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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Sony Corporation v. Domain Privacy Service and St. Kitts Registry

Case No. D2008-0795

1. The Parties

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

The Respondent is Domain Privacy Service of Florida, United States of America and St. Kitts Registry of Olam, St. Kitts and Nevis.

2. The Domain Name and Registrar

The disputed domain name <sonytelevision.com> is registered with Moniker Online Services, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 20, 2008. On May 22, 2008, the Center transmitted by email to Moniker Online Services, LLC a request for registrar verification in connection with the domain name at issue. On May 23, 2008, Moniker Online Services, LLC transmitted by email to the Center its verification response disclosing underlying registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 27, 2008, providing the underlying registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complaint filed an amendment to the Complaint on May 31, 2008. The Center verified that the Complaint together with the amendment to 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 June 2, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was June 22, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 23, 2008.

The Center appointed John Swinson as the sole panelist in this matter on June 30, 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.

The first Respondent (Domain Privacy Service) is simply a privacy domain name registration service. The Registrar has confirmed that the registered owner of the Domain Name is the second Respondent (St. Kitts Registry). For this reason, the Panel will treat St. Kitts Registry as the sole Respondent in this proceeding (See Xtraplus Corporation v. Flawless Computers, WIPO Case No. D2007-0070), and unless stated otherwise, any references to the Respondent will be to St. Kitts Registry.

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 (including televisions), operating studio facilities, 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 television aspects of the Complainant’s business. Information about the Complainant’s television programs can be obtained from the Complainant’s website at “www.sonypictures.com”. Information about the Complainant’s television products can be obtained from the Complainant’s website at “www.sony.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 of America (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 March 15, 2006.

The website operating from the disputed domain name contains links to other third party websites which relate to television equipment, such as “Cheapest Plasmas Online”, “Television”, and “Win a Big Screen TV”.

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. Some of the television programs produced and/or distributed by Sony Pictures Entertainment Inc include Seinfeld, Days of Our Lives and The Young and the Restless. 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 brand. The SONY 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 registered trade mark. The Respondent has incorporated the Complainant’s distinctive SONY mark in its entirety into the disputed domain name. The addition of a generic term such as “television” does not distinguish the domain name from the Complainant’s mark, particularly when the Respondent offers directly competing goods and services.

The Respondent intentionally and wrongfully chose to register a domain name that is virtually identical to SONY, 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 prominent “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 further (potentially discovering 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 and cannot demonstrate any legitimate offering of goods or services under the SONY mark.

The Respondent could not establish that it has been commonly known as “Sonytelevision” 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 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 “Sonytelevision”. 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 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 mark at the time of registration of the disputed domain name.

The Respondent has been a party to numerous domain name decisions, for example, Accolo, Inc. v. St Kitts Registry, WIPO Case No. D2007-1932 (<acollo.com>); The National Football League v. St Kitts Registry / Moniker Privacy Services, WIPO Case No. D2007-1839 (<nationalfootballleague.com>) and Six Continents Hotel, Inc. v. Registrant [721393]: St. Kitts Registry, WIPO Case No. D2007-0758 (<priorityclub.com>). In all of these decisions, the Respondent was found to have registered and used the domain name of a third party in bad faith, and such conduct indicates that the Respondent is a serial cyber squatter.

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 does not have registered trade mark rights in SONY TELEVISION.

However, 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 and SONY PICTURES as or as part of trade marks in various other countries around the world (for example, registered trade marks TMA332188 and TMA701787 in Canada; registered trade marks 164726 and 1029697 in Australia; registered trade marks 61202 and 727845 in New Zealand).

The Panel therefore finds that the Complainant has sufficient registered trade mark rights in both SONY and SONY PICTURES. The next question is whether the disputed domain name is identical or confusingly similar to either of these marks.

Ignoring the TLD suffix which is irrelevant when comparing a disputed domain name to a trade mark, the disputed domain name contains the Complainant’s SONY trade mark in its entirety. According to Chanel Inc. v. Estco Technology Group, WIPO Case No. D2000-0413 “when a domain name incorporates a complainant’s mark in its entirety, it is confusingly similar to that mark despite the addition of other words”.

The disputed domain name differs from the Complainant’s trade mark by adding the word “television”.

Previous panels have held that the addition of a generic term to a trade mark does not necessarily eliminate the likelihood of confusion. There are many previous UDRP decisions which have found a domain name to be confusingly similar to a registered trade mark where that name consists of the trade mark coupled with a generic term. (See for example, Minnesota Mining and Manufacturing Company v. Mark Overbey, WIPO Case No. D2001-0727.)

