WIPO

 

WIPO Arbitration and Mediation Center

 

Sony Kabushiki Kaisha also trading as Sony Corporation v. Sin, Eonmok

Case No. D2000-1007

 

1. The Parties

The Complainant is Sony Kabushiki Kaisha, also trading as Sony Corporation, a corporation organised under the laws of Japan, with its principal place of business at 6-7-35 Kitashinagawa, 6-chome, Shinagawa-ku, Tokyo 141-0001, Japan. The Complainant is represented by Mr. Ned W. Branthover of Robin Blecker & Daley, Attorneys, New York, USA.

The Respondent is Sin, Eonmok of 103-1802 Hyundaeapt, Taejon, Taejon 306-761, Korea. The Respondent has taken no part in the proceeding, nor is he represented by a lawyer or other agent.

 

2 The Domain Name and Registrar

The domain name at issue is "mysony.com". The domain name is registered with Network Solutions Inc., 505 Huntmar Park Drive, Herndon, Virginia 20170, United States of America ("NSI").

 

3. Procedural History

A Complaint submitted by the Complainant was received by the World Intellectual Property Organization Arbitration and Mediation Center ("WIPO Center") on August 10, 2000 (electronic copy) and on August 15, 2000 (hard copy).

On August 24, 2000 a request for Registrar verification was transmitted by WIPO Center to NSI to:

- Confirm that a copy of the Complaint had been sent to it by the Complainant as required by WIPO Supplemental Rules for Uniform Dispute Resolution Policy, paragraph 4(a).

- Confirm that the domain name at issue is registered with NSI.

- Confirm that the person identified as the Respondent is the current registrant of the domain name.

- Provide full contact details, i.e., postal address(es), telephone number(s), facsimile number(s), email address(es), available in the Registrarís WHOIS database for the registrant of the disputed domain name, the technical contact, the administrative contact and the billing contact for the domain name.

- Confirm that the Uniform Domain Name Dispute Resolution Policy is applicable to the domain name at issue.

- Indicate the current status of the domain name.

- By email dated August 25, 2000, NSI advised WIPO Center as follows:

- NSI had received a copy of the Complaint from the Complainant.

- NSI is the Registrar of the domain name registration "mysony.com".

- The Respondent, Sin, Eonmok, is the current registrant of the said domain name. He is also the administrative and billing contact for the domain name. The technical and zone contact is Help Desk, KPO Box 1027, Seoul, Korea.

- NSIís 5.0 Service Agreement is in effect.

- The domain name registration "mysony.com" is in "Active" status.

With effect from January 1, 2000, NSI adopted the policy for Uniform Domain Name Dispute Resolution adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). As can be deduced from the advice of NSI that the domain name in question is still "active", the Respondent has never requested that the domain name at issue be deleted from the domain name database. The Respondent has not sought to terminate his agreement with NSI. Accordingly, the Respondent is bound by the provisions of NSIís Domain Name Dispute Resolution Policy, i.e., the ICANN policy.

Having verified that the Complaint satisfied the formal requirements of the Uniform Policy and the Uniform Rules, WIPO Center on August 28, 2000 transmitted by courier, email and facsimile a notification of Complaint and Commencement of Administrative Proceedings to the Respondent. A copy of the Complaint was also emailed to NSI and ICANN.

The Respondent was advised that a Response to the Complaint was required within 20 calendar days (i.e., by September 16, 2000). He was also advised that any Response should be communicated, in accordance with the Rules, by four sets of hard copy and by email.

The Respondent has made no response to the Complaint. On September 27, 2000, WIPO Center notified the Respondent by email and post of the consequences of his default in failing to file a Response.

The Complainant elected to have its Complaint resolved by a 3-member Panel: it has duly paid the amount required of it to WIPO Center.

On October 23, 2000, WIPO Center invited the Honourable Sir Ian Barker QC of Auckland, New Zealand, to chair the Panel in this case. It had previously invited Dr Andrew Christie of the University of Melbourne, Australia, and Mr Ross Wilson of IP Australia, to be Panelists. It transmitted to all Panelists a statement of acceptance and requested from each of them a declaration of impartiality and independence.

All Panelists duly advised their acceptance and forwarded to WIPO Center their statements of impartiality and independence. On October 30, 2000, the Complainant and the Respondent were notified of the appointment of the Panel. The Administrative Panel has been properly constituted in accordance with the Rules and the Supplemental Rules.

On October 30, 2000, WIPO Center forwarded to the Panelists by courier the relevant submissions and the record. These were duly received by them. In terms of Rule 5(b), in the absence of exceptional circumstances, the Panel is required to forward its decision by November 12, 2000.

