WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Sony Kabushiki Kaisha (also trading as Sony Corporation), Sony Europe (Belgium) N.V. v. MCS Bulgaria 2003 Case No. D2009-1294 1. The Parties
The Complainants are Sony Kabushiki Kaisha (also trading as Sony Corporation) of Tokyo, Japan and Sony Europe (Belgium) N.V. of Zaventem, Belgium, represented by SafeNames Ltd., United Kingdom of Great Britain and Northern Ireland.
The Respondent is MCS Bulgaria 2003 of Sofia, Bulgaria. 2. The Domain Names and Registrar
The disputed domain names and (“Domain Names”) are registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainR (“Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 1, 2009. On October 1, 2009, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On October 7, 2009, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of each of the Domain Names and providing the Respondent's contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainants filed an amendment to the Complaint on October 8, 2009. 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” 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 October 9, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was October 29, 2009. The Response was filed with the Center on October 26, 2009, which was duly acknowledged by the Center on October 27, 2009.
The Center appointed William P. Knight as the sole panelist in this matter on November 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.
On November 6, 2009, the Center received a supplemental filing from the Complainants and on November 16, 2009, a supplemental filing from the Respondent. In each case, the Center acknowledged receipt of the supplemental filing and brought it to the Panel's attention. 4. Factual Background
The first Complainant is a Japanese corporation world-renowned for its manufacture and supply of a wide variety of cameras, video-recorders and electronic devices, including for personal entertainment and computer products, under the name SONY. The first Complainant owns many trade mark registrations, including International (Madrid Convention) Trade Marks and Community Trade Marks, referred to in the Complaint. It and its subsidiaries also own and use many domain name registrations including the trade mark SONY, such as , many of which were also referred to in the Complaint. The trade mark SONY is without doubt a well-known mark. The second Complainant is a subsidiary of the first Complainant.
The Respondent, a Bulgarian entity, registered the Domain Name on June 16, 2006, and the Domain Name on December 26, 2008. The letter group “bg” is the country code suffix for Bulgaria.
Under the websites of both Domain Names at issue, Sony personal computers and their specifications are displayed. On the entry page of the website at , where the Sony products are displayed, there are also links to product pages for competing products, primarily those of Toshiba. This does not appear to have been the case with the website at at the time of filing the Complaint. The website at is no longer operating. 5. Parties' Contentions A. Complainants
The Complainants assert that the Domain Names are confusingly similar to the SONY trade mark in that the dominant component of each is the word “sony”, the letter group “bg” in each case is the common identifier of a Bulgarian website or business, and the top level domain “.com” is not a distinguishing element. Likewise, the use of a hyphen in one of the Domain Names is of no significance.
The Complainants further assert that the Respondent has “no conceivable legitimate reason to utilise” the SONY trade mark because the websites under the Domain Names are not authorized by the Complainants and the websites “are not being used in connection to [sic] the provision of bone fide [sic] goods and services.” The Complainants also note that images of the Complainants' products are displayed on the Respondent's website without the Complainant's permission, that there is no disclaimer of any association with the Complainants on the Respondent's websites, or acknowledgement “that the domain names are unauthorized distributors of Sony Products” and, according to the Complainants, this is “against the Complainants rights [sic].” The Complainants say that, because the Respondent and a related entity IMPEX Bulgaria JSC are also suppliers of the competing products of Toshiba, this is indicative that the use of the Domain Names is not “bone fide”.
