The Complainant is Sony Computer Entertainment America LLC of San Mateo, California, United States of America (“US”), represented internally.
The Respondent is John Chiu of Hong Kong, China. 2. The Domain Name and Registrar
The disputed domain name (the “Domain Name”) is registered with GoD, LLC (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 17, 2014. On October 17, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 21, 2014, the Registrar 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 October 27, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was November 16, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 17, 2014.
The Center appointed Charters Macdonald-Brown as the sole panelist in this matter on November 24, 2014. 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 Sony Computer Entertainment America LLC of the US. Sony Computer Entertainment America LLC is part of the Sony Computer Entertainment group of companies, who produce and sell hardware and software for PlayStation handheld and home console video game systems worldwide.
Sony Computer Entertainment Inc. (“Sony Inc.”) holds a trade mark for PLAYSTATION registered on November 12, 2013 with the U.S. Patent & Trademark Office to identify game entertainment products like consoles and video games. Sony Inc. also holds a trade mark for PLAYSTATION registered on July 31, 1998 with the Superintendencia de Industria y Comercio in Colombia, to identify the same products. For the purpose of this decision, these will be collectively referred to as the “Trade Mark”. The Complainant has provided evidence of these registrations.
The Complaint states that Sony Computer Entertainment America LLC is the exclusive licensee of the trade mark PLAYSTATION in North America and South America.
The Respondent is an individual. The Respondent did not provide a formal response to the Complaint, so the Panel has little further information about him.
The Domain Name was created on July 21, 2010. The website at the Domain Name is currently active. The Respondent is currently using the Domain Name to frame the website at “/es-co”, which appears to be the official Colombian webpage for consoles and video games identified with the trade mark XBOX owned by the Complainant’s competitor Microsoft Inc. 5. Parties’ Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the PLAYSTATION mark, that the Respondent has no rights or legitimate interests in the Domain Name, and that the Domain Name was registered and is being used in bad faith. The Complainant requests that the Domain Name be cancelled. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, in order to be entitled to the cancellation of a domain name, a complainant shall prove the following three elements:
(i) the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the 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.
Paragraph 5(e) of the Rules provides that, if the Respondent fails to submit a response (as in this case), in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the Complaint. A. Procedural Issue
The Complainant is named first as Sony Computer Entertainment America Inc. (“Sony Inc”) and then, for the remainder of the Complaint, as Sony Computer Entertainment America LLC. The Complaint was submitted by representatives of Sony Computer Entertainment America LLC. Therefore, the Panel infers that the Complainant is Sony Computer Entertainment America LLC.
The Complainant states that the trade mark PLAYSTATION is registered by Sony Inc. with the U.S. Patent & Trademark Office and the Superintendencia de Industria y Comercio in Colombia, whereas the Complainant is the exclusive licensee of the trade mark PLAYSTATION in both North America and South America.
In most circumstances, a licensee of a trade mark or a related company to the trade mark holder is considered to have rights in a trade mark for the purposes of filing a complaint. Although it would be desirable for a complainant to provide evidence of such a licence or authorization by the trade mark holder for the bringing of the complaint, it can be inferred by the Panel, depending on the particular facts.
The Complainant states that it is a trade mark licensee of Sony Inc, but has not provided the Panel with any evidence of such licence. However, in the Panel’s view, it is possible to infer the existence of such a licence and/or authorization given that Sony Inc. and the Complainant are clearly related companies (for example, there is a link on Sony Inc.’s website at “/index_e.html” to the region Sony Computer Entertainment America LLC which resolves to the Complainant’s website at “www.m/en-us/”). B. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy provides that the complainant must establish that the domain name is identical or confusingly similar to the relevant trade mark.
The Trade Mark is the word PLAYSTATION. The Domain Name is a combination of the term “playstation” together with the Colombian “.co” country code Top-Level Domain (ccTLD).
Given that the Domain Name comprises the entirety of the Trade Mark, the (low) threshold test for paragraph 4(a)(i) of the Policy is satisfied and, in the Panel’s view, the Domain Name is (at least) confusingly similar to the Trade Mark in which the Complainant has rights. The Complainant succeeds on the first element of the Policy. C. Rights or Legitimate Interests
Paragraph 4(c) of the Policy provides some examples (without limitation) where a respondent can demonstrate a right or legitimate interest in a domain name by showing one of the following:
(i) before receiving any notice of the dispute, the respondent used or made demonstrable preparation 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 has been commonly known by the domain name (even if it has acquired no trade mark 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 trade mark or service mark at issue.
The Respondent is currently using the Domain Name to frame the website at “/es-co”, which appears to be the official Colombian webpage for products identified with the trade mark XBOX owned by the Complainant’s competitor, Microsoft Inc.
As the Complainant has submitted, there is no evidence of the Respondent’s use of, or demonstrable preparation 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 Complainant is not aware of the Respondent having been commonly known by the Domain Name. Neither the Complainant nor any other company in the Sony Computer Entertainment group of companies has authorized the Respondent to use the Domain Name. Given the current use of the Domain Name, the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.
Based on the Respondent’s default and on the prima facie evidence provided in the Complaint, the Panel finds that the Respondent does not have any rights or legitimate interests in the Domain Name. D. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy states that the following circumstances, in particular but without limitation, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of renting or selling or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location or of a product or service on its website or location.
The Domain Name is confusingly similar to a very well-known trade mark, PLAYSTATION. When the Domain Name was registered (on July 21, 2010), the trade mark was already internationally recognized in the field of game entertainment products and the Colombian trade mark for PLAYSTATION had been registered on July 31, 1998. Therefore, the Panel is persuaded that the Respondent was or should have been aware of the Complainant’s reputation and business when he acquired the Domain Name, so that the clear inference is that he selected the Domain Name with this trade mark in mind.
There is no evidence to suggest that the Respondent has ever made a bona fide commercial or noncommercial use of the Domain Name. Given that (1) the Respondent did not file a response submitting any evidence of any bona fide use of the Domain Name by the Respondent, (2) the PLAYSTATION trade mark is widely known, and (3) the Domain Name incorporates, and is confusingly similar to, a registered mark (PLAYSTATION) used by the Complainant, the Panel finds it highly unlikely that there could be any legitimate reason for the Respondent’s choice of the Domain Name.
The use to which the Domain Name is being put, namely framing a competitor’s website, is calculated to attract (Colombian) Internet users interested in the Complainant’s products to the site in the mistaken belief that they are visiting a site of or associated with the Complainant. In fact, those users are being directed to “a site advertising XBOX products, which directly compete with the Complainant’s products”. The Panel is persuaded that the Respondent’s registration and use of the Domain Name for redirecting Internet users, particularly customers and potential customers of the Complainant, from the Complainant’s website to a website advertising XBOX products, constitutes use in bad faith.
The Respondent’s bad faith is reflected in the fact that: (1) the Respondent redirected web traffic from the Domain Name to one of the Complainant’s chief competitors; (2) the Respondent uses a confusingly similar domain name; and (3) nothing in the record suggests that the Respondent has a bona fide reason for its choice of a domain name that is confusingly similar to the Complainant’s trade marks.
Therefore, the Respondent is using the Domain Name in bad faith within the meaning of bad faith registration and use as set out in paragraph 4(b)(iv) of the Policy. This conclusion is emphasized by the Respondent’s failure to submit a response in these proceedings.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith, satisfying the third element 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 Domain Name be cancelled.
Charters Macdonald-Brown
Sole Panelist
Date: December 8, 2014
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