The Complainant is Sony Corporation of Tokyo, Japan, represented by Hogan Lovells (Paris) LLP, France.
The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / Samuel Mcknight of San Francisco, California, United States of America. 2. The Domain Name and Registrar
The disputed domain name is registered with eNom, Inc. (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 20, 2017. On April 20, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On April 21, 2017, the Registrar transmitted by email to the Center its verification response disclosing 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 1, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. On May 4, 2017, the Complainant requested an extension of five days to submit the amended Complaint. The Complainant filed an amended Complaint on May 11, 2017.
The Center verified that the Complaint together with the amended 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 12, 2017. In accordance with the Rules, paragraph 5, the due date for Response was June 1, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 2, 2017.
The Center appointed Wilson Pinheiro Jabur as the sole panelist in this matter on June 14, 2017. 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 Japanese multinational conglomerate corporation, and its business includes electronics, gaming, entertainment and financial services. The Complainant is the owner, amongst others, of the following trademark registrations (Annex 10 to the Complaint):
- International Trademark registration No. 1194843 for SONY registered on March 29, 2012 covering all 45 international classes;
- Panama Trademark registration No. 7957 for SONY registered on August 19, 1963; and
- United States of America Trademark registration No. 770275 for SONY registered on May 26, 1964.
The disputed domain name was registered on November 23, 2016. While the disputed domain name does not resolve to an active website, it appears to have been used in connection with a fraudulent email scheme. 5. Parties’ Contentions A. Complainant
The Complainant asserts to be one of the most comprehensive entertainment companies in the world, ranked 113th on the 2016 list of Fortune Global 500. Its business activities encompass electronics, motion pictures, music and financial services.
According to the Complainant, it owns full or partial rights to catalogues of numerous artists such as Michael Jackson, The Beatles, Usher, Eminem, Akon and others.
The fame achieved by such mark, states the Complainant, can also be ascertained by the number of cybersquatters that have targeted it and the recognition it has obtained as “one of the most famous trademarks in the world” in past UDRP Decisions (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409).
Also according to the Complainant, the disputed domain name has been used to create email addresses “[…]@” which were used to send emails misleading recipients into believing that the emails came from the Complainant where in fact they did not (Annex 9 to the Complaint), and what constitutes a clear violation of the Complainant’s trademark rights.
The Complainant therefore submits that the disputed domain name which reproduces entirely the registered trademark SONY with the addition of the descriptive term “artists” is insufficient to distinguish the disputed domain name from the Complainant’s trademark given that the dominant element is the Complainant’s SONY trademark. Furthermore, under the Complainant’s view, the term “artists” is likely to reinforce and exacerbate the association with the Complainant in view of the fact that the Complainant is the second-largest global recorded music company, holding rights to the catalogue of many artists such as Michael Jackson.
According to the Complainant, the Respondent has no rights or legitimate interests in the disputed domain name given that:
(i) the Respondent is not an authorized dealer, distributor or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the SONY trademark;
(ii) the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services;
(iii) the Respondent cannot assert that it is commonly known by the disputed domain name, nor holds trademark rights in the term “sony”;
(iv) given the overwhelming renown and popularity of the SONY trademark worldwide it is not conceivable that the Respondent could possibly establish any rights or legitimate interests in the disputed domain name (as in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003).
The Complainant contends, as to the bad faith in the registration of the disputed domain name that it arises from the fact that the SONY trademark is highly distinctive and well-known on a global scale, and has been continuously used for nearly 60 years, being it inconceivable that the Respondent could have been unware thereof at the time of the registration of the disputed domain name or that he would have chosen it for any other reason than to profit from the goodwill and reputation associated with the Complainant’s trademark.
Furthermore, as to the use of the disputed domain name in bad faith, the Complainant asserts that the intention of the Respondent to create a false association with it with the purpose of taking advantage of the Complainant’s goodwill is clear in view of the email addresses created and used to send emails misleading recipients into believing that the emails came from the Complainant where in fact they did not.
