WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sony Kabushiki Kaisha v. Damian Macafee/QTK Internet/ Name Proxy/Private Registration Case No. D2009-1134 1. The Parties
The Complainant is Sony Kabushiki Kaisha, t/a Sony Corporation (“Sony”) of Tokyo, Japan, represented by Arnold & Porter, United Kingdom.
The Respondent is Damian Macafee/QTK Internet/Name Proxy/ Private Registration of London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with UK2 Group Ltd. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 25, 2009. On August 25, 2009, the Center transmitted by email to UK2 Group Ltd. a request for registrar verification in connection with the disputed domain name. On August 26, 2009, UK2 Group Ltd. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. On August 31, 2009, the Center notified UK2 Group Ltd that the registrant information had changed from Damian Macafee to J Van Johns, advising that a domain name registration may not be transferred during a pending administrative proceeding, and asking that UK2 Group Ltd. restore the registrant details as set forth in the Registrar verification after verifying the accuracy of the information contained in the initial Registrar verification. On September 1, 2009, UK2 Group Ltd confirmed to the Center that the WhoIs information was changed back to Damian Macafee and that the domain name was on Registrar lock. 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 September 1, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was September 21, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on September 22, 2009.
The Center appointed Lawrence K. Nodine as the sole panelist in this matter on September 25, 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
Complainant Sony owns numerous current trademark registrations in the United Kingdom (“UK”) and in the European Community for the WALKMAN trademark including, but not limited to, the following:
(1) Registration No. 1,482,699 for WALKMAN in Class 9 and registered January 22, 1993;
(2) Registration No. 1,499,222 for MD WALKMAN in Class 9 registered May 27, 1994;
(3) Registration No. 1,499,227 for MINIDISC WALKMAN in Class 9 registered May 13, 1994.
Respondent registered the domain name on November 20, 2000.
Complainant through its domain name holding services owns the domain name which was registered on July 29, 1999. 5. Parties' Contentions A. Complainant
With respect to paragraph 4(a)(i) of the Policy, Complainant alleges that:
Complainant has used the WALKMAN trademark since 1979 on its electronic goods.
The goodwill and reputation of Complainant's WALKMAN trademark exists on a worldwide basis including in the UK.
Complainant owns numerous trademark registrations in the UK and in the European Community for the WALKMAN trademark in connection with a number of different International Classes.
The domain name is identical to a trademark or service mark in which the Complainant has rights.
With respect to paragraph 4(a)(ii) of the Policy, Complainant alleges that:
Respondent has no rights or legitimate interests in respect of the domain name.
Complainant first discovered that the domain name was registered by Respondent in or around July of 2009.
The website at “www.” resolves to a parked page that provides links to third party websites offering a range of products. It is believed that Respondent derives revenue on a “pay per click” basis when an Internet user clicks on the provided links. This commercial use is designed to tarnish the reputation of the WALKMAN trademark as Complainant has no control over the Respondent's use of the domain name and the quality or condition of the products or services offered for sale on the website. Further, Respondent's use of the WALKMAN trademark suggests that he is in some way associated with or endorsed by Complainant.
Complainant wrote to Respondent on August 3, 2009 at the address provided in the WhoIs search requesting the transfer of the Domain Name. The letter was not able to be delivered and was returned to Complainant.
Respondent's name is Damian Macafee who sometimes uses the proxy name QTK Internet or alias James M. Van Johns. There is no evidence that Respondent is using or ever has used the name Walkman in any commercial manner. Specifically, there is no evidence to support Respondent's use of mark as a business name, any other organized entity or as a trademark or service mark in connection with any goods or services.
Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use Complainant's mark in a domain name or in any other manner.
With respect to paragraph 4(a)(iii) of the Policy, Complainant alleges that:
The Domain Name should be considered as having been registered and used in bad faith because (i) Respondent registered the domain name in order to prevent Complainant from reflecting the mark in a corresponding domain name and (ii) Respondent has engaged in a pattern of such conduct.
