batteries for cellular phones; battery chargers for cellular phones; cases for cellular phones; devices for hands-free use of cellular phones; cellular phone straps; holster for carrying cellular phones; cradles for cellular phone; power supply connectors and adaptors for use with cellular phones; power supplies for cell phones; PC cards; stylus; camera flashes; media viewer; gameboards; integrated circuit recording media readers; audio speakers; cradle audio system; radio transmitters; USB cables; plastic covers for cellular phones. Intl’l Class 14: Watches
5416243 (CTM) 17-Aug-2007 (Filed 25-Oct-2006)
SONY Radio apparatus including radio apparatus with transistors and parts thereof included in Class 9 196589 (India) 20-Jun-1960
SONY Speakers, transistors, diods and amplifiers none being for use as parts of radio apparatus; transceivers; earphones and batteries, all being goods included in Class 9 242971 (India) 3-Jul-1967
Respondent’s registration of the <SonyGroup.com> domain violates the Policy.
The SonyGroup.com Domain is identical or confusingly similar to the Marks under Policy ¶4(a)(i). Respondent’s <SonyGroup.com> domain is confusingly similar, on its face, to one or more of Complainant’s registered SONY trademarks. Searchers will likely be confused into believing that there is a connection of source, sponsorship, affiliation or endorsement between the Complainant’s Marks and Respondent by Respondent’s use of the <SonyGroup.com> domain.
It has been held, in decisions too numerous to mention, that a minor misspelling of a Complainant’s trademark, or the addition of generic or other words creates a confusingly similar domain name. See, e.g., Comerica Bank v. Private Registration, WhoisGuardService.com, WIPO Case No. D2014-0529 (In ordering the domain <comericaonline.com> ordered transferred, the Panelist held that, “[i]n accordance with the consensus of past UDRP panels, the addition of descriptive suffixes and prefixes to a trademark does not normally serve to distinguish the resulting combination as a domain name from the trademark.”); Swarovski Aktiengesellschaft v. Simon Zhang, WIPO Case No. D2014-0583 (At issue was the domain <swarovskisave.com>. The Panelist held that “[t]he addition of this word [“save”] to the word “swarovski” does not change the conclusion that there is confusing similarity between the trademark SWAROVSKI of the Complainant and the disputed domain name.”); Disney Enterprises, Inc. v. ORIENTS RUGS & MORE / NA, NAF Claim No. 1555495 (2014) (“The disputed domain name [<disneyindia.com>] combines Complainant’s registered trademark with the geographic term “india” and the top-level domain suffix “.com”. These additions do not diminish the similarity between the domain name and Complainant’s mark.”).
Similar to the above-cited decisions, the Respondent in the present dispute initially attracts searchers to its website by using an identical copy of the Complainant’s SONY Marks and merely adding the word “group”, thereby making visitors to its website think that they are being linked to one of the Complainant’s legitimate sites. This addition only enhances confusion since the combination of Complainant’s various business units is often referred to as the “Sony Group” See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (Complainant’s trademark rights and use of its mark “make it likely beyond real doubt that consumers who know that mark will think that ‘focus-do-it-all.com’ is their address. As reasoned in Athanasios, even if searchers discover they are not at one of Complainant’s sites, searchers may be led to believe that the Complainant endorsed, sponsored or affiliated itself with the goods and services offered at the website of the SonyGroup.com domain. As in Athanasios, Respondent here uses the SONY Marks in its site’s domain name as well as in the title and body of its website. It only makes sense that if searchers see the Marks listed in the body of the <SonyGroup.com> domain web page and numerous links to other goods and services are also listed on that page, searchers will be confused and led to believe that, even if the goods and services are not those of Complainant, they are at least affiliated with, endorsed or sponsored by Complainant.
(b) Respondent has no rights or legitimate interest in the <SonyGroup.com> Domain Under Policy ¶4(a)(ii). Section 4(c) of the Policy sets out certain circumstances which, if proven by the evidence presented, may demonstrate Respondent’s rights or legitimate interests to the <SonyGroup.com> domain. None of these circumstances apply to Respondent in the present dispute.
