Sony Kabushiki Kaisha a/t/a Sony Corporation v. Miguel Bagoee d/b/a Sonypaymentservices, Inc.
Claim Number: FA0608000771139
Complainant is Sony Kabushiki Kaisha a/t/a Sony Corporation (collectively, “Complainant”), represented by Anthony V. Lupo of Arent Fox PLLC, 1050 Connecticut Avenue, NW, Washington, DC, 20036. Respondent is Miguel Bagoee d/b/a Sonypaymentservices, Inc. (“Respondent”), Unit 1566 City and Platsza AVE Avenue, Garnet Road, Ortigas, Pasig City, 1605 PH.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <e-sony.net>, <sonysell.com> and <sonysell.net>, registered with DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically August 4, 2006; the National Arbitration Forum received a hard copy of the Complaint August 4, 2006.
On August 7, 2006, DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM confirmed by e-mail to the National Arbitration Forum that the <e-sony.net>, <sonysell.com> and <sonysell.net> domain names are registered with DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM and that Respondent is the current registrant of the name(s). DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM verified that Respondent is bound by the DIRECT INFORMATION PVT LTD d/b/a PUBLICDOMAINREGISTRY.COM registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 2006 , 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@e-sony.net postmaster@sonysell.com and postmaster@sonysell.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 1, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. The domain names that Respondent registered, <e-sony.net>, <sonysell.com> and <sonysell.net>, are confusingly similar to Complainant’s SONY mark.
2. Respondent has no rights to or legitimate interests in the <e-sony.net>, <sonysell.com> and <sonysell.net> domain names.
3. Respondent registered and used the <e-sony.net>, <sonysell.com> and <sonysell.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Sony Kabushiki Kaisha a/t/a Sony Corporation, is a world leader in the field of consumer electronics products in addition to a wide range of businesses, including entertainment, finance, life insurance, chemicals and many others. Complainant has conducted its business under the SONY mark since as early as 1955 and expends billions of dollars annually to advertise and promote its business under the SONY mark throughout the world. Complainant holds a trademark registration for the SONY mark with the United States Patent and Trademark office (“USPTO”) (Reg. No. 1,622,127, issued November 13, 1990).
Respondent registered the <sonysell.net> and <sonysell.com>
domain names April 29, 2006 and the <e-sony.net>
domain name May 3, 2006.
On or about May 15, 2006, Complainant was contacted by a
number of third-party online payment providers, including Bibit Global Payment
Services, that had been contacted over the telephone and via e-mail by an
individual claiming to be James George Ryan, the Executive Vice President of
Finance of Complainant. The individual
attempted to obtain the ability to process credit cards for customers of the
website that resolved from the <e-sony.net>
domain name.
On or about May 22, 2006, Complainant became aware that
the <e-sony.net> domain name was redirecting Internet users to a
website that closely resembled an official website of Complainant that resolved
from the <sonystyle.com> domain name.
The resulting website contained a number of Complainant’s products for
sale, prominantly displayed “e-sony.net Europe” and contained a copyright
notice stating, “Copyright © Sony Computer Entertainment Europe Limited.”
Shortly thereafter, Complainant learned that Respondent had also registered the <sonysell.net> and <sonysell.com> domain names. Complainant was unable to access the website connected to the additional domain names due to IP blocking software utilized by Respondent; however, Complainant contacted Directi, the third-party webhost of the domain names regarding the use of the domain names and requested that the websites be taken offline. Complainant provides extrinsic evidence that Directi suspended the accounts associated with the <sonysell.net> and <sonysell.com> domain names due to their connection with phishing activities.
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 will draw such inferences as the Panel 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.”).
Paragraph 4(a) of the Policy requires Complainant to 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.
Complainant, through its long-term, continuous use and
registration of the SONY mark with the USPTO, has obtained rights to the SONY
mark. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept.
16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that
they are inherently distinctive [or] have acquired secondary meaning.”); see also Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003)
(“Complainant's federal trademark registrations establish Complainant's rights
in the BLIZZARD mark.”).
Complainant alleges that the <e-sony.net>, <sonysell.com>
and <sonysell.net> domain
names are confusingly similar to its SONY mark. The <e-sony.net> domain
name contains Complainant’s mark in its entirety, adds the letter “e” as a
hyphenated prefix and affixes the “.net” generic top-level domain (gTLD). The Panel finds that a domain name that adds
a hyphenated prefix and a gTLD to a mark that is otherwise unchanged is
confusingly similar to the mark it contains under Policy ¶ 4(a)(i). Accordingly, the Panel finds that the <e-sony.net> domain name is
confusingly similar to Complainant’s SONY mark. See Canadian Tire Corp. v.
849075 Alberta Ltd., D2000-0985 (WIPO Oct. 19, 2000) (finding that the domain
names <ecanadiantire.com> and <e-canadiantire.com> are confusingly
similar to Canadian Tire’s trademarks); see
also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000)
(finding that the addition of the letter “e” and a hyphen does not affect the
power of the mark in determining confusing similarity).
Additionally, the <sonysell.com>
and <sonysell.net> domain
names merely add the term “sell” to Complainant’s SONY mark along with the use
of the “.com” or “.net” gTLDs. The
Panel finds that the addition of a generic term, such as “sell,” and any one of
the assorted gTLDs available fails to distinguish the <sonysell.com> and <sonysell.net>
domain names from Complainant’s SONY mark.
See Arthur Guinness Son & Co.
(Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding
confusing similarity where the domain name in dispute contains the identical
mark of the complainant combined with a generic word or term); see also Quixtar Inv., Inc. v. Smithberger,
D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name
<quixtar-sign-up.com> incorporates in its entirety the complainant’s
distinctive mark, QUIXTAR, the domain name is confusingly similar).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(i).
