national arbitration forum

 

DECISION

 

Sony Kabushiki Kaisha a/t/a Sony Corporation v. 0-0 Adult Video Corp.

Claim Number:  FA0505000475214

 

PARTIES

Complainant is Sony Kabushiki Kaisha a/t/a Sony Corporation (“Complainant”), represented by Robert B.G. Horowitz, of Cooper and Dunham LLP, 1185 Avenue of the Americas, New York, NY 10036.  Respondent is 0-0 Adult Video Corp. (“Respondent”), 49 Eaton Ct., Manhasset, NY 11030.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com>, registered with Intercosmos Media Group, Inc. d/b/a Directnic.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 12, 2005; the National Arbitration Forum received a hard copy of the Complaint on May 16, 2005.

 

On May 13, 2005, Intercosmos Media Group, Inc. d/b/a Directnic.com confirmed by e-mail to the National Arbitration Forum that the domain names <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> are registered with Intercosmos Media Group, Inc. d/b/a Directnic.com and that Respondent is the current registrant of the names. Intercosmos Media Group, Inc. d/b/a Directnic.com has verified that Respondent is bound by the Intercosmos Media Group, Inc. d/b/a Directnic.com registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").

 

On May 17, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of June 6, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@sonycdplayer.com, postmaster@sonyreceiver.com, postmaster@sonyremote.com by e-mail.

 

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 14, 2005, 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 National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> domain names are confusingly similar to Complainant’s SONY mark.

 

2.      Respondent does not have any rights or legitimate interests in the <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> domain names.

 

3.      Respondent registered and used the <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a world leader in the field of consumer electronics products.  Complainant has been in business since 1946 and has annual sales in excess of $70 billion.  In addition, Complainant expends billions of dollars annually to advertise and promote its SONY trademark worldwide.

 

Complainant conducts its business almost exclusively under the SONY name and trademark.  In connection therewith, Complainant has registered the SONY mark in 189 countries, including the United States.  See USPTO Reg. No. 1,622,127; issued Nov. 13, 1990 (SONY used in connection with, inter alia, “compact disc players, “remote control units for televisions” and “color temperature switches for television receivers”).

 

On October 30, 2001, Respondent registered the disputed domain names, <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com>.  These domain names resolve to a website located at the <adultdvd.com> domain name, which sells pornographic DVDs.  The Panel notes that Complainant has provided ample evidence of the pornographic nature of the resolved website.

 

DISCUSSION

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."

 

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(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.

 

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 and is being used in bad faith.

 

Identical and/or Confusingly Similar

 

Complainant has established a presumption of valid trademark rights in the SONY mark as the result of its numerous registrations with governments worldwide.  In the absence of a response, this presumption stands unchallenged.  Therefore, Complainant has established trademark rights in the SONY mark pursuant to Policy ¶ 4(a)(i).  See Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (finding that the registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.  Respondent has the burden of refuting this assumption); see also Am. Online, Inc. v. Thomas P. Culver Enters., D2001-0564 (WIPO June 18, 2001) (finding that successful trademark registration with the United States Patent and Trademark Office creates a presumption of rights in a mark).

 

Complainant alleges that the disputed domain names, <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com>, are confusingly similar to Complainant’s SONY mark.  A general rule under Policy ¶ 4(a)(i) is that a domain name is confusingly similar to a third-party mark where the domain name fully incorporates the mark and simply adds additional words that correspond to the goods or services offered by the third party under the mark.  Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity).

 

In the past, panels have confronted the issue of confusing similarity between domain names and Complainant’s SONY mark.  For example, in Sony Corp. v. Zuccarini, FA 109041 (Nat. Arb. Forum May 23, 2002), the panel found that the <sonytelevision.com> domain name was confusingly similar to Complainant’s SONY mark because the addition of the word “television” described Complainant’s products and therefore did not sufficiently distinguish the domain name from the mark.  Similarly, in Sony Corp. v. Anderson, FA 198809 (Nat. Arb. Forum Nov. 20, 2003), the panel found the domain names, <sonyacadapter.com>, <sonycamcordersbattery.com>, <sonylaptopbattery.com> and <sonymemory.com>, confusingly similar to the SONY mark. 

 

The common thread in these prior cases is that each domain name fully incorporated Complainant’s SONY mark and merely added terms that related to various electronic products.  In the instant case, the <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> domain names each fully incorporate Complainant’s SONY mark and merely add the terms “cd player,” “receiver,” and “remote.”  Each of these additions reference not only various electronic products, but Complainant’s products offered under the SONY mark.  Therefore, consistent with prior decisions under the Policy, the Panel finds that the <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> domain names are confusingly similar to Complainant’s SONY mark pursuant to Policy ¶ 4(a)(i).

 

Complainant has established Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names.  The burden is on Respondent, pursuant to Policy ¶ 4(a)(ii), to advance concrete evidence that demonstrates its rights or legitimate interests in the domain names because this information is “uniquely within the knowledge and control of the respondent.”  G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002).  Respondent has failed to respond and, by extension, failed to provide any evidence of its rights or legitimate interests in the disputed domain names.  Therefore, the Panel construes this omission as an implicit admission that Respondent lacks rights and legitimate interests in the disputed domain names. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that Respondents’ failure to respond can be construed as an admission that they have no legitimate interests in the domain names); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where Respondent fails to respond).