The Complainants argue that such use of the Domain Names is misleading Internet users and is use in bad faith. B. Respondent
In its Response, the Respondent acknowledges the similarity between the Complainants' trade mark SONY and the Domain Names. The Respondent argues that it is not unlawful in Bulgaria to offer for sale the Complainants products by reference to the Complainants' trade marks, and the Respondent therefore needs no authorization from it to do so. The Respondent argues that this gives it a legitimate interest in each of the Domain Names, that is, to refer to the Complainants' own products. The Respondent says that it is not misleading Internet users to take business away from the Complainants but, in fact, furthering the business of the Complainants in Bulgaria by selling their products. Finally, the Respondent argues that its use of the suffixes “bg” and “.com” prevents the possibility of confusion of its Bulgarian customers and that it has taken care, in the design and overall appearance of the websites under the Domain Names, to prevent confusion with the Complainants. The Respondent does not deny that there is no acknowledgement of the Complainants or disclaimer on the Respondent's websites of any association with the Complainants. 6. Discussion and Findings A. Procedural Matters
Paragraph 15 of the Rules prescribes that the Panel shall decide a complaint on the basis of the statements made and documents submitted and in accordance with the Policy, the Rules and any principles of law that it deems applicable.
As already observed, the Center received further submissions from the Complainants and the Respondent on November 6, 2009 and November 16, 2009 respectively, each of which included a request that the supplemental filing be considered as a Reply. The Complainants submit that they should be entitled to so by virtue of paragraph 10(b) of the Rules which states: “In all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case.” The Complainants argued that the Response included arguments and facts, namely the state of Bulgarian law relating to the use of trade marks in reference to the importation and distribution of goods properly bearing those trade marks, requiring a reply to maintain fairness within this proceeding. The Respondent responds arguing that the state of Bulgarian law should be regarded as relevant.
Neither supplemental filing was requested by the Panel pursuant to paragraph 12 of the Rules. Paragraph 12 of the Rules makes it clear that the Panel alone must decide whether it requires further statements or documents from either of the Parties. There is no provision for a right of reply on the part of either Party. Unless a compelling reason is presented, such as new facts relevant to the determination, that requires a response, it would be contrary to the objectives of the Policy and the Rules, that is to ensure a speedy and inexpensive determination of the relevant issues, to invite protracted supplementary pleadings and evidence. Each Party is given a single opportunity to present everything of relevance and, if it fails to do so, there must be very compelling reasons to invite further contributions and then, usually, each Party will be invited to do so, limited to the specific issue requiring clarification.
The Complainants supported their request for consideration of the Reply by reference to a number of decisions, namely Document Technologies, Inc. v. International Electronic Communications, Inc.,WIPO Case No. D2000-0270, Universal City Studios, Inc. v. G.A.B. Enterprises,WIPO Case No. D2000-0416, Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale,WIPO Case No. D2000-0662, Electronic Commerce Media, Inc. v. Taos Mountain, NAF Claim No. 95344 and Viz Communications, Inc. v. Redsun dba and David Penava,WIPO Case No. D2000-0905 (as well as a reference to “Parfums Christian Dior S.A.” for which no citation was given). None of these decisions for which a citation was provided supports the Complainants' request and, in fact, each provides cogent reasons to the contrary.
Furthermore, there is nothing in the Response calling for or justifying a Reply from the Complainants and for reasons made clear in the discussion below, the Respondent needs no supplemental filing to make its point as to the relevance of Bulgarian law.
In this case, therefore, upon considering the Complainants' and the Respondent's submissions, the Panel rejects the supplemental filings of each, the Complainants and the Respondent. B. Substantive Matters
Pursuant to paragraph 4(a) of the Policy, the Complainants must establish each of the following three elements to prevail in their request for transfer of the Domain Names from the Respondent:
1. The Respondent's Domain Names are identical or confusingly similar to a trade mark or service mark in which the Complainants have rights; and
2 The Respondent has no rights or legitimate interests in respect of the Domain Names; and
3. The Domain Names have been registered and are being used in bad faith. 1. Identical or Confusingly Similar
The Panel finds that the Complainants have registered trade mark rights in SONY. The Panel is satisfied that the Domain Names are confusingly similar to the Complainants' SONY trade marks in that the dominant component of each of the Domain Names is the word “sony”, the letter group “bg” in each Domain Name is the common identifier of a Bulgarian website or business, and the top level domain “.com” does not serve as a distinguishing element. Likewise, the use of a hyphen in one of the Domain Names is of no significance.
