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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sony Ericsson Mobile Communications AB v. PD Hosting Inc

Case No. DPH2006-0001

 

1. The Parties

The Complainant is Sony Ericsson Mobile Communications AB, , Lund, Sweden, represented by Bevan Brittan, LLP, United Kingdom of Great Britain and Northern Ireland.

The Respondent is PD Hosting Inc, Road Town, British Virgin Islands, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <sonyericson.com.ph> (“Domain Name”) is registered with DotPH Domains Inc. (“the Registrar”).

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2006. On August 3, 2006, the Center transmitted by email to the Registrar a request for registrar verification in connection with the domain name at issue. On August 7, 2006, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the .PH Uniform Domain Name Dispute Resolution Policy (the “Policy”), the .PH Uniform Dispute Resolution Implementation Rules (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 4, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 5, 2006.

The Center appointed Richard Tan as the sole panelist in this matter on September 12, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

 

4. Factual Background

The Complainant is a joint venture between Telefonaktiebolaget LM Ericsson, incorporated in Sweden and the Sony Corporation of Japan, with a principal place of business in Sweden. The joint venture was apparently formed in October 2001. The Complainant has been in the business of producing, distributing and marketing mobile telephones and accessories under the SONY ERICSSON brand since October 2001 all over the world and in the Philippines.

The Domain Name registered by the Respondent initially resolved to an advertising portal displaying the words “sonyericson.com.ph” and contained links to other mobile phone related websites and non-related services. The Domain Name subsequently resolved to a website relating to immigration. At the time of the Complaint the Domain Name did not resolve to any active website.

 

5. Parties’ Contentions

A. Complainant

The Complainant contends as follows:

(a) The Domain Name is confusingly similar to the Complainant’s well known trademark SONY ERICSSON and the registered trademark ERICSSON.

The Complainant contends that the two parts of the Complainant’s names, ERICSSON and SONY, are respectively registered individually by Telefonaktiebolaget LM Ericsson and the Sony Corporation of Japan. The SONY trademark has been registered worldwide by Sony Corporation including but not limited to the EU Office for Harmonisation in the Internal market on May 5, 1998, (No. 472) for inter alia apparatus and instruments for data communication. The ERICSSON trademark has been registered worldwide by Telefonaktiebolaget LM Ericsson including but not limited to the EU Office for Harmonisation in the Internal market on March 23, 1999, (No. 107003) and on February 15, 2001, (No. 1459130) in Classes 9, 11, 16, 35, 36, 37, 38, 41 and 42 for inter alia apparatus and instruments for data communication and in the Philippines on October 30, 2004, (No. 419990 09859) in Classes 9, 11, 16, 35, 36, 37, 38, 41 and 42 for inter alia apparatus and instruments for data communication, advertising and telecommunication services. The Complainant avers it is licensed to use the SONY ERICSSON trademark worldwide.

The Complainant also claims that by reason of the extensive use promotion and advertising of the Sony Ericsson business by reference to the SONY ERICSSON mark in the UK, Europe and internationally, including in the Philippines, the Complainant is the proprietor of a substantial goodwill and reputation in the mark in the field of mobile telecommunications based services and has trademark rights in the mark SONY ERICSSON. The Complainant has adduced evidence of its marketing activities in the Philippines.

The Complainant contends that the Domain Name differs from the trademark SONY ERICSSON only by the omission of the letter “s” found in the Complainant’s trademark. The Complainant contends that this omission is likely to go unnoticed by many Internet users and that the Domain Name is also likely to be mistyped by many when seeking to visit the Complainant’s website. The Complainant further contends that the Domain Name is phonetically identical to the Complainant’s SONY ERICSSON trademark;

(b) The Respondent has no rights or legitimate interests in respect of the Domain Name.

The Domain Name initially resolved to a website which predominantly featured sponsored links to other mobile phone related websites and subsequently resolved to a website relating to immigration. It was further noted that there is currently no active website attached to the Domain Name. The Complainant further avers that the Respondent is not or has never been known by the name SONY ERICSSON or by any such similar name.

(c) The Respondent’s registration and use of the Domain Name is in bad faith.

The Complainant contends that the Respondent’s use of the Domain Name is a deliberate attempt by the Respondent to attract, for commercial gain, Internet users to another online location by creating a likelihood of confusion with the Complainant’s SONY ERICSSON mark such that the public is likely to believe that the site to which the Domain Name resolves, or has resolved, is sponsored, endorsed or authorised by, or is in association with, the Complainant, which is not the case.

