WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Kabushiki Kaisha v. sony.net
Case No. D2000-1074
1. The Parties
Complainant: Sony Kabushiki Kaisha
(t/a Sony Corporation)
6-7-35 Kitashinagawa, 6-chome
2. The Domain Name and Registrar
Domain Name: sony.net
Registrar: Network Solutions Inc.
3. Procedural History
The Complaint was received by WIPO by email on August 15, 2000, and in hardcopy form on August 18, 2000. WIPO has verified that the Complaint satisfies the formal requirements of the Policy, the Rules and the Supplemental Rules and that payment was properly made. The Administrative Panel ("the Panel") is satisfied that this is the case.
The Complaint was properly notified in accordance with the Rules, paragraph 2(a). The Registrar has confirmed that "sony.net" ("the Domain Name") was registered through Network Solutions Inc. and that "sony.net" is the current registrant. The Registrar has further confirmed that the Policy is applicable to the Domain Names.
On September 1, 2000, WIPO notified the Respondent of the Complaint in the usual manner and informed the Respondent inter alia that the last day for sending its Response to the Complainant and to WIPO was September 20, 2000. No response having been received, on September 21, 2000, WIPO issued to the Respondent a notice of default.
The Panel was properly constituted. The undersigned Panelists submitted Statements of Acceptance and Declarations of Impartiality and Independence.
No further submissions were received by WIPO or the Panel, as a consequence of which the date scheduled for the issuance of the Panelís Decision, is December 10, 2000.
4. Factual Background
The Complainant is the well known proprietor of the household name, SONY, one of the worldís leading brands in the fields of inter alia entertainment and electronics. The Complainant is the proprietor of numerous trade mark registrations around the world for the word mark SONY. The Complainant has produced trademark registration certificates evidencing several such registrations in Japan, Korea and the United States. For present purposes it is sufficient to mention just one, namely Korean registration number 5860 dated August 17, 1961, for inter alia radios, televisions, tape recorders and accessories and parts thereof.
The Complainant has been doing business under the name SONY for many decades and has an annual turnover running into tens of billions of dollars.
The Complainant is the proprietor of the domain name "sony.com", which is connected to its website, providing online games and information relating to the Complainant and its products.
The Respondent registered the Domain Name on January 11, 2000. On May 30, 2000, the Complainant through its lawyers sent a letter to the Respondentís administrative contact, a Mr. Park, requesting that he cease and desist all use of the Domain Name and that the Domain Name be transferred to the Complainant. Mr. Park did not reply, so the Complainantís lawyers wrote to him again on June 28, 2000, requesting a response by July 12, 2000. No response having been received, the Complainant launched this Complaint.
5. Partiesí Contentions
The Complainant points to the worldwide fame of its name and principal trademark, SONY, and the fact that in the Japanese, English and Korean languages the word is a coined word and meaningless.
The Complainantís "legal arguments" are as follows:
The Respondentís domain name is "sony.net", which makes the relevant part of the domain name "SONY". Therefore, the "sony.net" domain name is a total appropriation of the Complainantís famous and distinctive mark and name SONY, and is identical to the mark SONY visually, phonetically and connotatively. The "sony.net" domain name is therefore identical and confusingly similar to the mark SONY in which the Complainant has rights and is the owner thereof.
The Respondent has not been licensed, contracted or otherwise permitted by the Complainant in any way to use the mark SONY or to apply for any domain name incorporating the mark SONY. Nor has the Complainant acquiesced in any way to such use or application of the mark SONY by the Respondent. Indeed, at no time did the Respondent have authorization to register the domain name "sony.net" or any other SONY domain names.
There is no evidence that Respondentís use or preparations to use the domain name "sony.net" is in connection with a bona fide offering of goods or services. Indeed, since the registration of the domain name on January 11, 2000, and as of the filing date of this Complaint, no Web site has been or is accessible by using the domain name "sony.net". Nor does the Respondent appear to have any other online location with respect to this domain name.
There is no evidence that shows the Respondent, as either an individual, business, or other organization, has been or is commonly known by the domain name "sony.net" or has acquired any trademark or service mark rights in the domain name.
There is no evidence that shows the Respondent is making a legitimate non-commercial or fair use of the domain name "sony.net", 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.
Based upon the above, the Respondent clearly has no rights or legitimate interests in respect of the domain name "sony.net".