Respondent’s actions are not a bona fide offering of goods or services under Policy ¶4(c)(i). Through the use of a classic pay-per-click website, Respondent’s domain name diverts Complainant’s customers and potential customers to Respondent’s pay-per-click website and then to other websites, some of which are owned by Complainant and others which are owned by unrelated companies. ICANN panels have found that leading consumers who are searching for a particular business, to a site where services provided by others are listed, is not a bona fide use. Homer, TLC Inc. v. Kang, NAF Case No. FA573872 (“Respondent’s use of domain name that is identical to Complainant’s mark to divert Internet users to third-party website for Respondent’s own commercial gain does not constitute a bona fide offering ... or a legitimate noncommercial or fair use ....”).
Respondent is not commonly known by the <SonyGroup.com> domain or the name SONY and so its actions do not fall within Policy ¶4(c)(ii). Upon information and belief, Respondent is not commonly known by any of Complainant’s Marks, nor does Respondent operate a business or other organization under such marks or names and does not own any trademark or service mark rights in these names. See, Dell Inc. v. George Dell and Dell Net Solutions, WIPO Case No. D2004-0512 (Regarding the domain <dellnetsolutions.com> “there is no evidence that the Respondents’ business has been commonly known by that name. Further, the Respondents added terms to the surname to create the disputed domain name.”)
Respondent is not making a legitimate noncommercial or fair use of the <SonyGroup.com> domain without intent for commercial gain, and so its actions do not fall within Policy ¶4(c)(iii). Instead, Respondent is using the <SonyGroup.com> domain to confuse and misleadingly divert consumers, or to tarnish the Marks of the Complainant. In Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649 the Panel noted that “The 3 domain names in issue use the PORSCHE trademark to attract potential customers to the generic [auto] loan business.” The Panel held that such use, in a domain name, of one manufacturer’s trademark to offer products or services relating to goods sold under that trademark and also other manufacturer’s trademarks did not constitute a legitimate or fair use of the domain. Id.
Further, in Athanasios, supra, the Panel found that respondent’s use “could in no way be characterized as fair, because consumers would think that they were visiting a site of the Complainant until they found that instead they were in a directory which would do the Complainant potential harm”. Here, searchers for Complainant’s various goods and services, who found the <SonyGroup.com> domain, would be confused and think they were visiting a site of the Complainant’s until they discovered that they were in a directory of links to other goods and services. Such use cannot be considered fair. See, Mpire Corporation v. Michael Frey, WIPO Case No. D2009-0258 (“While the intention to earn click-through-revenue is not in itself illegitimate, the use of a domain name that is deceptively similar to a trademark to obtain click-through-revenue is found to be bad faith use. See for instance L’Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc. WIPO Case No. D2005-0623.”)
Lastly, Respondent’s use has tarnished and diluted the SONY Marks. Respondent has diminished consumers’ capacity to associate the Marks with the quality products and services offered under the Marks by the Complainant by using the Marks in association with a directory site which provides links to numerous products and services not associated with or related to the Complainant’s quality branded products and services. Respondent’s use creates the very real risk that Complainant’s trademarks are not only being associated with numerous products and services not related to Complainant’s branded services, but also to products and services linked to directory sites over which Complainant has no quality control.
(c) Respondent Registered The <SonyGroup.com> Domain In Bad Faith Under Policy ¶4(a)(iii). The Policy clearly explains that bad faith can be found where a Respondent, by using a domain name, intentionally attempts to attract, for commercial gain, Internet searchers to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location. See Policy ¶4(b)(iv).
Respondent intentionally used the SONY Marks without consent from Complainant. Respondent was put on both actual notice of Complainant’s rights in its Marks through Complainant’s extensive prior use of the Marks which long predates the creation date of the <SonyGroup.com> domain. See, American Funds Distributors, Inc. v. Domain Administration Limited, WIPO Case No. D2007-0950 (“the extensive prior use of that name and the fact that it comprises the dominant part of several U.S. registered trademarks provided constructive knowledge of the Complainant’s trademark rights….”). Therefore, Respondent knowingly and intentionally used the SONY Marks in violation of Complainant’s trademark rights.