The Panel has independently determined and agrees with the assessment of WIPO Center that the Complaint meets the formal requirements of the Rules for Uniform Domain Name Dispute Resolution Policy as approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy ("the Supplemental Rules").

The language of the administrative proceeding is English, being the language of the registration agreement.

 

4. Factual Background

The Complainant is one of the worldís largest entertainment and electronics companies. It is a leading manufacturer of audio, video, communications and information technology products for the consumer and professional markets. Its activities are comprehensive, ranging over music, motion pictures, television production, computer entertainment operations and online businesses.

The Complainant is publicly-owned, with shares listed on 16 stock exchanges worldwide including Tokyo, New York and London.

While the Complainantís primary business activities are in entertainment and consumer electronics, it is also involved in finance, life insurance, chemicals and many other business, all in connection with the "Sony" mark.

The Complainant conducts its businesses almost exclusively in connection with the name and trademark "Sony" which is registered in over 150 countries including Japan, Korea and the United States.

The Complainant has been in business for over 40 years and currently has annual sales in excess of $63 billion dollars (US) and employs over 189,000 people worldwide.

It has invested heavily in research and development which has resulted in "Sony" brand products which have become household items, such as the Trinitron color television receiver, Walkman personal stereo, Discman portable CD player, Handycam video camcorder, Playstation video game console and, more recently, the Wega flatscreen television receiver and Vaio laptop computer.

The Complainant spends millions of dollars a year advertising and promoting the "Sony" trademark throughout the world. The "Sony" mark has been disseminated through all types of advertising media such as network and cable television programming, radio broadcasting and print media as well as online advertising and promotions.

Sony owns more than 400 trademark registrations in Japan for the mark "Sony" and composite marks thereof, more than 60 registrations and applications in the United States and more than 90 trademark registrations in Korea. These registrations cover an extensive range of goods and services. The Panel has perused copies of the relevant trademarks which were attached in detail to the Complaint. The United States-registered marks include "My First Sony" as well as "Sony".

The word "Sony" is a coined or invented word and does not have any meaning other than as the trademark "Sony".

The Complainant conducts business on the Internet. For example, since 1996 it has continuously operated a website at <http://www.sony.com> which has online games, information concerning music, movies, TV electronics, Playstation video games and Sony Corporation and its affiliates worldwide.

Sony, through its subsidiary, Sony (Malaysia) Bdn Bhd, is providing a website entitled "My Sony" located at <http://www.sony.com.my> and has common law rights therein. The "My Sony" site is accessible throughout the world and provides information on "Sony" brand products, events, online promotions and happenings provided by Sony (Malaysia) Bdn Bhd.

On March 6, 2000, the Respondent, without authorization from the Complainant, registered the domain name "mysony.com" with NSI.

Prior to the Respondentís registration of the domain name "mysony.com", NSIís WHOIS database showed that the Respondent had registered numerous domain names which incorporated the Complainantís "Sony" mark as at January 16, 2000. The Respondentís "Sony" domain names include the following:

calsony.com

sonyn.com

hotsony.com

sonypresents.com

mildsony.com

sony7.com

sonycall.com

sony77.com

sonyfashion.com

sony777.com

sonyfund.com

sonyshow.com

sonym.com

sonystock.com

sonymild.com

sonystocks.com

sonymotors.com

onytour.com

sonyms.com

sunsony.com


The WHOIS records for the Respondentís "Sony" domain names display similar information concerning these registrations as provided by the Respondent for the registration of "mysony.com" (e.g., the registrant address and administrative, technical, zone and billing contact details are similar).

The other "Sony" domain names all use the "Sony" mark without the Complainantís authorization and are likewise confusingly similar to the Complainantís "Sony" mark.

On May 10, 2000, the Complainant sent a cease and desist letter by Federal Express to the Respondent objecting to the registration of the domain name "mysony.com" as well as to the registrations of the other "Sony" domain names and requesting a transfer of the domain name "mysony.com" to Sony. The May 10th letter was delivered on May 20, 2000 and was accepted and signed for by I. J. Kim.

On or about May 12, 2000, the Respondent transferred the domain names "hotsony.com", "mildsony.com", "sonyfashion.com", "sonyfund.com", "sonym.com", "sonymotors.com", "sonyms.com", "sonyn.com", "sony7.com", "sony77.com", "sony777.com", "sonyshow.com", "sonystock.com" and "sonytour.com" to "Kyunghun, Shin" ("Kyunghun") with an address of paraom@dreamwiz.com, Taejon, KR and with the same telephone number as the Respondent. As of June 8, 2000, Kyunghun, the new registrant for these domain names, has not paid the registration fees for these domain names.