The Respondent selected the domain name "sony.net" and uses it with the intention and purpose of creating a likelihood of confusion and trading upon the goodwill and reputation of the Complainant. Also, the Respondent has not ceased this wrongful behavior despite the Complainantís written requests to cease and desist.
There is no evidence that shows that the Respondent has taken any positive action in relation to the "sony.net" domain name.
In this situation, the Respondentís registration of the domain name "sony.net" is similarly a "passive holding" that constitutes use of the domain name in bad faith because: (i) the Complainantís mark is an invented and coined 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 by being a passing off, an infringement, dilution or cybersquatting of the Complainantís rights under trademark law.
Based upon the above, the Respondent registered the domain name "sony.net" and is using this domain name in bad faith.
The Respondent has not responded.
6. Discussion and Findings
According to paragraph 4(a) of the Policy, the Complainant must prove that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interest in respect of the Domain Name; and
(iii) The Domain Name has been registered and is being used in bad faith.
Identical or confusing similarity
The Domain Name comprises two elements, namely Ďsonyí, which is the Complainantís trademark, and Ď.netí, which is generic. Clearly, whether or not one disregards the Ď.netí element of the Domain Name, it is either identical to or confusingly similar to the Complainantís trademark.
The Panel finds that the Domain Name is identical or confusingly similar to a trademark in which the Complainant has rights.
Rights or legitimate interest of the Respondent
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Names requires the Complainant to prove a negative. For the purpose of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of the Respondent.
The Complainantís name and principal trademark, SONY, is a household name, exclusively associated with the Complainant and its products. The Domain Name is essentially the Complainantís name and principal trademark. There is no obvious reason why the Respondent might have a legitimate interest in the Domain Name. The Respondent has not sought to claim that it has any rights or legitimate interests in respect of the Domain Name and the Panel has no evidence before it to suggest any reason why the Respondent might have any rights or legitimate interests in the Domain Name.
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name.
Paragraph 4(b) of the Policy sets out four non-exclusive criteria, which shall be evidence of the registration and use of a domain name in bad faith. There is no evidence to support any of those criteria beyond the Domain Name itself.
Paragraph 4(b)(i) concerns acquisition of the Domain Name in order to sell it, but there is no evidence that the Respondent intends to sell it. Paragraph 4(b)(ii) concerns acquisition for the purpose of blocking the Complainant, provided that the Respondent has engaged in a pattern of such conduct, but there is no evidence of any such pattern of conduct. Paragraph 4(b)(iii) involves disruption of the business of a competitor, but there is no evidence that the Respondent is a competitor of the Complainant. Paragraph 4(b)(iv) involves use of the Domain Name for the purpose of attracting visitors to the Respondentís online location in the mistaken belief that they are visiting a location of or associated with the Complainant. There is no evidence that the Domain Name is connected to an online location. Despite the Complainantís assertion that the Complainantís purpose is to cause confusion, there is no evidence of that.
However, paragraph 4(b) does not comprise an exhaustive list of the circumstances, which shall constitute evidence of registration and use in bad faith. In the view of the Panel, while inaction should never of itself constitute evidence of registration and use in bad faith, inaction may do so where the Domain Name comprises a name which can only sensibly refer to the Complainant, where there is no obvious possible justification for the selection of the Domain Name, where the Respondent has not sought to put before the Panel any credible justification for selection of the Domain Name and where it is difficult to conceive of any use of the Domain Name, which will not be likely to cause confusion of some kind.
The Panel finds that those circumstances exist here. The Domain Name can only sensibly refer to the Complainant, there is no obvious possible justification for the Respondentís selection of the Domain Name, the Respondent has not sought to put before the Panel any justification for its selection of the Domain Name and it is difficult to conceive of any use of the Domain Name, which will not be likely to cause confusion of some kind. In the Panelís view the threat that such use may be made of the Domain Name constitutes use in bad faith.
Accordingly, the Panel finds that the Domain Name was registered and is being used in bad faith.
In the result, the Panel having found that the Domain Names are confusingly similar to a trade mark in which the Complainant has rights and that the Respondent has no rights or legitimate interests in respect of the Domain Names and that the Domain Names have been registered in bad faith and are being used in bad faith, the Complaint succeeds.
The Panel directs that the Domain Name, sony.net, be transferred to the Complainant.
Anna Carabelli Moon Sung Lee
Dated: November 28, 2000