Next, the Policy clearly explains that bad faith can be found where a Respondent “registered or … acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark … for valuable consideration in excess of [its] documented out-of-pocket costs ….” See Policy ¶4(b)(i). In Martha Stewart Living Omnimedia. Inc. v. Josh Gorton, WIPO Case No. D2005-1109 it was held that “Respondent registered the disputed domain names primarily for the purpose of selling them to the Complainant for an amount greatly in excess of any documented out-of-pocket costs incurred by the Respondent and directly related to the domain names. The Respondent’s unsolicited offer to sell these domain names to the Complainant on the very day the Respondent registered the marks, with the thinly veiled threat that he otherwise would put them up for sale to the highest bidder, is compelling evidence of the Respondent’s bad faith….” See also, Bank of Ireland Securities Services Limited v. David Boissonnault, WIPO Case No. D2004-0352 (Respondent offered to sell the domain to complainant and “is apparently aware that the domain name is or would be valuable to Complainant.”); Yasmin Abadian v. Thomas Gibson, NAF Claim No. FA 1522396 (2013) (“The Panel agrees that by offering the domain name for sale for $1,500 dollars, Respondent has evidenced bad faith in registering and using the domain name.”); Microsoft Corporation v. sripaskaran ratansothy, NAF Claim No. FA 1476225 (2013) (Respondent “ offered to cancel the domain names if Complainant would donate $20,000 to” a particular charity. The Panel found that Respondent had registered and was using the subject domain names in bad faith under Policy ¶4(b)(i).).
In the present case Respondent sent an unsolicited email to Complainant on June 21, 2014 offering to exchange the <SonyGroup.com> domain for certain SONY branded merchandise. In an email to Complainant, Respondent states:
I am a big fan of Sony products and I use only Sony products till now. I am interested to buy Sony 3d TV model no. KD-65X9004A which is very costly and my budget don't allow for the same. I have domain name sonygroup.com which I want to sell you to get this product. You are requested to please consider my request and confirm the transaction.
The Sony Bravia KD-65X9004A television has a suggested retail price of approximately US$6,400. Presumably, Respondent paid only a miniscule fraction of this amount to register its domain. From this evidence there cannot be any doubt but that Respondent sought to extort a price from Complainant for the <SonyGroup.com> domain which is far in excess of his out-of-pocket costs and so it is clear that Respondent acted in bad faith under Policy ¶4(b)(i).
Further, respondent is obtaining commercial gain from its use of the website at the <SonyGroup.com> domain. This is a directory or “pay-per-click” website providing a listing of hyperlinks which lead to goods and services, some of which are similar to those offered by Complainant. Upon information and belief, each time a searcher clicks on one of these search links, Respondent receives compensation from the various website owners who are linked through the website of the <SonyGroup.com> domain. Most likely, Respondent receives compensation based upon the number of hits the website owners get from being linked to the directory site. See AllianceBernstein LP v. Texas International Property Associates - NA NA, WIPO Case No. D2008-1230, and Brownells, D2007-1211 (finding in similar cases that a respondent intentionally attempted to attract internet searchers for commercial gain).
In, AllianceBernstein the respondent registered the domain name <allaincebernstein.com>, which was indisputably identical to the complainant’s ALLIANCEBERNSTEIN mark. The domain name led to a search directory website with links to third party vendors, including competitors of complainant. Id. The Panel inferred that the respondent received click-through fees by directing users to various commercial website via these links and found that the respondent’s use was for commercial gain and was in bad faith under Policy ¶4(b)(iv). Id.
In Brownells, the respondent registered the domain name <brwonells.com>, which the panel found to be nearly identical to the complainant’s mark, with two of the letters in the mark reversed. Brownells, D2007-1211. The respondent’s website offered links to hunting equipment and related items. Id. The panel found that such listing of links were provided purely for respondent’s commercial gain. Id.
Here, Respondent’s generation of click-through fees from its operation of a pay-per-click site under the <SonyGroup.com> domain alone constitutes commercial gain. See AllianceBernstein, D2008-1230. Moreover, similar to the facts in Brownells and AllianceBernstein, Respondent’s use of the domain name and website results in a commercial gain for others by placing links to competitors of Complainant and other individuals, groups or entities on its website. Just as commercial gain was sought for the respondents in the abovementioned cases, commercial gain was sought by Respondent here for itself and the various website owners who were linked to the web pages of the <SonyGroup.com> domain. Respondent’s use of this domain name is commercial because the various companies linked to the directory sites of the <SonyGroup.com> domain benefit from the subsequent interest and purchases of those searches. ICANN Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial. See, Focus Do It All Group v. Athanasios Sermbizis, WIPO Case No. D2000-0923 (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial).
