1.1 The Complainant is Sony Interactive Entertainment Inc., Japan, represented by Fross Zelnick Lehrman & Zissu, P.C., United States of America (“United States” or “US”).
1.2 The Respondent is 力菲道, China. 2. The Domain Name(s) and Registrar(s)
2.1 The disputed domain name 3.1 The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 8, 2021. At the time the Complaint was filed, the publicly available WhoIs details for the Domain Name did not display the underlying registrant of the Domain Name. On March 9, 2021, the Center transmitted by email to the Registrar a request for a registrar verification in connection with the Domain Name. On March 10, 2021, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for Domain Name. The Center sent an email communication to the Complainant on March 11, 2021 providing the registrant and contact information disclosed by the Registrar and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on March 15, 2021. 3.2 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”). 3.3 In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2021. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 8, 2021. 3.4 The Center appointed Matthew S. Harris as the sole panelist in this matter on April 15, 2021. 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 4.1 The Complainant is part of the well known Sony electronics and media group. In 1994 it introduced the “PlayStation” gaming platform. It is one of the most successful gaming platforms in the world, having sold over 400 million units since its introduction. Products and services promoted under the “PlayStation” name include the PlayStation 5, Playstation 4, PlayStation VR, PlayStation Store, PlayStation Now, and PlayStation Vue. 4.2 The Complainant is the owner of various registered trade marks around the world that comprise or incorporate the term “Playstation”. Its registered trade marks include: (i) United States registered trade mark No. 2343853 for PLAYSTATION as a stylised word in classes 18, 25, 41, and 42 with a registration date of April 18, 2000; (ii) United States registered trade mark No. 2087964 for PLAYSTATION as a stylised word in class 16 with a registration date of August 12, 1997; and (iii) Chinese registered trade mark 3044670 for PLAYSTATION as a stylised word in class 37 with a registration date of January 21, 2005. 4.3 The Complainant also owns and operates the 4.4 The Domain Name was registered on November 27, 2020. Shortly after registration, the Domain Name was used for a website purporting to offer for sale “PlayStation” products. The URL used for that website was “www.sonyplaystation.playsteition.com”. The website was taken down after the Complainant’s US attorneys sent an email to the website ISP on December 22, 2020, alleging that the website infringed the Complainant’s intellectual property rights, including allegations that certain images on the website infringed the Complainant’s copyright. 4.5 On January 7, 2017 the Complainant’s US attorneys sent a cease and desist letter to the Respondent alleging US trade mark infringement and demanding that the Domain Name be transferred to the Complainant. The Respondent did not reply to that letter. 5. Parties’ Contentions A. Complainant 5.1 The Complainant refers to its business and registered trade marks. It also claims common law trade mark rights in the term “Playstation”. 5.2 The Complainant provides evidence as to the manner in which the Domain Name has been used since registration, and contends that the products offered for sale on the website operating from the Domain Name are counterfeit. No explanation is provided in the body of the Complaint as to why the products are likely to be counterfeit, but it attaches a copy of an email sent to the ISP on December 22, 2020. In that email the Complainant alleges that “Playstation” products are being offered for sale on that website at “prices far below retail”. 5.3 The Complaint exhibits a copy of the website operating from the Domain Name and Internet archive screen shots of that website prior to the Complainant’s representatives’ request to the relevant ISP that the website be taken down, but the copy is a text only version and the screenshots are predominantly black pages. It is therefore not entirely clear exactly what this website looked like at this time. However, the Complainant includes part of what appears to be part of the home page of that website, which prominently displays the Complainant’s PLAYSTATION trade mark and associated logo, and displays pictures of the Complainant’s “PS4” products. 5.4 The Complainant contends that the Domain Name is confusingly similar to its registered trade marks and that the way that the Domain Name has been used demonstrates that the Respondent has no rights or legitimate interests in the Domain Name and that the Domain Name has been registered and used in bad faith. B. Respondent 5.5 The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings 6.1 There are no exceptional circumstances within paragraph 5(f) of the Rules so as to prevent this Panel from determining the dispute based upon the Complaint, notwithstanding the failure of the Respondent to lodge a Response. 