Furthermore as stated above, two large component of the Complainant’s business is producing and distributing television programs, and manufacturing home entertainment products (including televisions and a well-known game product, the “Sony Playstation”, that is often connected to televisions). The combination of “sony” with “television” creates an immediate potential for false association with the SONY trade mark and brand name, and a high degree of initial confusion (see for example, adidas-Salomon AG v. Digi Real Estate Foundation, Patrick Williamson, WIPO Case No. D2006-0748).

“Television” is a common word which describes the type of goods and services the Complainant offers. It also describes the goods being promoted on the disputed domain name website. The addition of this word is not enough to distinguish the disputed domain name from the Complainant’s trade mark, and accordingly the Panel finds that the disputed domain name is confusingly similar to the trade mark SONY.

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 Television” 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”), has not licensed or permitted the Respondent to use its SONY 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 links to a range of third party websites promoting televisions and related equipment (such as “Bravia Full HD LCD”, “Compare LCD TVs” and “LG Scarlet LCD TV”). These sites offer products of the Complainant’s direct competitors, and in some instances offer the Complainant’s own television products. 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 UDRP 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. Case No. D2005-0633).

Accordingly, the Panel infers that the Respondent intentionally chose a domain name which contained the Complainant’s well-known brand and trade mark, and merely added a word which is synonymous with the Complainant’s goods and services, for the purpose of redirecting 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 rights or legitimate 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 March 2006, many decades after the Complainant established its registered trade mark rights in SONY in the United States of America .

Pattern of behaviour

In relation to paragraph 4(b)(ii), the Panel notes that the first Respondent (Domain Privacy Service) was a respondent in two previous proceedings:

- Sportsman's Warehouse, Inc. v Sportswear for Men LLC./Domain Privacy Service WIPO Case No. D2008-0592.

- Reebok International Limited v Domain Privacy Service/Hong Kong Names LLC WIPO Case No. D2008-0359.

Both of these cases were decided in favour of the complainant. However, as the first Respondent was one of two respondents in both of these cases, and it is not entirely clear from these decisions which acts of bad faith can be attributed to the first Respondent (as opposed to the co-respondent in each case), the Panel cannot infer from these decisions that the first Respondent has engaged in a pattern of registering domain names in order to prevent the owner of the trade mark from using the domain name. Also, as mentioned above, the first Respondent is a privacy domain name registration service, so the Panel will focus on the actions of the second Respondent.

A search of previous panel decisions shows that the Respondent was a named respondent in a large number of proceedings, including:

- Accolo, Inc. v. St Kitts Registry, WIPO Case No. D2007-1932 (<acollo.com>);

- The National Football League v. St Kitts Registry / Moniker Privacy Services, WIPO Case No. D2007-1839 (<nationalfootballleague.com>);

- Nady Systems, Inc. v. Registrant [1075807]; St Kitts Registry / Moniker Privacy Services, WIPO Case No. D2007-1401 (<nadywireless.com>);

- UDR, Inc. v. Registrant 751722 / Domain Names Administration / St Kitts Registry, WIPO Case No. D2007-0963 (<uniteddominion.com>);

- The Professional Golfers Association of America v. MONIKER460461 / Domain Names Administration / St Kitts Registry, WIPO Case No. D2007-0900 (<scpga.org>);

- Six Continents Hotel, Inc. v. Registrant [721393] St. Kitts Registry, WIPO Case No. D2007-0758 (<priorityclub.com>);

- Benjamin Moore et al. v. Whois Data Shield and St Kitts Registry, WIPO Case No. D2007-0741 (<benjaminemoore.com>).

In all of these cases the domain name in question was transferred to the respective complainants.

The Panel infers from the significant number of 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.

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 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 mark, 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. Internet users looking for the Complainant’s products are very likely to search for “Sony Television”.

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 does not agree with the Complainant’s allegation that this is a case of typo squatting. This is because there is no obvious typographical error in the disputed domain name.

However, it is extremely likely that the Respondent knew of the Complainant’s trade mark and brand and recognized the popularity of the trade mark. The Respondent then registered a domain name which was likely to be confused with the Complainant’s trade mark and television-related business. 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 goods and services (in some cases offering the Complainant’s products for sale), and also lead to websites that provide goods and services which directly compete with the Complainant’s business, is further evidence of bad faith.

The Panel infers that the Respondent registered the disputed domain name in order to trade off the popularity of the Complainant’s SONY 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, <sonytelevision.com> be transferred to the Complainant.

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John Swinson
Sole Panelist

Date: July 14, 2008