Sony Kabushiki Kaisha a/t/a Sony
Corporation v. EOS1\EOS-1, Inc.
Claim
Number: FA0506000493110
Complainant, Sony Kabushiki Kaisha a/t/a Sony Corporation (“Complainant”), is represented by Robert B. G. Horowitz of Cooper & Dunham LLP,
1185 Avenue of the Americas, New York, NY 10036. Respondent is EOS1\EOS-1,
Inc. (“Respondent”), PO Box 881874, Los Angeles, CA 90009.
REGISTRAR
AND DISPUTED DOMAIN NAME
The
domain name at issue is <www-sony.com>, registered with Wild
West Domains, 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.
Hon.
Ralph Yachnin as Panelist.
Complainant
submitted a Complaint to the National Arbitration Forum electronically on June
7, 2005; the National Arbitration Forum received a hard copy of the Complaint
on June 9, 2005.
On
June 9, 2005, Wild West Domains, Inc. confirmed by e-mail to the National
Arbitration Forum that the domain name <www-sony.com> is
registered with Wild West Domains, Inc. and that Respondent is the current
registrant of the name. Wild West Domains, Inc. has verified that Respondent is
bound by the Wild West Domains, Inc. 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
June 14, 2005, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
July 5, 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@www-sony.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
July 8, 2005 pursuant to Complainant's request to have the dispute decided by a
single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin
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.
Complainant
requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <www-sony.com>
domain name is confusingly similar to Complainant’s SONY mark.
2. Respondent does not have any rights or
legitimate interests in the <www-sony.com> domain name.
3. Respondent registered and used the <www-sony.com>
domain name in bad faith.
B. Respondent failed to submit a Response in
this proceeding.
Complainant, in
business since 1946, is a world leader in the field of consumer electronics products. With annual sales in excess of seventy
billion dollars, Complainant spends billions to advertise and promote the SONY
trademark. As a result of its
advertising, SONY has become one of the most recognized trademarks in the world
and the SONY brand received first place in the 2004 annual Harris Poll of “best
brands,” a position it has won for the past five years.
Complainant
holds registrations for the SONY mark in 189 countries, including the United
States and Japan. Complainant holds
numerous trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for the SONY mark for a wide variety of goods (E.g.,
Reg. No. 1,622,127 issued Nov. 13, 1990).
Respondent
registered the <www-sony.com> domain name on October 2, 2005. The domain name resolves to a website titled
“EOS 1 NETWORK,” which offers various web hosting plans. Respondent’s website also provides links to
business websites that are in direct competition with Complainant.
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. 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 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.
Complainant’s
multiple registrations of the SONY mark with the USPTO established a prima
facie case that Complainant has rights in the mark. See Innomed
Techs., Inc. v. DRP Servs., FA 221171
(Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the
USPTO establishes Complainant's rights in the mark.”); 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.”). Because Respondent did not submit a
response, the presumption that Complainant has rights is undisputed. Janus
Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) (“Panel
decisions have held that 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.”). Therefore, the
Panel holds that Complainant has rights in the SONY mark for purposes of Policy
¶ 4(a)(i).
Respondent’s
<www-sony.com> domain name is confusingly similar to Complainant’s
SONY mark, as the domain name incorporates Complainant’s mark and adds a “www”
prefix, a hyphen, and the generic top-level domain (“gTLD”) “.com.” The Panel concludes that under the Policy,
none of these additions distinguish the domain name from Complainant’s mark
because each addition is irrelevant for purposes of conducting a Policy ¶
4(a)(i) analysis. See Marie Claire Album v. Blakely, D2002-1015 (WIPO Dec. 23, 2002)
(holding that the letters "www" are not distinct in the
"Internet world" and thus the respondent 's
<wwwmarieclaire.com> domain name is confusingly similar to the
complainant's MARIE CLAIRE trademark); see also Health Devices Corp. v.
Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of
punctuation marks such as hyphens is irrelevant in the determination of
confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Isleworth
Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002)
(finding it is a “well established principle that generic top-level domains are
irrelevant when conducting a Policy ¶ 4(a)(i) analysis”).
The Panel finds
that Complainant has satisfied Policy ¶ 4(a)(i).
By claiming that
Respondent does not have rights or legitimate interests in the <www-sony.com>
domain name, Complainant establishes a prima facie case and leaves it to
the Respondent to produce concrete evidence to rebut this assertion. See Do The Hustle, LLC v. Tropic Web,
D2000-0624 (WIPO Aug. 21, 2000) (finding that 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”). Because Respondent did not submit a
response, Complainant’s assertion is uncontested. The Panel, therefore, concludes that Respondent lacks rights and
legitimate interests in the disputed domain name pursuant to Policy ¶
4(a)(ii). See Desotec N.V. v. Jacobi Carbons AB,
D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a
presumption that the complainant’s allegations are true unless clearly
contradicted by the evidence); see also Broadcom Corp. v. Ibecom PLC, FA
361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the
Complaint functions as an implicit admission that [Respondent] lacks rights and
legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set
forth…as true.”).
Respondent’s
failure to respond is sufficient to satisfy Policy ¶ 4(a)(ii). However, the Panel will continue with an
analysis of Respondent’s rights under Policy ¶ 4(a)(ii), including the elements
of Policy ¶ 4(c).
Respondent is
using the confusingly similar <www-sony.com> domain name to
operate a website that offers web hosting plans and features links to
Complainant’s competitors, including Apple Computers iPod Store and
Fujitsu. Such competing use is not a
use in connection with a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant
to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that
the respondent was not using the domain name within the parameters of Policy ¶
4(c)(i) or (iii) because the respondent used the domain name to take advantage
of the complainant's mark by diverting Internet users to a competing commercial
site); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Nat.
Arb. Forum Nov. 20, 2003) (finding that the respondent used a domain name for
commercial benefit by diverting Internet users to a website that sold goods and
services similar to those offered by the complainant and thus, was not using
the name in connection with a bona fide offering of goods or services
nor a legitimate noncommercial or fair use).
Moreover,
Respondent has not provided any evidence to indicate that Respondent is
commonly known by the disputed domain name.
In fact, Respondent’s WHOIS information indicates that Respondent
operates under the name “EOS1\EOS-1.”
Without evidence to suggest that Respondent is commonly known by the
disputed domain name, the Panel finds that Respondent has not established
rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). 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 Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Accordingly,
the Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent
registered and is using the disputed domain name to operate a website that
features links to Complainant’s competitors.
The Panel holds that such use constitutes disruption and is evidence
that Respondent registered and is using the disputed domain name in bad faith
pursuant to Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant’s mark to divert
Internet users to a competitor’s website. It is a reasonable inference that
Respondent’s purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that
the respondent registered and used the domain name <eebay.com> in bad
faith where the respondent has used the domain name to promote competing
auction sites).
Furthermore, the Panel infers that Respondent’s <www-sony.com>
domain name resolves to a website that provides Respondent with click-through
fees for diverting Internet users to competing websites. The Panel concludes that Respondent’s use of
the confusingly similar <www-sony.com> domain name for commercial
gain constitutes bad faith registration and use pursuant to Policy ¶
4(b)(iv). See TM Acquisition Corp. v.
Carroll, FA 97035 (Nat.
Arb. Forum May 14, 2001) (finding bad faith where the respondent used the
domain name, for commercial gain, to intentionally attract users to a direct
competitor of the complainant); see also
AltaVista Co. v. Krotov,
D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv)
where the respondent’s domain name resolved to a website that offered links to
third-party websites that offered services similar to the complainant’s
services and merely took advantage of Internet user mistakes).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having
established all three elements required under the ICANN Policy, the Panel
concludes that relief shall be GRANTED.
Accordingly, it
is Ordered that the <www-sony.com> domain name be TRANSFERRED
from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated:
July 15, 2005
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