WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sony Ericsson Mobile Communications AB v. El Shoval Case No. D2009-0088 1. The Parties
The Complainant is Sony Ericsson Mobile Communications AB of Lund, Sweden, represented by Bevan Brittan, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is El Shoval of Jerusalem, Israel. 2. The Domain Name and Registrar
The disputed domain name is registered with MyDomain, Inc. (fka NamesDirect). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2009. On January 23, 2009, the Center transmitted by email to MyDomain, Inc. (fka NamesDirect) a request for registrar verification in connection with the disputed domain name. On January 23, 2009, MyDomain, Inc. (fka NamesDirect) 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” or “UDRP”), 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 February 3, 2009. On February 3, 2009, the Respondent sent a short email to the Center, affirming that:
“1) he was willing to transfer the domain name; 2) he had no use for it; 3) he had no control over it; and therefore 4) he authorized to transfer the domain name at any time”. In accordance with the Rules, paragraph 5(a), the due date for Response was February 23, 2009. The Respondent did not submit any further response to the Center. The Center notified the Respondent's default on February 24, 2009.
The Center appointed Fabrizio Bedarida as the sole panelist in this matter on March 5, 2009. 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 (hereinafter referred to as the Complainant and/or Sony Ericsson) is a joint venture between Telefonaktiebolaget LM Ericsson incorporated in Sweden and the Sony Corporation of Japan. By virtue of this joint venture Complainant is entitled to use the combination of the trademarks SONY and ERICSSON.
The complainant has been producing and marketing mobile telephones and accessories under the SONY ERICSSON brand since October 2001.
The Complainant is one of the largest mobile phone manufacturers and providers in the world.
The Complainant owns many registrations worldwide for trademarks and domain names that consist of or contain the marks SONY and/or ERICSSON.
The disputed domain name (the “Domain Name”), which was registered on July 10, 2008, resolves to a website containing a number of pay-per-click links to websites offering mobile phone products and services including products relating to the Complainant. 5. Parties' Contentions A. Complainant
The Complainant claims that:
The Domain Name is confusingly similar to the aforementioned the Complainant's trademarks, domain names and company name;
The Respondent has no rights or legitimate interests in respect of the Domain Name;
Before the dispute, the Respondent had not been using the Domain Name in connection with a bona fide offering of goods and services;
At the time of the registration of the Domain Name, the Respondent was not generally known by the name SONY ERICSSON or by any similar name;
The Respondent does not own any rights in the name or marks SONY and/or ERICSSON. The Complainant has not licensed or otherwise permitted the Respondent to use its company name or trademarks or to apply for the registration of the Domain Name;
The Respondent knew the Complainant's trademarks at the time of the registration of the Domain Name;
The Domain Name resolves to a website containing a number of pay-per-click links to websites offering mobile phone products and services including products relating to the Complainant;
The Domain Name has been registered and is being used by the Respondent in bad faith;
According to information provided by Domain Tools on its website, the Respondent owns approximately 856 domain names, including ;
The Respondent is a serial cyber-squatter who is engaged in a pattern of registering domain names that are similar to, or a common mistyping of well-known trademarks;
The Respondent's address as listed in the WhoIs report is false;
The Respondent has failed to reply to any correspondence from the Complainant. B. Respondent
The Respondent on receipt of the Complaint, on January 22, 2009, sent an email to Complainant's representatives affirming that: “I have no use for this domain and would have gladly transferred it to you, had you asked me to do so (…) [omissis]”. On February 3, 2009, Respondent, in response to the Center's notification of Complaint, affirmed once more his willingness to transfer the Domain Name to Complainant.
However, the Respondent has not put on any formal Response, as requested under the Policy and the Rules in these proceedings. Accordingly, the Respondent is in default in these proceedings. 6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use by providing an efficient and quick administrative procedure.
Paragraph 15(a) of the Rules provides that the panel shall decide a complaint on the basis of statements and documents submitted and in accordance with the Policy, the Rules and any other rules or principles of law that the panel deems applicable.
Paragraph 4(a) of the Policy requires that the complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:
(i) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests with respect to the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
As was noted by the panel in The Cartoon Network LP, LLLP v. Mike Morgan,WIPO Case No. D2005-1132, “A number of panel decisions have considered the proper course where a respondent has unilaterally consented to transfer a disputed domain name to a complainant. There have been at least three courses proposed: (i) to grant the relief requested by the Complainant on the basis of the Respondent's consent without reviewing the facts supporting the claim (see Williams-Sonoma, Inc. v. EZ-Port, WIPO Case No. D2000-0207; Slumberland France v. Chadia Acohuri, WIPO Case No. D2000-0195); (ii) to find that consent to transfer means that the three elements of paragraph 4(a) are deemed to be satisfied, and so transfer should be ordered on this basis (Qosina Corporation v. Qosmedix Group, WIPO Case No. D2003-0620; Desotec N.V. v. Jacobi Carbons AB, WIPO Case No. D2000-1398); and (iii) to proceed to consider whether on the evidence the three elements of paragraph 4(a) are satisfied because the Respondent's offer to transfer is not an admission of the Complainant's right (Koninklijke Philips Electronics N.V. v. Manageware, WIPO Case No. D2001-0796) or because there is some reason to doubt the genuineness of the Respondent's consent (Société Française du Radiotéléphone-SFR v. Karen, WIPO Case No. D2004-0386; Eurobet UK Limited v. Grand Slam Co, WIPO Case No. D2003-0745).”
This Panel does not accept that a unilateral consent to transfer a disputed domain name by itself satisfies the three elements of paragraph 4(a) of the Policy, but deems that, where the Complainant has established its rights on a trademark that is identical or confusingly similar to the disputed domain name, a consent to transfer by the Respondent provides a basis for an order for transfer without the need to consider the paragraph 4(a)(ii) and 4(a)(iii) elements. 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, , be transferred to the Complainant.
Fabrizio Bedarida
Sole Panelist
Dated: March 13, 2009
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