B. Respondent

The Respondent has not filed a Response.

 

6. Discussion and Findings

The Complainant has the burden of proving each of the following three elements under paragraph 4(a) of the Policy in order to be entitled to a transfer of the Domain Name:

(i) that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) that the Domain Name has been registered and is being used in bad faith.

The language of the Policy is very similar to that of the Uniform Domain Name Dispute Resolution Policy (UDRP). One difference however is that under paragraph 4(c)(iii) of the UDRP, a domain name registrant may not claim legitimate rights and interests if the registrant uses the domain “to tarnish the trademark or service mark at issue.” This clause does not however appear in the Policy. In view of the similarities, this Panel considers that it would be useful to have regard to prior panel decisions under the UDRP to interpret those parts of the Policy that adopt language similar to the UDRP.

The Respondent is required under the Rules to submit a Response to the Complaint within twenty days of the date of commencement of the administrative proceedings. In the event of a failure to submit a Response, paragraph 5(e) of the Rules provides that absent any exceptional circumstances, the Panel is to decide the dispute “based upon the complaint.” Paragraph 14(b) of the Rules further provides that if a party, in the absence of exceptional circumstances, fails to comply with any provision of the Rules, the Panel is entitled to “draw such inferences” from the Respondent’s failure to comply with the Rules “as it considers appropriate.”

As the Respondent has not submitted a Response, and there having been no exceptional circumstances brought to the attention of the Panel, in accordance with paragraph 5(e) of the Rules, this Panel is entitled to decide the dispute based on the Complaint and to accept as true the factual averments of the Complaint for the purposes of these proceedings, see Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009.

The Respondent’s default, however, does not lead to an automatic ruling in favor of the Complainant. The burden remains on the Complainant to establish, on a balance of probabilities, that it is entitled, under the Policy, to a transfer of the Domain Name, see World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D1999-0001.

A. Identical or Confusingly Similar

The Complainant is required under paragraph 4(a)(i) of the Policy to prove that the Domain Name is identical or confusingly similar to a trademark in which Complainant has rights.

The Complainant has averred that it is the licensee of a number of trademarks including the marks “ERICSSON” and “SONY ERICSSON”.

The Complainant has further contended that it is also the owner of or has the exclusive right to use the following domain names, which are registered at the “.ph” registry, and which the Complainant alleges divert users to the Complainant’s specific website in the Philippines<sonyericsson.ph>, <sonyericsson.com.ph>, and <sonyericson.ph>.

Although the Complainant is not the registered proprietor of the trademarks “ERICSSON” and “SONY ERICSSON”, but a licensee, a licensee of a trademark or a related company to the registered holder of a mark may be considered to have rights in a trademark under the UDRP, see Telcel, C.A. v. jerm and Jhonattan Ramirez WIPO Case No. D2002-0309 and Toyota Motor Sales USA Inc. v. J Alexis Productions WIPO Case No. D2003-0624.

In the present case, the Complainant claims to be a joint venture formed by the trademark proprietors of the “SONY” and “ERICSSON” marks and that it is licensed to use the combined mark “SONY ERICSSON”. The Complainant has also contended and adduced evidence that these marks have been used extensively throughout the world and in the Philippines.

Having regard to the evidence adduced by the Complainant, and considering that the evidence is unchallenged as no Response has been filed by the Respondent, this Panel accepts that the Complainant has rights in the mark “SONY ERICSSON” within the meaning of paragraph 4(a)(i) of the Policy. The Panel finds that there has been extensive use, promotion and advertising by the Complainant of the trademark “SONY ERICSSON”, and that the mark is well known internationally and in the Philippines.

Turning to the issue of confusing similarity under paragraph 4(a)(i) of the Policy, the Panel notes that the Domain Name, <sonyericson.com.ph>, differs from the “SONY ERICSSON” mark only by the omission of one of the two letters “s” in the word “Ericsson”, the omission of the space between the words that form the mark “SONY ERICSSON” and the addition of the “.com” gTLD and the “.ph” .

This Panel notes that there are numerous decisions under the UDRP which regard a difference of a single character as not being sufficient to prevent a finding of confusing similarity, and particularly where the trademark in question is highly distinctive, see Reuters Ltd. v. Global Net 2000, Inc., WIPO Case No. D2000-0441. A domain name will be considered similar even where the Respondent has omitted a space between those words that form the Complainant’s mark, see for example, Ann Coulter v. Mark Vadnais, National Arbitration Forum (NAF) Case No. FA137221 (where the domain name <anncoulter.com> was held to be identical to the mark “Ann Coulter”).