Respondent has been the named respondent in the following ten (10) UDRP decisions all of which were ordered to be transferred to the complaining trademark owner. The cases demonstrate that Respondent has established a pattern of conduct for registering domain names that are similar to known trademarks:
- Carrefour v. Damian Macafee,WIPO Case No. D2002-1060
- Archer-Daniels-Midland Company v. Damian Macafee, WIPO Case No. D2003-0198
- The Guess Who v. QTK Internet/Name Proxy, James M. van Johns, WIPO Case No. D2007-0081
- Resicom Corporation, Inc v. Damien Macafee, WIPO Case No. D2001-0988
- Radisson Hotels International, Inc. v. Damian Macafee d/b/a QTK Internet, (Name Proxy) Claim No: FA0603000652870
- Mamas & Papas (Holdings) Limited, Mamas & Papas (Retail) Limited v. QTK Internet/Name Proxy, WIPO Case No. D2004-0496
- The Chancellor, Masters and Scholars of the University of Oxford v. Damian Macafee, WIPO Case No. D2001-0975
- Family & Children's Center Inc. v. James M. Van Johns a.k.a. Damian Macafee,WIPO Case No. D2004-0497
- SAZ Marketing AG v. James “SAZ” van Johns,WIPO Case No. D2004-0781
- Tom Lekyis v. Damian Macafee, NAF Claim No. FA0601000636552.
Additionally, Respondent is the owner of 1,221 domain names.
Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant's WALKMAN mark.
When Internet users access the parked page and see examples of electronic equipment and links to other websites with electronic goods for sale it is likely that the Internet user will conclude that the site at “www.” is in some way endorsed, affiliated or sponsored by Complainant. Moreover, Respondent is enjoying commercial gain off of Complainant's trademark by using it to attract visitors to his website and deriving revenue by using the site on a pay per click basis. This activity constitutes bad faith.
Use by Respondent of Complainant's well-known trademark can in itself indicate bad faith.
There are several decisions where bad faith has been found when a well-known trademark is registered as a domain name, such as Telstra Corporation Limited v. Nuclear MarshmallowsWIPO Case No. D2000-0003, Jupiters Limited v. Aaron Hall WIPO Case No. D2000-0574, and Ladbroke Group Plc v. Sonoma International LDC, WIPO Case No. D2002-0131.
It is inconceivable that when Respondent registered the domain name he was unaware of Complainant's rights in the WALKMAN trademark. The fact that Respondent's website contains commercial links to other websites offering competing goods with those of Complainant suggests that Respondent must have been aware of Complainant's trade mark and, as such amounts to bad faith on the part of Respondent.
In addition, Respondent's failure to update the information provided in the WhoIs report suggests that Respondent is attempting to conceal his identity. B. Respondent
Respondent did not reply to Complainant's contentions. 6. Discussion and Findings
Pursuant to the Policy, Complainant is required to prove the presence of each of the following three elements to obtain the relief it has requested: (i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) the Domain Name has been registered and is being used in bad faith. (Policy, paragraph 4(a).)
Because Respondent is in default, the Panel may draw negative inferences from Respondent's default (Rules, paragraph 14(b)). However, the Rules also require that the Complainant support its assertions with actual evidence in order to succeed in a UDRP proceeding. (Rules, paragraph 3). A. Identical or Confusingly Similar
Complainant has used the WALKMAN trademark in connection with its electronic products since 1979 and is the owner of numerous trademark registrations some of which are noted above. Given the thirty years of use of the WALKMAN mark and the existence of the UK and European Community trademark registrations for WALKMAN, the Panel finds that Complainant has trademark rights in the WALKMAN trademark.
The Panel also finds that the disputed domain name is identical to Complainant's WALKMAN trademark because it incorporates Complainant's entire trademark and differs from Complainant's registered WALKMAN marks only in that it contains “.net”. The addition of the generic top-level domain “.net” is without legal significance when comparing the domain name at issue to Complainant's registered trademark.
