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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sony Corporation v. Privacy Ltd. Disclosed Agent for YOLAPT

Case No. D2008-0794

 

1. The Parties

The Complainant is Sony Corporation, of Tokyo, Japan, represented by Bryan Cave, LLP, United States of America.

The Respondent is Privacy Ltd. Disclosed Agent for YOLAPT of Isle of Man, United Kingdom of Great Britain and Northern Ireland.

 

2. The Domain Name and Registrar

The disputed domain name <sonypicturs.com> is registered with Fabulous.com.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008. On May 21, 2008, the Center transmitted by email to Fabulous.com a request for registrar verification in connection with the domain name at issue. On May 22, 2008, Fabulous.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (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 May 28, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 17, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 20, 2008.

The Center appointed John Swinson as the sole panelist in this matter on July 1, 2008. 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 publicly held company with its primary headquarters located in Tokyo, Japan. The Complainant’s shares are listed on numerous stock exchanges worldwide (including the New York, London and Tokyo stock exchanges).

The Complainant is involved in the business of, amongst other things, manufacturing and selling electronic and electrical equipment, and the production and distribution of music, motion pictures and television programs.

The Complainant has several subsidiary companies around the world and amongst them is Sony Corporation of America, based in New York, United States of America. A further indirect subsidiary of the Complainant is Sony Pictures Entertainment Inc, which is responsible for the motion picture arm of the Complainant’s business. Information about the Complainant’s movies and television programs can be obtained from the Complainant’s website at “www.sonypictures.com”.

The Complainant has registered the SONY trade mark in many countries around the world over a wide range of goods and services, including in Australia (see for example Australian Trade Mark Registrations numbers 355450 and 329700) and the United States (see for example United States Trade Mark Registration numbers 1836831 and 1622127). The Complainant also has registered trade marks throughout the world in respect of SONY PICTURES.

The Respondent registered the disputed domain name on June 5, 2004. The Respondent has previously had complaints brought against it under the Policy. Little else is known about the Respondent, other than it is based in the Isle of Man. The website operating from the disputed domain name contains links to products such as “Online movies” and “Online DVDs”.

 

5. Parties’ Contentions

A. Complainant

The Complainant makes the following contentions:

The Complainant (through its related companies and any predecessors in interest) has continuously been engaged in developing and providing entertainment products and services under the famous SONY and SONY PICTURES trade marks since at least the early 1960s.

The Complainant has several registered United States trade marks including those for SONY (registration no. 1258436), SONY PICTURES CLASSICS (registration no. 2130279), SONY PICTURES and device (registration no. 2032470) and SONY PICTURES CLASSICS (registration no. 1863070). The Complainant also has a pending trade mark application for SONY PICTURES (serial no. 76/620492) in the United States Patents and Trademarks Office.

Sony Pictures Entertainment Inc (which is a wholly owned indirect subsidiary of the Complainant) is the exclusive licensee of the Complainant’s SONY PICTURES registered trade mark.

For decades, Sony Pictures Entertainment Inc has been involved in the production and/or distribution of over 3,000 movies and 200 television programs in the United States of America and throughout the world. It also conducts business on the Internet and operates a website at “www.sonypictures.com” which contains information on movies, television, games and mobile content.

Since at least 1963, the Complainant and Sony Pictures Entertainment Inc have expended significant amounts of resources, money, time and effort in promoting, marketing, advertising and building consumer recognition and goodwill in the Complainant’s SONY and SONY PICTURES brand. The SONY PICTURES marks are extremely valuable and famous throughout the world and the Complainant also owns common law rights in these terms. A previous panel decision has acknowledged the fame and goodwill associated with SONY is recognized worldwide.

The disputed domain name is virtually identical and confusingly similar to the Complainant’s SONY PICTURES registered trade mark. The Respondent has incorporated the Complainant’s distinctive SONY PICTURES mark in its entirety into the disputed domain name, and the only difference is the removal of the “e” in the word “pictures”. Such an insignificant modification to the Complainant’s trade mark is typo-squatting as it seeks to take advantage of errors by Internet users in typing domain names.