For the purposes of the present proceedings, and in the absence of a Response, the Panel is prepared to find that the combination of the unrelated words “SONY” and “ERICSSON” is distinctive, and that “SONY ERICSSON” and “sonyericson” are visually and phonetically similar, such that the Domain Name is confusingly similar to a trademark in which Complainant has rights within the meaning of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant is also required under paragraph 4(a)(ii) of the Policy to prove that the Respondent has no rights or legitimate interests in the Domain Name. The onus is initially on the Complainant to establish a prima facie case, and once this has been done, the onus shifts to the Respondent to prove the contrary. See Lucasfilm Ltd. and Lucas Licensing Ltd. v. Cupcake City and John Zuccarini, WIPO Case No. D2001-0700.

It has also been recognized by many panels that it is difficult for the Complainant to prove a negative for the purposes of paragraph 4(a)(ii) of the Policy, since it raises matters within the knowledge of the Respondent. Accordingly, many panels have held that it is sufficient that the Complainant show a prima facie evidence in order to shift the burden of proof on the Respondent (see, for example, Anti Flirt S.A. and Mr. Jacques Amsellem v. WCVC, WIPO Case No. D2000-1553, Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467).

In the present case, the Complainant asserts that the Respondent has no rights or legitimate interests in respect of the Domain Name. The Complainant also asserts that the Respondent is not commonly known by the name SONY ERICSSON or by any similar name. The Complainant further asserts that even if the Respondent had rights in the mark SONY ERICSSON since the registration of the Domain Name (which is denied by the Complainant), any such rights would be significantly pre-dated by the Complainant’s rights.

Even in the absence of a Response, this Panel remains obliged to consider whether any of the (non-exhaustive) circumstances provided in paragraph 4(c) of the Policy are present to support a finding of the Respondent having rights or legitimate interests in respect of the Domain Name, namely:

(i) before any notice to the Respondent of the dispute, the Respondent’s use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) the Respondent (as an individual, business, or other organization) has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is making a legitimate non-commercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers.

If any of the above circumstances is established, the Respondent may be said to have rights to or legitimate interests in the Domain Name for the purposes of paragraph 4(a)(ii) (see Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827), in which event, the Complaint must be denied.

Upon a review of the evidence filed, the Panel notes the Respondent’s original site contained a series of unrelated hyperlinks. There was no other content on the site. The Panel finds that the provision of a collection of links to third party sites, would not be enough to constitute a bona fide offering of goods or services.

The Respondent’s subsequent site provided information in relation to immigration. There appears however to be no correlation between the contents of the site and the Respondent or the name “sonyericson”. In any event the site is now inactive.

As the Respondent has not filed a Response, the Panel infers that the Respondent has no trademarks or service marks identical to “sonyericson”. There is also no evidence to suggest that the Respondent has been commonly known by the Domain Name.

On the totality of the evidence and in the absence of a Response, the Panel concludes that the Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

Paragraph 4(a)(iii) of the Policy provides that the Complainant must, in addition to the matters set out above, demonstrate that the Domain Name has been registered and used in bad faith.

Paragraph 4(b) of the Policy provides a non-exhaustive list of circumstances which, “if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith”, namely:

(i) circumstances indicating that the Respondent has registered or has 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 or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or

(ii) the Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or

(iii) the Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of its website or location or of a product or service on its website or location.

The Complainant asserts that the registration of the Domain Name and its subsequent use by the Respondent is or was a deliberate attempt by the Respondent to attract, for commercial gain, Internet users to another online location by creating a likelihood of confusion with the Complainant’s SONY ERICSSON mark such as the public might be misled into believing that the site to which the Domain Name resolved was or is sponsored, endorsed or authorised by or in association with the Complainant.

This Panel is satisfied that the Respondent, in providing links to third party websites relating to mobile phones, clearly had knowledge of the Complainant and its activities at the time of registration. The Respondent’s diversion of users to third party websites leads to the inference that the Respondent has used the Domain Name to intentionally attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s “SONY ERICSSON” mark as to the source, sponsorship, affiliation, and endorsement of Respondent’s website within the meaning of paragraph 4(b)(iv) of the Policy.

Accordingly, in the absence of the Respondent’s response to the Complainant’s assertions, the Panel finds that the Domain Name has been registered and is being used in bad faith by the Respondent within the meaning of paragraph 4(a)(iii) of the Policy.

 

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <sonyericson.com.ph> be transferred to the Complainant.

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Richard Tan
Sole Panelist

Dated: September 27, 2006