Therefore, this Panel finds that the disputed domain name is identical or confusingly similar to the trademark in which Complainant has rights in line with violation of the Policy, paragraph 4(a)(i). B. Rights or Legitimate Interests
In order for Respondent to demonstrate rights or legitimate interests in the Domain Name, it must show
(i) before any notice to you 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 (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 are making a legitimate non-commercial 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.
With respect to 4(c)(i) of the Policy, there is no evidence that Respondent, before any notice of the dispute, used or prepared to use the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services. The website at the time of filing contained links to “Tape Players” which when followed led to “TDK Electronics” data cartridges and “TASCAM” tape players which can be said to be in direct competition to Complainant. This is not a legitimate use within the meaning of the Policy, see Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. Moreover, the Domain Name as of the date of this decision still resolves to a page that displays products offered by Complainant's competitors. The website currently provides links not only to WALKMAN and other Sony products but also to “SanDisk SANSA” digital audio player and the “COBY” MP3 player also in direct competition with Complainant. This is not a bona fide use within the meaning of the Policy. See TM Acquisition Corp. v. Sign Guards, NAF Claim No. FA132439 (finding that the respondent's use of complainant's marks to divert Internet users to a web site which displayed a series of links, some of which were links to sites of complainant's competitors, was not a bona fide offering of goods or services).
With respect to 4(c)(ii) of the Policy, there is no evidence that indicates that Respondent has ever been commonly known by the Domain Name. Further, Complainant has never licensed nor otherwise permitted Respondent to use its WALKMAN trademark or to apply for any domain name incorporating the mark. There is no relationship between Complainant and the Respondent.
With respect to 4(c)(iii) of the Policy, Respondent has not made and is not making a legitimate non-commercial or fair use of the Domain Name and has not used the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. In fact, persons visiting Respondent's website will mistakenly believe that the site is either endorsed, affiliated or sponsored by Complainant. Moreover, Respondent is making commercial gain out of Complainant's trademark by using it to attract visitors to his website and deriving revenue by using the site on a pay per click basis.
A complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy. Morgan Freeman v. Mighty LLC,WIPO Case No. D2005-0263; see also Croatia Airlines d.d. v. Modern Empire Internet Ltd,WIPO Case No. D2003-0455; Belupo d.d. v. WACHEM d.o.o.,WIPO Case No. D2004-0110. The Panel finds that the aforementioned establishes a prima facie showing that Respondent has no rights or legitimate interests in the Domain Name at issue. Moreover, Respondent has not rebutted such a prima facie showing.
The Panel accordingly finds for Complainant under the second element of the Policy. C. Registered and Used in Bad Faith
Complainant's allegations of bad faith are not contested. It is improbable that Respondent was unaware of Complainant's trademark rights when it registered the disputed domain name on November 20, 2000, more than twenty years after Complainant began using its WALKMAN mark.
The Panel also finds that Respondent's use of the domain name in conjunction with a website that among other things, links not only to WALKMAN products but also to websites for competitors' products such as SANSA and COBY products is evidence of bad faith use and registration. Specifically, Respondent's conduct is covered by Policy paragraph 4(b)(iv): “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
Additionally, as Complainant notes, there are at least 10 UDRP decisions against Respondent for using well-known trademarks of others, or confusingly similar terms thereto, as domain names. This activity demonstrates a pattern of conduct from which an inference of bad faith can be drawn. See McIlhenny Company v. Express Personnel Advertising,WIPO Case No. D2006-0659 (“The fact that a respondent has a history of registering domain names that incorporate well-known marks is not conclusive that it has acted in bad faith, but the information is relevant and unrebutted has weight.”).
For the above reasons, the Panel finds that the disputed Domain Name was registered and used in bad faith. 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 Complainant.
Lawrence K. Nodine
Sole Panelist
Dated: October 12, 2009
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