The Respondent intentionally and wrongfully chose to register a domain name that is virtually identical to SONY PICTURES, to trade on the Complainant’s notoriety and goodwill. Visitors to the disputed domain name would think that they were visiting the Complainant’s authorized website. The website contains a “search” function on the home page. It is likely that users will utilize this function to quickly find what they are after, and will not explore the site (and potentially discover that it is an infringing site). The Respondent’s use of the disputed domain name is inconsistent with any claim of rights or legitimate interests.

The Respondent is not associated with the Complainant or any related entity, has not received authorization or license to use SONY PICTURES and cannot demonstrate any legitimate offering of goods or services under the SONY PICTURES mark.

The Respondent could not establish that it has been commonly known as “SonyPicturs” and has not sought registration of trade marks or trade names in the United States of America for this term.

The Respondent is not making any legitimate non-commercial use of the disputed domain name - rather it is using the name for the illegal and improper commercial purpose of trading on the Complainant’s goodwill to confuse consumers; misdirecting the Complainant’s customers to competing websites and intentionally tarnishing and diluting the Complainant’s valuable and well–known marks.

The Respondent registered and is using the disputed domain name in bad faith in violation of paragraphs 4(b)(ii), (iii) and (iv) of the Policy. The Respondent is intentionally attempting to divert for commercial gain Internet users to competing websites to confuse and mislead consumers. This generates traffic and sales commissions for its own commercial benefit, which constitutes bad faith, as does the mere act of typo squatting.

The website operating from the disputed domain name is a wholly commercial search portal site which contains links to third party websites, including sites that purport to offer motion picture and entertainment related products and services. These goods and services compete directly with the Complainant, and the links on this website refer to categories that one would expect to see on the Complainant’s own website. The categories on the Respondent’s website are clearly intended to cause confusion and take advantage of goodwill and reputation in the SONY PICTURES trade marks.

The Respondent’s actions are designed to disrupt and harm the Complainant’s business. Using an infringing and virtually identical domain name to divert users has caused and will continue to cause commercial detriment to the Complainant in terms of consumer confusion, lost sales and goodwill, and loss of ability to transact with customers and potential customers.

The Respondent does not appear to have any legitimate trade mark or other rights in the disputed domain name, and this further demonstrates bad faith in adopting and using “SonyPicturs”. This domain name is so obviously connected to a particular product or service and the Respondent has no connection to that product or service, which evidences opportunistic bad faith.

The Respondent knew of the Complainant’s substantial reputation in SONY PICTURES at the time of registration. The Respondent registered the mark decades after the Complainant started using the SONY mark and well after the first SONY trade marks were filed. The Respondent could not legitimately assert that it was not aware of the Complainant and its SONY PICTURES mark at the time of registration of the disputed domain name.

Searches show that the Respondent has registered or is otherwise connected with thousands of domain name registrations which appear to infringe the rights of other legitimate trade mark owners. For example: <hitlonhotels.com> (Hilton Hotels), <marrottrewards.com> (Marriott Rewards), <bankofawerica.com> and <bankofamrecica.com> (Bank of America). The Respondent also appears to have had at least three complaints brought against it under the Policy, and in each of these cases the Respondent was found to have registered and used a domain name in bad faith. This demonstrates that the Respondent is a serial cyber-squatter, who engages in a pattern of bad faith registration of domain names.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

 

6. Discussion and Findings

According to paragraph 15(a) of the Rules: “A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable”. Paragraph 4(a) of the Policy provides that the complainant must prove each of the following:

(i) that the disputed domain name is identical or confusingly similar to a trademark or a service in which the complainant has rights; and

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name has been registered and is being used in bad faith.

Paragraph 4(a) of the Policy states that the burden of proof lies with the Complainant to establish that all these three elements are satisfied.

A. Identical or Confusingly Similar

The Complainant has produced sufficient evidence to prove that it has registered trade mark rights in the marks SONY and SONY PICTURES in the United States of America.

The Panel is also satisfied that the Complainant has registered SONY PICTURES as or as part of a trade mark in various other countries around the world (for example, registered trade mark TMA701787 in Canada; registered trade mark 1029697 in Australia; registered trade mark 727845 in New Zealand).

Even in countries where SONY PICTURES may not be registered as a trade mark, the Panel also finds that, due to:

- the number of international and popular movies and television programs that have been produced under the mark;

- the long and sustained use of the SONY PICTURES mark by the Complainant and its related entities;

- the amount of time, money and resources spent by the Complainant in promoting the mark, and goods and services provided under the mark,

- the Complainant’s mark SONY PICTURES is a well– known mark in the business of producing and distributing films and television programs.