On or about May 23, 2000, the Respondent transferred the domain names "calsony.com", "sonycall.com", "sonymild.com", "sonypresents.com", "sonystocks.com" and "sunsony.com" to "Inja, Kil" ("Inja") with a registrant address of paraog@dreamwiz.com, Taejon, KR and with the same telephone number as the Respondent. As of June 8, 2000, Inja, the new registrant for these domain names, has not paid the registration fees for these domain names.

After having transferred 20 of the 21 "Sony" domain names to these other parties, on May 29, 2000, the Complainantís counsel received an e-mail from the Respondent dated May 29, 2000 stating that he "owned" the domain name "mysony.com", acknowledging receipt of the May 10th cease and desist letter and questioning the "problem" with this domain name. On June 2, 2000 the Complainantís counsel responded by repeating the Complainantís request for the Respondent to turn over the domain name "mysony.com".

A search of NSIís WHOIS database dated June 9, 2000 shows that the Respondent has registered over 2000 domain names. In addition, this list shows that the Respondent has registered many other well-known trademarks owned by third parties such as "Hyundai", "LPGA", "Nasdaq", "NFL" and "Samsung". A copy of this search list and copies of WHOIS records for several of these domain names are included as Appendix M to the Complaint.

 

5. Complainantís Contentions

The Respondentís domain name is a total appropriation of the Complainantís famous and invented "Sony" mark and name and is virtually identical to the "Sony" mark visually, phonetically and connotatively. The "mysony.com" domain name is therefore confusingly similar to the mark "Sony" in which the Complainant has rights and is the owner thereof.

In addition, the domain name "mysony.com" is virtually identical as well as confusingly similar to other "Sony" composite marks belonging to the Complainant which use the word "my" such as "My First Sony", "My Kantan Sony" and "My Easy Sony".

Further, the domain name "mysony.com" is identical to the name "My Sony" used by the Complainant for its Malaysian website of which the Complainant has common law rights and use prior to the Respondentís registration date for "mysony.com"(i.e., March 6, 2000).

The Complainant adopted and has used its various "Sony" marks for many years, preceding the registration date of the domain name. It is inconceivable that the Respondent did not have knowledge of the Complainantís "Sony" mark when registering the domain name "mysony.com", particularly since he also registered 20 other domain names using the Complainantís "Sony" mark.

The Complainant has not been licensed, contracted or otherwise permitted by the Respondent in any way to use the "Sony" mark or to apply for any domain name incorporating the "Sony" mark, nor has the Complainant acquiesced in any way to such use or application of the "Sony" mark by the Respondent. Indeed, at no time did the Respondent have authorization to register the domain name "mysony.com" or any of the other "Sony" domain names listed above.

There is no evidence that the Respondentís use, or demonstrable preparations to use, the domain name "mysony.com" is in connection with a bona fide offering of goods or services. Since the registration of the domain name on March 6, 2000, no website has been or is accessible by using the domain name "mysony.com", nor does the Respondent appear to have any other online location with respect to this domain name.

There is no evidence to show the Respondent, as either an individual, business, or other organization, has been or is commonly known by the domain name "mysony.com" or has acquired any trademark or service mark rights in the domain name.

There is no evidence to show the Respondent is making a legitimate non-commercial or fair use of the domain name "mysony.com", without intent for commercial gain misleadingly to divert consumers or to tarnish the marks at issue so as to create an impression of association with the Complainant.

Between January 16 and March 6, 2000, the Respondent registered or was involved in the registration of 21 domain names incorporating the "Sony" mark. Based upon the numerous trademark registrations for and the fame, goodwill and notoriety associated with the "Sony" mark, it is impossible to conceive of a circumstance in which the Respondent could legitimately use the domain name "mysony.com". Furthermore, based upon the number of domain name registrations by the Respondent incorporating the "Sony" mark, the Respondent was clearly well aware at the time of registering the domain name "mysony.com" that the Complainant was the owner of the mark "Sony". In addition, based upon the Complainantís use of the name "My Sony" for its Malaysian website and the accessibility of this site worldwide, the Respondent must have been aware at the time of registering the domain name that the Complainant was the owner of this mark. Clearly, the Respondent has registered the domain name "mysony.com" in bad faith in order to prevent the Complainant from reflecting the mark in a corresponding domain name.