Lastly, the Complainant points out that the Respondent deliberately chose to conceal its true identity by means of a privacy protection service what in its point of view is a further strong indication of the Respondent’s bad faith and intent to use the disputed domain name in a way which may be abusive or otherwise detrimental to the Complainant and its rights. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy sets forth the following three requirements which have to be met for this Panel to order the transfer of the disputed domain name to the Complainant:
(i) the disputed domain name 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 in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
The Complainant must prove in this administrative proceeding that each of the aforesaid three elements is present so as to have the disputed domain name transferred to it, according to paragraph 4(a) of the Policy.
In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Identical or Confusingly Similar
The Complainant has established its rights in the well-known SONY trademark duly registered in several jurisdictions around the world (Annex 10 to the Complaint).
In this Panel’s view the addition of the descriptive term “artists” to the Complainant’s trademark in the disputed domain name only does not diminish the likelihood of confusion with the Complainant’s well-known trademark given the Complainant’s activities and ownership of several artists catalogues.
For the reasons above, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademarks. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides a non-exclusive list of circumstances that indicate the respondent’s rights or legitimate interests in the disputed domain name. These circumstances are:
(i) before any notice of the dispute, the respondent’s 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, in spite of not having acquired trademark or service mark rights; or
(iii) the respondent is 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.
The Respondent, in not responding to the Complaint, has failed to invoke any of the circumstances, which could demonstrate, pursuant to paragraph 4(c) of the Policy, any rights or legitimate interests in the disputed domain name. This entitles the Panel to draw any such inferences from such default as it considers appropriate pursuant to paragraph 14(b) of the Rules. Nevertheless, the burden is still on the Complainant’s side to make a prima facie case against the Respondent.
In that sense, the Complainant indeed states that the Respondent is not an authorized dealer, distributor or licensee of the Complainant, nor has it been otherwise allowed by the Complainant to make any use of the SONY trademark.
Also, the absence of any indication that the Respondent owns registered trademarks or trade names corresponding to the disputed domain name, or any possible link between the Respondent and the disputed domain name that could be inferred from the details known of the Respondent or the webpage relating to the disputed domain name, corroborate with the Panel’s finding of the absence of rights or legitimate interests.
According to the emails attached to the Complaint (Annex 9) the Respondent has indeed used the disputed domain name in a manner to impersonate inappropriately the Complainant. The Panel finds that such use does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name.
Under these circumstances and absent evidence to the contrary, the Panel finds that the Respondent does not have rights or legitimate interests with respect to the disputed domain name. C. Registered and Used in Bad Faith
The Policy indicates in paragraph 4(b)(iv) that bad faith registration and use can be found in the use of the disputed domain name, with an intentional attempt to attract, for commercial gain, Internet users to the website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
The Respondent’s knowledge of the Complainant appears to be evident both from the choice of the disputed domain name adding the term “artists” to the notorious SONY trademark given the Complainant’s activities and ownership of several artists catalogues as well as from the fraudulent emails sent by the Respondent (Annex 9 to the Complaint).
In this case, the use of the disputed domain name in connection with fraudulent emails impersonating the Complainant can indeed mislead Internet users for commercial gain by profiting from the similarity between the disputed domain name and the Complainant’s mark.
Also, as already mentioned, the Respondent did not file any response to the Complaint, failing thereby to invoke any circumstance which could demonstrate its good faith in the registration or use of the disputed domain name.
Lastly, the Respondent’s choice to retain a privacy protection service in an attempt to hide its true identity as well as what may be false contact information in the WhoIs information after the shield was lifted further support in the circumstances of this case the Panel’s finding of bad faith.
For the reasons stated above, the Respondent’s conduct has to be considered, in this Panel’s view, as bad faith registration and use pursuant to paragraph 4(b)(iv) of the Policy. 7. Decision
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name be cancelled.
Wilson Pinheiro Jabur
Sole Panelist
Date: June 28, 2017
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