Further, the Respondent acknowledges that each of the Domain Names is similar to the Complainants' registered trade mark SONY for the purpose of satisfying paragraph 4(a)(i) of the Policy.
The first element of the UDRP is satisfied. 2. Rights or Legitimate Interests
It is not disputed that the Respondent is not licensed by the Complainants nor, presumably, by any of the Complainants' related corporations to use the SONY trade mark in the Domain Names. The Respondent does not pretend to be known by the name SONY. The further question of whether the Respondent has a legitimate interest in doing so is a much more difficult one.
There is no doubt, it would appear from the Complaint and the Response, that the Respondent is promoting the Complainants' products for sale by it from its shop in Sofia, Bulgaria. The Complainants' assertions in the Complaint that, in doing so, the Respondent is intentionally setting out to mislead Internet users and to tarnish the Complainants' reputations is simply not supported by the evidence filed, even less so that the Respondent is not using the Domain Names in connection with “bone fide [sic] goods.” The Complainants' claims rest on the fact, admitted by the Respondent, that it is not an authorized distributor or reseller of the Complainants' products and is a “parallel importer” of those products into Bulgaria for sale.
It is perhaps not surprising, therefore, that such extravagant claims caused the Respondent to reply that such activities, and the use of the SONY trade mark to describe the genuine products of the Complainants that it offers for sale, are lawful under Bulgarian law, as they may be under the law of many countries. However, the proposition that, because such conduct is not per se unlawful, the Respondent therefore necessarily has a right or legitimate interest in the Domain Names, in the sense meant by paragraph 4(a)(ii) of the Policy, is not correct.
Whether or not the Respondent's conduct with respect to the Domain Names or the websites under them is a breach of Bulgarian law is not to be decided in this proceeding. In order to understand what is meant by the requirement of a “right or legitimate interest” in the Domain Names, it is desirable to have reference to the consensus of administrative decisions made under the Policy with regard to this issue, in circumstances such as these. One may have sympathy for the position of the Respondent in these circumstances but, even though the Panel is not bound by earlier decisions, deference should be given to prior panel decisions dealing with similar fact situations when a consensus among them emerges over time. As the very learned panel in Howard Jarvis Taxpayers Association v. Paul McCauley,WIPO Case No. D2004-0014 observed:
“Parties in UDRP proceedings are entitled to know that, where the facts of two cases are materially indistinguishable, the complaints and responses will be evaluated in a consistent manner regardless of the identity of the panelist; this goal is undermined when different panels can be expected to rule differently on the same types of facts. Panelists, too, are disadvantaged by these disagreements; they would be able to more efficiently evaluate cases and draft decisions if they knew that they could rely on a shared, consistent set of UDRP principles. If such consistency could be achieved, it also would assist providers, who could assign panelists to cases without any concern that panelist choice may itself inject bias into the system, and would encourage more cost effective decision making as parties could rely on a single panelist rather than having to request a three member panel in order to ensure balance. More generally, because no system of justice can long endure if its decisions are seen as random, consistency will help support the very legitimacy of the UDRP itself. For these reasons, when policy disagreements do arise, panelists should pause and consider whether a consensus has emerged that might inform which way they should rule on these types of issues. If such a consensus has emerged, panelists should endeavor to follow that consensus and thus promote consistent application of the UDRP. … Such an approach is particularly appropriate in the context of the Policy. That is because UDRP decisions are not binding and non-appealable; rather, a losing party is free to pursue its claim in local courts. See Policy paragraph 4(k). Moreover, even if the consensus supports a decision that individuals believe to be wrong or bad policy, parties would at least know how such decisions would be decided under the Policy, and could elect instead to pursue their claims in court if they believed the judicial system would provide a more just result.”
