WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Kabushiki Kaisha also trading as Sony Corporation v. Fujiko Kikuno
Case No. D2000-1372
1. The Parties
The Complainant is Sony Kabushiki Kaisha also trading as Sony Corporation, a company incorporated in Japan, with its head office at 6-7-15, Kitashinagawa, Shinagawa-ku, Tokyo 141-0001, Japan.
The Respondent is Fujiko Kikuno, with an address of 7-6-1003 Hiroshima City, Naka-ku, Koamicyo, Hiroshima 730-0855, Japan.
2. The Domain Name and Registrar
The Domain Name at issue is <sonysonpo.com>. The Registrar is interQ Incorporated, having its office at Shibuya Infoss Tower 10F, 20-1 Sakuragaoka-cho, Shibuya-ku, Tokyo 150-0031, Japan.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on October 11, 2000, by e-mail and on October 13, 2000, in hardcopy.
The Acknowledgement of Receipt of the Complaint was sent by the Center to the Complainant on October 13, 2000. On October 17, 2000, the Center sent a Request for Registrar Verification to interQ Incorporated. On October 18, 2000, the Center received from the Registrar a Verification Response confirming that the Registrar is the registrar of the said domain name, that the Respondent is the current registrant of the said domain name, and that the said domain name is in "active" status.
The Center, with having confirmed that the formal requirements are complied, sent a Notification of the Complaint and Commencement of Administrative Proceeding to the Respondent on October 25, 2000.
The Respondent has made no Response to the Complaint before the due date, and the Center sent a Notification of the Respondent's Default to the parties on November 15, 2000.
The Center sent a notification of the Appointment of Administrative Panel and Projected Decision Date on November 24, 2000.
4. Factual Background
The facts stated in the Complaint are as follows:
(1) The Complainant is a leading manufacturer of audio, video, communication and information technology products for consumer and professional markets. In addition, the Complainant is involved in a wide range of businesses including finance, insurance, chemicals and many others.
(2) The Complainant conducts its business almost exclusively in connection with the name and trademark SONY, and the SONY trademark is registered in over 110 countries including Japan, Korea and the United States.
(3) As a result of the commercial success of SONY products, the SONY mark has developed an enviable cache, image and reputation and is one of the most famous marks in the world. In both Japanese and English languages, the word SONY is a coined or invented word and does not have any meaning other than as the trademark SONY. The Complainant owns more than 60 trademark registrations for the trademark SONY in Japan, where the Complainant is headquartered, the Domain Name at issue is registered and the Respondent is located, and over 60 registrations and applications in the United States.
(4) The Complainant conducts insurance operations principally through Sony Life Insurance Co., Ltd., a Japanese stock life insurance subsidiary, and Sony Assurance Inc. ("Sony Assurance"), a wholly-owned Japanese non-life insurance subsidiary. The Complainant has positioned its financial businesses, including Sony Assurance, as a main business pillar along side such sectors as electronics and entertainment.
(5) Since the start of operations in October 1999, Sony Assurance has been selling "one on one" brand automobile insurance directly to individuals by telephone and over the Internet. Sony Assurance uses a direct marketing model tailored to today's network society, and is working to build a new type of relationship between customers and an insurer. Sony Assurance is the first Japanese auto insurer to offer a "one-step application" service through which customers can accomplish all steps from obtaining a quotation through applying for and purchasing automobile insurance on the company's homepage. As of March 31, 2000, more than 6,000 policies had been sold using this service. Sony Assurance also provides policies offering upgraded protection, a negotiation service available on weekends.
(6) Sony Assurance maintains a website located at <sonysonpo.co.jp>. The word "SONPO", an abbreviation of the Japanese word "songai-hoken", is commonly used to refer to accident insurance in Japan. In Japanese, Sony Assurance is commonly referred to as "Sony Sonpo", meaning "Sony Accident Insurance". Therefore, the Complainant also has common law trademark rights in SONY SONPO for accident insurance services in Japan and common law trademark rights in <sonysonpo.co.jp> for online accident insurance services accessible through its website at that location.
(7) On April 1, 2000, the Respondent, without authorization from the Complainant, registered the Domain Name <sonysonpo.com> with interQ Incorporated. On May 30, 2000, the Complainant sent a letter to the Respondent, in English and Japanese, setting forth Sony's trademark rights in its famous mark and name SONY and demanding that the Respondent cease the use of the domain name <sonysonpo.com> or any variation thereof and transfer the said domain name to the Complainant. (a copy of this letter is attached to the Complaint as Annex 2). The Respondent failed to respond to this letter before the stated deadline, and the Complaint re-sent the above-mentioned letter to the Respondent on June 23, 2000.
(8) On June 28, 2000, the Complainant received a telephone call from the Respondent's husband, Mr. Kikuno, stating that his wife wishes to transfer the Domain Name <sonysonpo.com> to the Complainant in exchange for the reimbursement of the costs associated with its registration. The Complainant requested that this offer be submitted in writing before the stated deadline of July 5, 2000. The Complainant did not receive a written offer from the Respondent, and the Respondent failed to contact the Complainant before the filing of this Complaint.