Of course, as the owner of the <SonyGroup.com> domain, Respondent is entirely and solely responsible for the content of its website. See, Disney Enterprises, Inc. v. ll, NAF Claim No. FA1007001336979 (2010) (Respondent acted in bad faith, despite its claimed lack of control over the content on its parked, pay-per-click website); MasterCard International Incorporated v. Banu Asum Kilich, WIPO Case No. D2009-1525 (Panel agreed with complainant’s assertion that “as the owner of the disputed domain name, [respondent] is responsible for the contents of the website, regardless of whether a third party profits from the links placed on the website.”
Further evidence of Respondent’s bad faith in the present case is provided by the pattern of conduct in which Respondent has engaged involving cybersquatted domain names. Policy ¶4(b)(ii). In addition to the <SonyGroup.com> domain, Respondent is also the owner of additional domain names which incorporate globally or locally famous brands. These include the following:
· atari.info (Atari games)
· kodakcameras.org (Kodak cameras)
· nikon.tv (Nikon cameras)
· onionnews.com (The Onion satire news site)
· superman.co.in (Superman character from DC Comics)
· windowshosting.co.in (Microsoft Windows)
· arjunrampal.com (Arjun Rampal movie star in India)
· ashmay.com (Ash and May characters from Pokemon)
· bhoomigroup.com (Bhoomi Group construction firm in India)
· datainn.com (Data Inn in Jaipur, India)
· marwahgroup.com (Marwah Group architecture firm in India)
· maxxstore.com (Maxx Store online retailer)
· taiwantoday.com (Taiwan Today news site)
It is worth noting that Respondent has listed most of the above domains as “For Sale” at a website called AfterNIC.com.
In the case of Elorg Company, LLC and The Tetris Company, LLC v. 0x90, NAF Claim No. 114355 (2002), the Panelist found that “[t]he evidence reveals that Respondent has engaged in a pattern of conduct designed to deprive trademark owners, including the instant Complainant, from reflecting their marks in a corresponding domain name, within the meaning of paragraph 4(b)(ii) of the Policy. * * * Respondent has registered a number of domain names incorporating such distinctive marks as PENTIUM, PEZ, BOUNTY, and BOUNCE”. Id. The above list shows that Respondent, in the present case, similarly has deprived trademark owners from reflecting their marks in corresponding domain names and this exact finding has been made by the Panel in the Lockheed Martin Corporation decision, supra. (“Respondent registered the <lockheed.email> and <lockheedmartin.email> domain names in order to prevent Complainant from reflecting the marks in corresponding domain names. Respondent has engaged in a pattern of such registrations.”).
Finally, as more fully set forth above, Respondent’s bad faith is demonstrated by its intentional use of the SONY Marks in its domain name to attract Internet searchers by creating a likelihood of confusion with Complainant’s Marks. See, e.g., DIRECTV, Inc v. Digi Real Estate Foundation. Thus, all of the factors under Policy ¶4(b)(iv) strongly demonstrate that Respondent has registered and used the <SonyGroup.com> domain in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.
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. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, 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.”).
Complainant is a prominent manufacturer of electronic products, including televisions sets, sound systems, cameras, computers, mobile phones, a music recording label, and a motion picture production studio. Complainant owns numerous registrations for the SONY mark around the world, including with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 785,967 registered March 2, 1965) and the Swiss Federal Institute of Intellectual Property (“IPI”) (Reg. No. 242,971 registered July 3, 1967). Providing a registration for a given mark with the USPTO or other national trademark authority is normally sufficient to establish rights in that mark. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”). Complainant’s registrations with the USPTO and IPI are adequate to establish its rights in the SONY mark under Policy ¶4(a)(i).