The Panel therefore finds that the Complainant has sufficient registered and common law trade mark rights in SONY PICTURES, and that SONY PICTURES is a

well-known mark around the world.

Ignoring the TLD suffix which is irrelevant when comparing a disputed domain name to a trade mark, the disputed domain name contains the majority of the Complainant’s trade mark. The disputed domain name only differs from the Complainant’s trade mark by removing the letter “e” in the word “pictures”. Furthermore, slight changes in a word may be purposeful misspellings, “designed to take advantage of mistakes that consumers are likely to make when intending to enter Complainant’s web site address” (see Infospace.com, Inc v Registrar Administrator Lew Blank, WIPO Case No. D2000-0069; Nicole Kidman v. John Zuccarini, WIPO Case No. D2000-1415; Hobson, Inc. v Carrington a/k/a/Party Night Inc., WIPO Case No. D2003-0317). An Internet user intending to the visit the Complainant’s official website (located at www.sonypictures.com) could quite easily mis-type “pictures”, and end up at the Respondent’s website.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s mark and the first element has been satisfied.

B. Rights or Legitimate Interests

According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

“(i) before any notice to you [Respondent] of the dispute, your 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) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

To succeed on this element, the complainant must make out an initial prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.

The Panel agrees with the Complainant that:

(i) the Respondent does not appear to be known by the term “Sony Picturs” or anything similar, and does not appear to have applied for any trade mark or trade name rights in this term;

(ii) the Complainant (which is well-known as SONY), and its subsidiary (which is well-known by the name SONY PICTURES), has not licensed or permitted the Respondent to use its SONY or SONY PICTURES trade marks;

(iii) the Respondent does not appear to be making a bona fide offering of goods or services from the website. The website currently provides a range of links under a broad subject headings (including “Online Movie”, “Buy DVD Movie Online” and “Download Movie”). The categories clearly relate to the Complainant’s business operations of producing and distributing motion pictures. When some of these links are followed, an Internet user can be led to goods and services which directly compete with the Complainant’s goods and services. The Respondent is clearly making a commercial use of the website, and the Panel infers that it is receiving a commercial profit from the sponsored links displayed on the website.

The Panel agrees with a previous decision which held that the word “sony”, as a coined word, is a well–known mark and it is unlikely that traders would legitimately choose to use it; it is more likely that the purpose is to create an impression of an association with the Complainant (see Sony Kabushiki Kaisha a/t/a Sony Corporation v. A Lista Brasil - Internet Solutions Ltd., WIPO Case No. D2005-0633).

Accordingly, the Panel infers that the Respondent chose a purposeful misspelling of the Complainant’s mark and domain name, to redirect Internet users to its own website. Such use cannot constitute a bona fide offering of goods of services, or a non-commercial or fair use and is therefore inconsistent with any claims of legitimate rights or interests. (see The Coryn Group, Inc., Apply Vacations West, Inc. v. V.S. International, WIPO Case No. D2003-0664).

The Complainant has presented a prima facie case indicating that the Respondent does not have any rights or legitimate interests in the disputed domain name. The Panel notes that the Respondent has failed to submit a Response in this proceeding. As such, the Respondent has failed to rebut the Complainant’s prima facie case.

Accordingly, the Panel finds that the second element is satisfied.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy enumerates four, non-inclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The Complainant alleges that the Respondent has engaged in the type of behaviour described in subparagraphs (ii), (iii) and (iv).

Subparagraph (ii) provides for circumstances where the respondent has engaged in a pattern of conduct of registering domain names in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name.

Subparagraph (iii) relates to respondents who have registered the domain name primarily for the purpose of disrupting the business of a competitor.

Subparagraph (iv) includes circumstances where the respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its website, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website.

The disputed domain name was registered by the Respondent in June 5, 2004, well after the Complainant established its registered trade mark rights in SONY PICTURES in the United States of America, and over seven years after the Complainant first registered its <sonypictures.com> domain name.