In addition, the Respondentís transfer of the other "Sony" domain names to "Inja" and "Kyunghun" without paying the required registration fee is further evidence that the Respondent has no right or legitimate interest in such domain names and that the Respondent transferred these other "Sony" domain names to conceal his bad faith use and registration of these domain names and to obstruct the Complainantís efforts to obtain rightful title to such domain names. Such actions are further evidence of the Respondentís bad faith.

These domain name registrations show that the Respondent has engaged in "a pattern of such conduct", i.e., registering domain names utilizing well-known trademarks in which the Respondent has no rights or legitimate interests. Such "pattern of conduct" is further evidence of the Respondentís registration and use of the domain name "mysony.com" in bad faith pursuant to paragraph 4(b)(ii) of the Policy. See Guerlain S.A. v. Peikang, WIPO D2000-0055, where the Respondent had registered 24 domain names of which 14 were easily recognizable as consisting of third party trademarks such as "Lufthansa.net", "federalexpress.net" etc. It could be justifiably inferred that the Respondentís real business was registering third partiesí trademarks as domain names to prevent bona fide trademark owners from doing business on the Internet under their trademark names. It was held by the Panel in that case that the Respondentís passive holding of the Complainantís mark as a domain name in that situation constituted bad faith use.

There is no evidence to show that the Respondent has taken any positive action in relation to the "mysony.com" domain name. Such inaction, called "passive holding" of a domain name, has been held to constitute use of a domain name in bad faith. See Telstra Corporation Limited, WIPO D2000-0003, p. 7 and Compaq Computer Corporation v. Beric, WIPO D2000-0042, p. 8.

The Respondentís registration of the domain name "mysony.com" is similarly a "passive holding" that constitutes use of the domain name in bad faith because:

(i) the Complainantís mark is an invented mark that has a strong worldwide reputation;

(ii) there is no evidence of any actual or contemplated good faith use by the Respondent of the domain name; and

(iii) it is impossible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate, such as passing off, infringing, diluting or cybersquatting the Complainantís rights under trademark law.

Based upon the above, the Respondent registered the domain name "mysony.com" and is using this domain name in bad faith.

The Respondent has made no submission.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the 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".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

- That the Respondent has no legitimate interests in respect of the domain name.

- That the domain name has been registered and used in bad faith.

The Panel agrees with the submissions of the Complainant articulated above.

The Panel determines that the domain name "mysony.com" is confusingly similar to the Complainantís trademark "Sony". The letters "my", to an English language reader, introduce the concept of possessiveness. That which is possessed is the following letters, namely "Sony", which is the Complainantís trademark. The addition of the letters "my" has the effect of focusing the readerís attention on the Complainantís trademark. Accordingly, the Panel considers that a reader of the domain name would be confused into thinking that the domain name is associated with the Complainant.

The Panel determines that the Respondent has no right or legitimate interest in respect of the domain name for the following reasons:

(a) The Respondent has not provided evidence of circumstances of the type specified in paragraph 4(c) of the Uniform Policy, or of any other circumstances, giving rise to a right to or legitimate interest in the domain name.

(b) The domain name bears no relationship to any business or other activity of the Respondent.

(c) The mark "Sony" is not one that the Respondent would legitimately choose in the context of provision of goods, services or information via a website unless seeking to create an impression of an association with the Complainant.

The Panel further determines that, in accordance with paragraph 4(b)(ii) of the ICANN Policy, the Respondent has registered and is using the domain name in bad faith. The Complainantís trademark "Sony" is long-established and widely known. In the absence of evidence or even an assertion by the Respondent to the contrary, knowledge of the Complainantís rights in the trademark can be imputed to the Respondent at the time of its registration of the domain name. When this imputed knowledge is combined with the fact that the Respondent has no right or legitimate interest in the domain name, the fact that the Respondent has engaged in conduct of the type described in paragraph 4(b)(ii) of the Uniform Policy, and the fact that the Respondent provided no evidence or even an assertion of a good faith use which it could make of the domain name, there are sufficient grounds to persuade the Panel that the domain name "mysony.com" was registered and is being used by the Respondent in bad faith.

 

7. Decision

For the foregoing reasons, the Panel decides:

(a) that the domain name registered by the Respondent is confusingly similar to the trademark in which the Complainant has rights;

(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and

(c) that the Respondentís domain name has been registered and is being used in bad faith.

Accordingly, pursuant to paragraph 4(i) of the Policy, the Panel requires that the Registrar, Network Solutions, Inc, transfer to the Complainant, Sony Kabushiki Kaisha also trading as Sony Corporation, the domain name "mysony.com".

 

 


 

 

Hon Sir Ian Barker QC
Presiding Panelist

 

 


 

 

Andrew Christie Ross Wilson
Panelist Panelist

Dated: November 16, 2000