5. Parties’ Contentions
The Complainant requests the Administrative Panel the issuance of a decision to effect the transfer of the Domain Name to the Complainant on the following grounds:
1. Each of the following three elements specified in paragraph 4(a) of the Uniform Policy are applicable to the dispute:
(i) The Domain Name is identical or confusingly similar to a trademark or a service mark in which the Complainant has rights;
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith.
2. As to element (1) above, the relevant part of the Domain Name <sonysonpo.com> is the second level domain portion SONYSONPO, since the presence of the top level domain (TLD) "com" suffix is irrelevant in the comparison of a domain name to a trademark. This part of the Domain Name is a combination of the Complainant's mark SONY with the descriptive noun SONPO, so the Domain Name reads as "SONY SONPO". The word SONPO is an abbreviation of the Japanese word "songai-hoken" which is commonly used as referring to accident insurance in Japan. The Complainant's subsidiary Sony Assurance is commonly known as "Sony Sonpo" and operates a website at <sonysonpo.co.jp>. Therefore, the Domain Name at issue, <sonysonpo.com>, is a total appropriation of the Complainant's famous and invented SONY mark and name and is virtually identical to the SONY mark visually, phonetically and connotatively. Thus, the Domain Name is confusingly similar to the mark SONY in which the Complainant has rights and has the ownership rights thereof and to the Complainant's common law rights in its <sonysonpo.co.jp> domain name and corresponding website.
3. As to element (2) above, the Respondent does not have any rights or legitimate interests in the Domain Name <sonysonpo.com> on the following grounds: First, the Respondent has not used the Domain Name <sonysonpo.com> in connection with a bona fide offering of goods or services. Secondly, the Respondent is not commonly known by the Domain Name, or acquired any trademark or service mark rights in it. Thirdly, the Respondent, by agreeing to transfer the Domain Name to the Complainant, has impliedly admitted her lack of any rights or legitimate interests in the Domain Name.
4. As to element (3) above, evidence of bad faith registration and use is established by the following circumstances;
(i) The Complainant has not authorized the Respondent to register the Domain Name or set up any corresponding website. Without authorization from the Complainant, there is no conceivable use of the Domain Name except to sell it to the Complainant. The Respondent attempted to sell, rent or otherwise transfer the Domain Name to the Complainant for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name.
(ii) There is no evidence to show that the Respondent has taken any positive action in relation to the Domain Name. This inaction, called "passive holding", of a domain name, constitutes use of the Domain Name in bad faith, because the Complainant's SONY marks have a strong worldwide reputation and it is impossible to conceive of any plausible use of the Domain Name by the Respondent that would be legitimate, and would not constitute passing off, infringement, dilution or cybersquatting of the Complainant's rights under U.S. and Japanese trademark law.
The Respondent failed to file a Response to the Complaint.
6. Discussion and Findings
Paragraph 4 (a) of the Policy requires the Complainant to prove that each of the following elements are present:
(i) 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;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Since the Respondent has failed to respond to the Complaint within the stipulated time, the Panel assumes that the Respondent admits, and does not contest, all the facts asserted by the Complainant in the Complaint. Upon careful review of the evidential materials submitted by the Complainant to support its contentions, the Panel finds that:
(1) The dominant part of the Domain Name <sonysonpo.com>, being SONY, is identical to the Complainant's famous trademark SONY registered and used by the Complainant and its affiliated companies throughout the world including Japan, Korea and the United States (See Annex 5 to the Complaint), and the second level portion of the Domain Name, SONYSONPO, is identical or confusingly similar to the common designation, "Sony Sonpo", of the Complainant's wholly-owned subsidiary Sony Assurance who is operating non-life insurance or "sonpo" (an abbreviation of "songai-hoken", meaning insurance against loss or damage) business in Japan, and identical to the domain name <sonysonpo.co.jp> registered by the Complainant for its non-life insurance business operated by Sony Assurance;
(2) The Respondent has no rights or legitimate interests in respect of the Domain Name, because there is no evidence to show that the Respondent has been or is commonly known by the Domain Name, or that the Respondent has acquired any trademark rights in the Domain Name, and the Complainant has never authorized or permitted the Respondent to use "SONY" or "SONY SONPO" marks in her domain name;
(3) The Domain Name has been registered and used in bad faith, because the Respondent has never engaged in any insurance-related business in Japan, and the only conceivable reason for the Respondent to adopt "SONYSONPO" for her domain name is to sell it to the Complainant. This finding is supported by the Respondent's failure to respond to the Complainant's letter demanding cease and desist from using the mark SONY and the transfer of the Domain Name to the Complainant (See Annex 2 to the Complaint).
Although the Domain Name at issue has been registered under the domain name registration agreement in the Japanese language, as confirmed by the registrar, the Panel finds that it is appropriate for this proceeding to have been conducted in the English language. In this connection, the Panel notes, inter alia, that, according to the records at hand, the Respondent appears to have been put on notice in English and Japanese, and has contacted the Complainant in English before the commencement of this proceeding.
Based on the above findings, the Panel hereby decides that the registration of the Domain Name at issue, <sonysonpo.com>, shall be transferred to the Complainant Sony Kabushiki Kaisha.
Dated: December 27, 2000