Pattern of behaviour

In relation to paragraph 4(b)(ii), a search of previous panel decisions discloses that the Respondent was also a respondent in the following matters:

- C. Crane Company, Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2008-0621 (involving the domain name <ccranecompany.com>)

- Ladbrokes Betting & Gaming Ltd. v. Privacy Ltd. Disclosed Agent for Yolapt, WIPO Case No. D2007-1702 (involving the domain name <ladbrookes.com>)

- Facebook Inc. v. Privacy Ltd. Disclosed Agent for YOLAPT, WIPO Case No. D2007-1193 (involving the domain name <face-book.com>).

The Complainant also refers to Sears Brands, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT, NAF Case No. 1074743 (<searscommercial.com>) and Chevron Intellectual Property LLC v. Privacy Ltd. Disclosed Agent for YOLAPT, NAF Case No. 1080422 (<texacochevroncards.com>).

In all of these cases the domain name in question was transferred to the respective complainants. The Panel infers from these prior proceedings that the Respondent has engaged in a pattern of registering domain names which are identical or confusingly similar to third party trade or service marks, with the purpose of preventing those third parties from using their trade mark in a domain name. This inference is also assisted by the list of domain names currently owned by the Respondent that appear to be purposeful mis-spellings of well–known trade marks (for example, <hitlonhotels.com>, trading off the Hilton Hotels trade mark; <lacosste.com>, trading off the Lacoste trade mark).

Accordingly, the Panel finds that bad faith on the part of the Respondent has been established under paragraph 4(b)(ii).

Disruption of business

In relation to paragraph 4(b)(iii), the Panel agrees with the Complainant that the Respondent has registered the disputed domain name to disrupt the business of the Complainant. Under this limb, there are three elements that must all be satisfied for a finding against the Respondent, being that: the Respondent knew of the Complainant’s business, the “primary purpose” of the Respondent’s registration was to disrupt the Complainant’s business, and the Respondent and the Complainant are competitors. (See RuggedCom, Inc. v. LANstore, Inc., WIPO Case No. 2005-0760).

Given the fame and reputation in the SONY and SONY PICTURES marks, and the fact that its goods and services are distributed throughout the world, the Panel infers that the Respondent knew of the Complainant’s business.

Was the Respondent’s primary purpose in registered the disputed domain name to disrupt the Complainant’s business? The Panel infers that this was the primary purpose for the following reasons:

(i) the Complainant’s business is well–known and famous worldwide;

(ii) the Respondent has failed to provide evidence of any other purpose (legitimate or otherwise); and

(iii) the nature of the links contained on the Respondent’s website indicates that the Respondent was aware of the Complainant’s business, and by offering similar goods and services to the Complainant, had a clear intention of diverting business from the Complainant to the Respondent.

It may be argued that the Respondent is not a competitor of the Complainant. However, as noted in GB Investments, Inc. v. Donald Baker WIPO Case No. D2007-1320: “In engaging in this commercial activity, Respondent did (if only indirectly) become a competitor of Complainant and attracted Internet users for commercial gain, and in so doing it must have been apparent to the Respondent that this would have a disruptive effect on the business of the Complainant.”

The Panel therefore finds that bad faith has been established under paragraph 4(b)(iii).

Creating confusion for commercial gain

In relation to paragraph 4(b)(iv), the Panel has already found that the Respondent chose a purposeful misspelling of the Complainant’s mark and domain name, in order to create confusion among Internet users and redirect them to the Respondent’s own website. This is because failing to type an “e” in the word “pictures” is a mistake people may commonly make.

It is very likely that the Respondent knew of the Complainant’s trade mark and brand, recognized the popularity of the trade mark and knew that the Complainant promoted its business via a website. The Respondent then registered a domain name which was likely to be confused with the Complainant’s trade mark and own domain name. The Respondent is clearly making a commercial gain from the website, by providing sponsored links to goods and services. The fact that these goods and services clearly relate to the Complainant’s business, and lead to websites that provide goods and services which compete with the Complainant’s business, is further evidence of bad faith.

The Panel infers that the Respondent registered the disputed domain name, relying on one misspelling which Internet users are likely to make, in order to trade off the popularity of the Complainant’s SONY PICTURES brand for commercial gain.

Accordingly, the Panel also finds that bad faith on the part of the Respondent has been established under paragraph 4(b)(iv).

 

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, <sonypicturs.com> be transferred to the Complainant.

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John Swinson
Sole Panelist

Dated: July 14, 2008