Here, for a reseller of a complainant's products to have such a legitimate interest in registering and using a domain name in respect of the supply of such products, the consensus of prior panel decisions is that the respondent must meet four criteria, as collected from an earlier decision by the panel in Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903:
1. Respondent must actually be offering the goods or services at issue. E.g., World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles,WIPO Case No. D2000-1306 (respondent failed to show demonstrable preparations to use the domain name in connection with a bona fide offering).
2. Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods. Nikon, Inc. and Nikon Corporation v. Technilab, Inc.,WIPO Case No. D2000-1774 (use of Nikon-related domain names to sell Nikon and competitive cameras not a legitimate use); Shigeki Kanao v. J.W. Roberts Co., CPR 0109 (bait and switch is not legitimate).
3. The site must accurately disclose the registrant's relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents. E.g., Houghton Mifflin Co. v. The Weathermen, Inc.,WIPO Case No. D2001-0211 (no bona fide offering where website's use of Complainant's logo, and lack of any disclaimer, suggested that website was the official Curious George website); R.T. Quaife Engineering, Ltd and Autotech Sport Tuning Corporation d/b/a Quaife America v. Luton,WIPO Case No. D2000-1201 (no bona fide offering because domain name improperly suggested that the reflected site was the official U.S. website for Quaife, an English company; moreover, respondent's deceptive communications with inquiring consumers supported a finding of no legitimate interest); Easy Heat, Inc. v. Shelter Products,WIPO Case No. D2001-0344 (no bona fide use when respondent suggested that it was the manufacturer of complainant's products).
4. The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525 (“a single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark”).
The Oki Data decision related to an authorized reseller, but the same principles have been adopted in respect of an unauthorized reseller; see Philip Morris Incorporated v. Alex Tsypkin,WIPO Case No. D2002-0946.
Applying these principles to the Domain Names, it is clear to the Panel that criteria 1 and 4 are satisfied, but that 2 and 3 are not. It is extremely unclear from the evidence filed by the Complainant what was happening on the websites under the Domain Names at the time of filing the Complaint other than the offer of genuine products of the Complainants. If the websites merely included links to other, clearly separate, websites offering other goods, in addition to a certification as a Toshiba dealer (which could serve as nothing more than an assertion of genuineness of the Respondent's business) the Panel would be inclined to agree with the learned panel in Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent,WIPO Case No. D2004-0481, that such conduct may in appropriate cases be unobjectionable. However, in this case a consideration of the website under the Domain Name today shows that the same website is clearly offering other goods, including those of the competing supplier Toshiba, or, more accurately, that pages from another website of the Respondent are being linked so that they appear on the website under . The evidence of the Complainants regarding the website under the Domain Name does not show any links of the type shown on the evidence filed with respect to the website under the Domain Name , and it is not possible today to check that website as it is no longer operating, but the assertions of the Complainants in this regard are not denied by the Respondent. In any event, the Respondent's case must fail as in neither case is, or was, the true relationship between the Respondent and the Complainants made clear.
The Panel accordingly concludes that the Respondent does not have a right or legitimate interest in the Domain Names. 3. Registered and Used in Bad Faith
In this case, the considerations relevant to the determination of the right or legitimate interest of the Respondent in the Domain Names are equally relevant to the issue of registration and use in bad faith, in the sense that expression is used in the Policy. Further in this regard, the Panel does not accept the Respondent's argument that its use of the suffixes “bg” and “.com” in some manner differentiate the Domain Names and the websites under them from the Complainants' marks and business operations, nor does it accept the Respondent's assertion that its design and styling of the websites under the Domain Names show or showed any distinction from the Complainants. Therefore, the Panel concludes that the Domain Names were registered and used in bad faith. 7. Decision
The Complainants have requested that the Domain Names be transferred to the second Complainant, Sony Europe (Belgium) N.V. 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 Names, and be transferred to the second Complainant, Sony Europe (Belgium) N.V.
William P. Knight
Sole Panelist
Dated: November 17, 2009
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