6.2 Notwithstanding the default of the Respondent, it remains incumbent on the Complainant to make out its case in all respects set out in paragraph 4(a) of the Policy. Namely, the Complainant must prove that: (i) the Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights (paragraph 4(a)(i)); and (ii) the Respondent has no rights or legitimate interests in respect of the Domain Name (paragraph 4(a)(ii)); and (iii) the Domain Name has been registered and is being used in bad faith (paragraph 4(a)(iii)). 6.3 However, under paragraph 14(b) of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate”. A. Identical or Confusingly Similar 6.4 The Complainant has satisfied the Panel that it has registered trade mark rights for the term “Playstation” in the form, inter alia, of a stylised word mark. In order to satisfy the first element of the Policy it is usually sufficient for a complainant to show that the relevant mark is “recognizable with the disputed domain name”; as to which see section 1.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”). 6.5 The Domain Name can most sensibly be understood as a misspelling of the words “Playstation” with the letter “a” replaced with the letters “ei” in combination with the “.com” generic Top-Level Domain. The Complainant’s mark is therefore clearly recognisable in the Domain Name. 6.6 The Complainant has, therefore, satisfied the Panel that the Domain Name is confusing similar to its trade mark and has thereby made out the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests and Registered and Used in Bad Faith 6.7 It is usual for panels under the Policy to consider the issues of rights or legitimate interests, and registration and use in bad faith in turn. However, in a case such as this it is more convenient to consider those issues together. 6.8 The Complainant contends that the Domain Name has been registered and is being used to offer for sale products that bear the Complainant’s trade mark and that these products are more likely than not counterfeit goods. If that is so, the Complainant’s case succeeds. There are no rights or legitimate interests in holding a domain name for the purpose of selling counterfeit goods and the use a domain name for such a purpose involves registration and use in bad faith (see sections 2.13.1 and 3.1.4 WIPO Overview 3.0). 6.9 There is no doubt that the Domain Name was registered and has been used to offer for sale products bearing the Complainant’s mark. That is clear from the way that the Domain Name has actually been used (both in terms of the website operating from the Domain Name and the text in the URL used for that website), and the format of the Domain Name itself that can only be sensibly understood as a misspelling of the Complainant’s mark. 6.10 As to whether the goods are counterfeit, the evidence is less strong, but the Panel is prepared to accept on the balance of probabilities that this is so. In this respect, there is the assertion to be found in correspondence attached to the Complaint that the price at which the products are sold is below that which would be normal for these products (as to which see section 2.13.2 of the WIPO Overview 3.0). Further, the allegation of dealings in counterfeit products is clearly and unambiguously made in the Complaint and it is obviously a very serious one. Given this, if this allegation were not true, one would expect the Respondent to contend otherwise. The Respondent has not done so. 6.11 Further and in any event, the Panel accepts the Complainant’s contention that even were the Respondent not engaged in the sale of counterfeit products the Respondent would have no right or legitimate interest in the Domain Name and that the Domain Name has been registered and used in bad faith. The Panel agrees. In this respect, where a domain name takes the form <[trade mark].com>, the domain name itself is likely to involve an impermissible impersonation of the trade mark owner in respect of which the registrant has no right or legitimate interest, and registration and use will be in bad faith. This is so even if genuine products are being sold (see section 2.8.2 of the WIPO Overview 3.0 and for example Johnson & Johnson v. Ebubekir Ozdogan,WIPO Case No. D2015-1031). The fact that in this case the Domain Name takes the form of a deliberate misspelling of the trade mark does not change this analysis. On the contrary it inherently and independently suggests that the Respondent is trying to take unfair advantage of an association with the Complainant and it marks such that no right or legitimate interest exists and the registration and use of the Domain Name was in bad faith (as to bad faith see also section 3.1.4 of the WIPO Overview 3.0). 6.12 In the circumstances, the Panel finds that the Complainant has made out the requirement of paragraph 4(a)(ii) and 4(a)(iii) of the Policy. 7. Decision 7.1 For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name Matthew S. Harris
Sole Panelist
Date: April 20, 2021
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