 

In general, using a disputed domain name to host pornographic material does not evidence a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).  See Dipaolo v. Genero, FA 203168 (Nat. Arb. Forum Dec. 6, 2003) (“Diversion to pornography is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).”); see also Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that it was not a bona fide offering of goods or services to use a domain name to divert Internet users, who were seeking Complainant's goods or services, to pornographic material and links, while presumably earning commission or referral fees from advertisers). 

 

Respondent chose to register three domain names, which are confusingly similar to Complainant’s mark, on the same day.  Each domain name encompasses Complainant’s SONY trademark in conjunction with terms that describe the goods associated with Complainant’s mark.  In the absence of a response, these facts lead the Panel to conclude that Respondent would not have registered the domain names but for the goodwill associated with Complainant’s SONY mark.  As the panel stated in Yahoo! Inc. v. Zuccarini, FA 183997 (Nat. Arb. Forum Oct. 20, 2003):

 

Respondent's use of the disputed domain names to redirect Internet users to pornographic websites, where the names were selected specifically for the purpose of trading on the goodwill of Complainant's marks, cannot qualify as a bona fide offering of goods or services or as a legitimate noncommercial or fair use of the names under the Policy.

 

Therefore, the Panel finds that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).

 

Complainant has also asserted that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii).  The WHOIS registration information for each of the disputed domain names, as well as the content located at the resolved website, both fail to suggest that Respondent is commonly known by any of the disputed domain names.  Therefore, the Panel accepts Complainant’s assertion in this regard as true.  See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interests where Respondent was not commonly known by the mark and never applied for a license or permission from Complainant to use the trademarked name).

 

Moreover, Respondent is using the disputed domain names in connection with a commercial website and has failed to advance circumstances indicating possible fair use of the domain names.  Therefore, Policy ¶ 4(c)(iii) is inapplicable.  See Schering Corp. v. NGS Enters., LTD, FA 198013 (Nat. Arb. Forum Nov. 7, 2003) (“[T]he Panel concludes that Respondent's use is plainly commercial in nature, such that Policy ¶ 4(c)(iii) is in fact inapplicable to this dispute.”); see also Avery Dennison Corp. v. Steele, FA 133626 (Nat. Arb. Forum Jan. 10, 2003) (“Evidence indicates that Respondent is profiting from the use of Complainant's mark, therefore Policy ¶ 4(c)(iii)’s 'noncommercial or fair use' criteria are inapplicable.”).

 

Complainant has established Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

Respondent has violated Policy ¶ 4(b)(iv) by intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with Complainant’s SONY mark.  As evidence, Respondent registered three domain names, which are confusingly similar to Complainant’s SONY mark, on the same day.  Each of these domain names includes terms that describe the goods offered by Complainant under the SONY mark.  Respondent uses these domain names to attract Internet users to a website that sells pornographic DVDs.  In the absence of a response, these facts lead the Panel to conclude that Respondent has violated Policy ¶ 4(b)(iv).  See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if Respondent profits from its diversionary use of Complainant's mark when the domain name resolves to commercial websites and Respondent fails to contest the Complaint, it may be concluded that Respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)).

 

The circumstances listed in Policy ¶ 4(b) pertaining to bad faith registration and use are indicators of certain types of bad faith.  However, panels have found these circumstances to be non-exclusive.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”).

 

The registration of a domain name that incorporates a famous third-party trademark has been frequently held to evidence bad faith registration and use because the registrant either knew or should have known of the third-party’s rights in the trademark prior to registration.  See Yahoo! Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000) (finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); see also Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively.”). 

 

Panels have frequently found the SONY mark to be famous.[1]  One panel has even majestically described the SONY mark as being of “immense international fame.”  Sony Corp. v. Intercardnetwork, FA 435612 (Nat. Arb. Forum Apr. 21, 2005).  Therefore, in the absence of a response, the Panel finds that Respondent registered and used the disputed domain names in bad faith because Respondent either knew or should have known of Complainant’s rights in the SONY mark.

 

Additionally, it has been frequently held that using a domain name, which is confusingly similar to a third-party mark, to host pornographic material is evidence of bad faith registration and use.  This is especially true when the third-party mark is famous.  See Wells Fargo & Co. v. Carrington, FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that Respondent’s tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Microsoft Corp. v. Horner, D2002-0029 (WIPO Feb. 27, 2002) (holding that Respondent’s use of Complainant’s mark to post pornographic photographs and to publicize hyperlinks to additional pornographic websites evidenced bad faith use and registration of the domain name); see also Ty, Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent contrary evidence, linking the domain names in question to graphic, adult-oriented websites is evidence of bad faith).

 

In the instant case, Respondent is directing Internet users to a website that sells pornographic DVDs.  In the absence of a response, and consistent with prior decisions under the Policy, the Panel finds this to be a relevant and weighty factor in finding Respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii).

 

Complainant has established Policy ¶ 4(a)(ii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the domain names <sonycdplayer.com>, <sonyreceiver.com>, and <sonyremote.com> be TRANSFERRED from Respondent to Complainant.

 

 

James A. Carmody, Esq., Panelist

Dated:  June 27, 2005

 

 

 

 

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