Sony Mobile Communications AB / Sony Corporation v. Abbot S / Abbot
Claim Number: FA1404001553333
Complainant is Sony Mobile Communications AB / Sony Corporation (“Complainant”), represented by Meaghan Kent of Venable LLP, Washington D.C., USA. Respondent is Abbot S / Abbot (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <sonymobile.us>, registered with Name.com, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 9, 2014; the National Arbitration Forum received a hard copy of the Complaint on April 9, 2014.
On April 9, 2014, Name.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <sonymobile.us> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On April 11, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2014 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@sonymobile.us. Also on April 11, 2014, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
On April 11, 2014, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 1, 2014 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <sonymobile.us> domain name, the domain name at issue, is confusingly similar to Complainant’s SONY MOBILE mark.
2. Respondent does not have any rights or legitimate interests in the domain name at issue.
3. Respondent registered and used the domain name at issue in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Sony Mobile Communications AB and Sony Corporation. Complainant, Sony Mobile Communications AB is a licensee of Sony Corporation, and uses the SONY MOBILE mark in connection with multimedia devices and smartphones, including the popular Xperia smartphone.
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark
The Panel finds that the evidence in the Complaint is sufficient to establish a nexus or link between the Complainants, and it will treat them as a single entity in this proceeding.
Complainant uses the SONY MOBILE mark in connection with consumer electronics, personal digital devices, mobile phones, and other audiovisual devices. Complainant possesses a Swedish Patent and Registration Office (“SPRO”) registration (Reg. No. 459,493 registered April 20, 1999) as well as an International Registration for the SONY MOBILE mark (Reg. No. 712,057 registered March 16, 1999). Complainant also owns the <sonymobile.com> domain name which it uses to advertise and promote its products and marks.
Respondent’s <sonymobile.us> domain name is identical to Complainant’s SONY MOBILE mark. Respondent has no rights to any trademark consisting of the term SONY MOBILE in any country. Respondent is not commonly known by the SONY MOBILE mark. The WHOIS information for the disputed domain name lists “Abbot S” as registrant of the <sonymobile.us> domain name. Further, Respondent is not an authorized provider of Complainant’s products or services and Complainant has never licensed or permitted Respondent to use its trademarks in any way. Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a website displaying adult-oriented materials.
Respondent registered the disputed domain name for the purpose of selling it. Respondent rejected Complainant’s offer to purchase the domain name for $3,000, demanding more compensation. Respondent uses the disputed domain name to resolve to an adult-oriented website. Respondent registered the disputed domain name with knowledge that Complainant had rights in the SONY MOBILE mark. Complainant announced the intended buyout of Sony Ericsson by Sony on October 27, 2011. Respondent registered the disputed domain name on October 28, 2011.
Respondent's only communication with the Forum was an informal e-mail in which it states, “I take a look on attachments, and I think Annex D is a misunderstanding for all.” The Panel does not consider this communication a Response, and this case is resolved as if it were a default proceeding.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Complainant uses the SONY MOBILE mark in connection with consumer electronics, personal digital devices, mobile phones, and other audiovisual devices. Complainant has rights in its well-known SONY MOBILE and possesses a SPRO registration (Reg. No. 459,493 registered April 20, 1999) as well as an International Registration for the SONY MOBILE mark (Reg. No. 712,057 registered March 16, 1999). Additionally, Complainant owns the <sonymobile.com> domain name and uses it to advertise and promote its products and marks. Panels have routinely found that providing evidence of a registration for a given mark is sufficient to establish rights in that mark. See Capital One Financial Corp. v. Paydayloanz.com, FA 1463493 (Nat. Arb. Forum October 22, 2012) (finding that complainant had rights in a mark it registered with SPRO.). It is irrelevant whether complainant registered the disputed domain name in the location of respondent. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel therefore concludes that Complainant has rights in the SONY MOBILE mark under Policy ¶ 4(a)(i).
Respondent’s <sonymobile.us> domain name incorporates Complainant’s SONY MOBILE mark in its entirety while eliminating the space between the words and adding the country code top-level domain (“ccTLD”) “.us.” These variations do not distinguish a disputed domain name from a given mark. See Basic Trademark S.A. v. Antares S.p.A, FA 1130680 (Nat. Arb. Forum Mar. 4, 2008) (“The <robedikappa.us> domain name is identical to the ROBE DI KAPPA mark. The only difference is the omission of the space between the words and the addition of the ccTLD “.us,” which does not significantly distinguish the domain name from the mark.”). The Panel finds that Respondent’s <sonymobile.us> domain name is identical to Complainant’s SONY MOBILE mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UsTLD ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
There is no evidence in the record indicating that Respondent owns any service marks or trademarks that reflect the <sonymobile.us> domain name. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)). Moreover, Respondent is not an authorized provider of Complainant’s products or services and Complainant has never licensed or permitted Respondent to use its trademarks in any way. There is no indication in the WHOIS information to suggest that Respondent is known by the SONY MOBILE mark or the <sonymobile.us> disputed domain name. The WHOIS information for the disputed domain name lists “Abbot S” as registrant. Prior panels have found that a respondent is not commonly known by a disputed domain name where there is no evidence on the record suggesting the contrary. See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Based on this evidence, the Panel finds that Respondent is not commonly known by, and has not established rights or legitimate interests in, the disputed domain name pursuant to Policy ¶ 4(c)(iii).
Further, Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent’s disputed domain name resolves to a website displaying adult-oriented materials. Numerous panels have previously found that using a disputed domain name to resolve to a website displaying adult-oriented material is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. See Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to adult-oriented material and links, while presumably earning a commission or referral fees from advertisers). Consequently, the Panel concludes that Respondent is making neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use of the disputed domain name.
The Panel finds that Policy ¶ 4(a)(ii) has been established.
It appears that Respondent registered the disputed domain name for the purpose of selling it. Respondent rejected Complainant’s offer to purchase the disputed domain name along with another domain name for $3,000. In correspondence to Complainant, Respondent states, “I think you should offer a better price to show your sincerity.” Prior cases have found that a respondent acts in bad faith when a respondent rejects a complainant’s offer to purchase a disputed domain name, in hopes of furthering an offer for a larger purchase price. See Booz-Allen & Hamilton Inc. v. Servability Ltd, D2001-0243 (WIPO Apr. 5, 2001) (finding bad faith where the respondent, a domain name dealer, rejected the complainant’s nominal offer of the domain in lieu of greater consideration). The Panel concludes that Respondent is acting in bad faith under Policy ¶ 4(b)(i).
Respondent uses the disputed domain name to resolve to an adult-oriented website. Panels in the past have commonly found bad faith use or registration when a respondent uses a disputed domain name to attract Internet users and redirect them to a website displaying adult-oriented material. See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent’s use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)). The Panel therefore concludes that Respondent is using the <sonymobile.us> domain name in bad faith due to the excessive amount of adult-oriented content on this domain name’s website.
It appears that Respondent registered the disputed domain name the day after Complainant publicly announced the intended buyout of Sony Ericsson by Sony. Specifically, Complainant announced the intended buyout of Sony Ericsson by Sony on October 27, 2011 and Respondent registered the disputed domain name on October 28, 2011. Panels have frequently found bad faith registration where a respondent takes advantage of a complainant’s business move or public announcement by registering a disputed domain name at the same time as complainant’s announcement. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). The Panel further concludes that Respondent registered the <sonymobile.us> domain name in bad faith because the registration of this domain name was opportunistic vis-à-vis Respondent’s announcement of the new SONY MOBILE brand. Because of this, the Panel agrees with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and find that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <sonymobile.us> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: May 11, 2014
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