Complainant established with extrinsic evidence in this proceeding that it has rights to and legitimate interests in the mark contained in its entirety within the disputed domain names. Complainant alleges that Respondent has no such rights or legitimate interests in any of the disputed domain names. Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden of proof in establishing that Respondent has no rights or legitimate interests in the disputed domain names. Once Complainant establishes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Respondent’s failure to submit a Response in this proceeding
raises a presumption that Respondent lacks rights and legitimate interests in
the disputed domain names. See Am. Express
Co. v. Fang Suhendro, FA 129120 (Nat. Arb.
Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is
presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.”); see also BIC Deutschland GmbH & Co. KG v. Tweed,
D2000-0418 (WIPO June 20, 2000) (“By not submitting a response, Respondent has
failed to invoke any circumstance which could demonstrate, pursuant to ¶ 4(c)
of the Policy, any rights or legitimate interests in the domain name”). However, the Panel
examines the record to determine if Respondent has rights or legitimate
interests under Policy ¶ 4(c).
According to the WHOIS database, the registrant of the disputed domain names is “Miguel Bagoee” of Sonypaymentservices, Inc. As a result of the aforementioned WHOIS information and Respondent’s failure to come forward with evidence to suggest otherwise, the Panel finds that Respondent is not commonly known by any of the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Nat. Arb. Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”).
Complainant further asserts that Respondent is not using any
of the domain names in connection with a bona
fide offering of goods or services or for a legitimate noncommercial
use. Rather, Complainant asserts that
Respondent is using the disputed domain names to facilitate a fraudulent
phishing scam where Respondent collects personal and financial information from
confused customers who believe they are purchasing goods from Complainant’s
website. Complainant presented
extrinsic evidence that showed Respondent’s fraudulent use of the <e-sony.net> domain name to
resolve to the unauthorized and illegal website. Accordingly, the Panel finds that Respondent’s use of the <e-sony.net> domain name does not
qualify as a bona fide offering of goods
or services pursuant to Policy ¶ 4(c)(i) or as a legitimate noncommercial use
Policy ¶ 4(c)(iii). See HOPE worldwide, Ltd. v. Jin, FA
320379 (Nat. Arb. Forum Nov. 11, 2004) (defining “phishing” as fooling
“Internet users into sharing personal financial data so that identities can be
stolen, fraudulent bills are run up, and spam e-mail is sent”); see also Juno Online Servs., Inc. v. Nelson,
FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in
a fraudulent scheme to deceive Internet users into providing their credit card
and personal information is not a bona
fide offering of goods or services nor a legitimate noncommercial or fair
use); see also OPE worldwide, Ltd. v. Jin,
FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is
confusingly similar to Complainant’s mark, redirects Internet users to a website
that imitates Complainant’s website, and is used to acquire personal
information from Complainant’s potential associates fraudulently” does not fall
within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
Although Complainant was unable to provide extrinsic evidence that the <sonysell.com> and <sonysell.net> domain names were involved in the fraudulent activities described above, the inability to do so purportedly was due to IP blocking software utilized by Respondent. In viewing the totality of the circumstances, it is apparent that Respondent does not have rights to or legitimate interests in the <sonysell.com> or <sonysell.net> domain names. The circumstances that allow this finding are plentiful, including, but not limited to: (1) the domain names are confusingly similar to Complainant’s famous mark; (2) Respondent registered the disputed domain names with identical WHOIS information that was used when registering the <e-sony.net> domain name; (3) Respondent registered the disputed domains within the period of one week; and (4) the third-party web host suspended the hosting accounts associated with the disputed domain names became aware of Respondent’s fraudulent activities. See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
The Panel finds that Complainant satisfied Policy ¶ 4(a)(ii).
Complainant asserts that Respondent registered and used the disputed domain names in bad faith. In recognition of the extrinsic evidence Complainant submitted regarding Respondent’s fraudulent phishing activities at the website associated with the <e-sony.net> domain name, the Panel finds that Respondent registered and used the confusingly similar <e-sony.net> domain name in bad faith. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Following the aforementioned reasoning set forth above, in
viewing the totality of the circumstances, the Panel finds that Respondent
registered and used the <sonysell.com>
and <sonysell.net> domain
names in association with a fraudulent phishing scheme which evidences bad
faith registration and use Policy ¶ 4(a)(iii).
This conclusion is further supported by the fact that Complainant’s mark
is such a widely recognized and famous mark and by the fact that Respondent
failed to come forward with any evidence to even suggest its registration and
use of the domain names was in good faith.
See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000)
(finding bad faith where the respondent failed to provide any evidence to
controvert the complainant's allegation that it registered the domain name in
bad faith and where any future use of the domain name would do nothing but
cause confusion with the complainant’s mark, except in a few limited
noncommercial or fair use situations, which were not present); see also Kraft Foods (Norway) v. Wide,
D2000-0911 (WIPO Sept. 23, 2000) (“[T]he fact that Respondent chosen [sic] to
register a well known mark to which [it] has no connections or rights indicates
that [it] was in bad faith when registering the domain name at issue.”); cf. Vivendi Universal Games v. Ballard,
FA 146621 (Nat. Arb. Forum Mar. 13, 2002) (finding that where the complainant’s
mark was appropriated at registration, and a copy of the complainant’s website
was used at the domain name in order to facilitate the interception of the
complainant’s customer’s account information, the respondent’s behavior
evidenced bad faith use and registration of the domain name).
The Panel finds that Complainant
satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <e-sony.net>, <sonysell.com> and <sonysell.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: September 15, 2006.
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