Complainant claims Respondent’s <sonygroup.com> domain name is confusingly similar to Complainant’s SONY mark. Respondent uses Complainant’s SONY mark in its entirety and adds the generic term “group.” Complainant is commonly known by the term “Sony Group” in reference to Complainant’s various business units. Merely adding the descriptive word “Group” does not adequately distinguish Respondent’s domain name from Complainant’s mark. Respondent also adds the generic top-level domain (“gTLD”) “.com” to Complainant’s SONY mark. Adding a gTLD (or ccTLD) does not adequately distinguish Respondent’s domain name from Complainant’s mark, especially since domain name syntax requires them. See AOL Inc. v. Morgan, FA 1349260 (Nat. Arb. Forum Nov. 4, 2010) (concluding that the addition of the generic top-level domain (“gTLD”) “.com” does not distinguish the disputed domain name from the mark). Respondent’s <sonygroup.com> domain name is confusingly similar to Complainant’s SONY mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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 claims Respondent has no rights or legitimate interests in the <sonygroup.com> domain name under Policy ¶4(c)(ii). Respondent is not commonly known by the disputed domain name. Respondent does not operate a business or other organization under such marks or names and does not own any trademark or service mark rights in the SONY or SONY GROUP names. The WHOIS information for Respondent’s disputed domain name shows “Vinod Singh” is the registrant, which does not bear any relationship to the disputed domain name. Based upon the evidence in the record, this Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant claims 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 (iii). Respondent uses the disputed domain name to divert Complainant’s potential customers to Respondent’s pay-per-click website and then to other websites, some of which compete with Complainant. Respondent’s resolving website displays links, some of which including, “Website Monitoring Software,” “Remote Support Software,” “Employee Tracking Software,” “Employee Tracking Software,” “Sony Monitor,” and “What is Network Monitoring.” Using a disputed domain name to resolve to a website featuring links to third party websites is not a bona fide offering of goods or services, particularly where Respondent is collecting revenue from the website. 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). Respondent’s use of the disputed domain name to resolve to a website displaying content related and unrelated to Complainant does not properly create rights or legitimate interests in the <sonygroup.com> domain name under Policy ¶¶4(c)(i) or (iii).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent registered and is using the <sonygroup.com> domain name in bad faith under Policy ¶4(b)(i). Respondent emailed Complainant and said “I have domain name <sonygroup.com> which I want to sell you to get this [Sony 3d TV model no. KD-65X9004A] product.” The Sony Bravia KD- 65X9004A television has a retail price of roughly $6,400, which suggests it is worth considerably more than Respondent paid for the disputed domain name (especially since Respondent said he couldn’t afford to pay full retail price for the television). Previously, the panel in Gutterbolt, Inc. v. NYI Bldg. Prods. Inc., FA 96076 (Nat. Arb. Forum Dec. 29, 2000) held the consideration demanded in exchange for a domain name registration does not have to be monetary to run afoul of Policy ¶4(b)(i), but can be anything of value that exceeds the amount spent in registering and maintaining the domain name. It seems clear Respondent’s request for a television valued at $6,400 is an excessive request when compared to Respondent’s actual registration cost. This amounts to bad faith use and registration under Policy ¶4(b)(i).
Complainant claims Respondent has a pattern of bad faith use and registration under Policy ¶4(b)(ii). Complainant provides examples of other domain names Respondent has registered, displaying other notable trademarks resolving to websites similar to the one in question. Regrettably for Complainant, Policy ¶4(b)(ii) also requires the owner of the trademark be prevented from reflecting the trademark in a domain name. Complainant is able to reflect its trademark in multiple domain names. This means there is no bad faith registration and use in violation of Policy ¶4(b)(ii).
Complainant claims Respondent’s bad faith is further demonstrated by Respondent’s use of the <sonygroup.com> domain name in connection with a website that advertises links to websites promoting competing products. This results in Complainant’s business being disrupted. Complainant provided screenshots to substantiate its claims. Previous panels have found evidence of bad faith where a respondent provides links to competitors of the complainant through the confusingly similar domain name. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶4(b)(iii).”). This Panel is also convinced Respondent has engaged in bad faith registration and use of the <sonygroup.com> domain name under Policy ¶4(b)(iii).
Complainant claims Respondent uses the <sonygroup.com> disputed domain name to intentionally attempt to attract Internet users to its resolving website for commercial gain. Respondent profits from the confusion caused with Complainant’s mark about the source or endorsement of the website and the products displayed thereon. Respondent provides pay-per-click links which lead to goods and services, some in competition with Complainant. In Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006), the panel found that, “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. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).” Respondent is making a similar use of the disputed domain name here. Respondent’s use of the disputed domain name to provide links to Complainant’s competitors, which sufficiently demonstrates bad faith use and registration under Policy ¶4(b)(iv).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <sonygroup.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, August 15, 2014
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