WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil
Case No. D2000-1409
1. The Parties
The complainant is Sony Kabushiki Kaisha (also trading as Sony Corporation) of 6-7-35, Kitashinagawa, 6-chome, Shinagawa-ku, Tokyo, Japan. The respondent is Inja, Kil of Altongcorp, 103-1802 hyundaeapt, eupnae-dong, taejon, Republic of Korea.
2. The Domain Names and Registrar
The disputed domain names are :-
The registrar with which all the domain names are registered is Network Solutions Inc., of Herndon, Virginia, USA.
3. Procedural History
This is an administrative proceeding pursuant to the Uniform Domain Name Dispute Resolution Policy ("the Policy") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999, in accordance with the Rules for the Policy, approved by ICANN on October 24, 1999 ("the Rules") and the Supplemental Rules for the Policy ("the Supplemental Rules") of the WIPO Arbitration and Mediation Center ("the Center").
The complaint was received by the Center by email on October 17, 2000 and in hard copy on October 20, 2000. Receipt was acknowledged on October 23, 2000. On that day registration details were sought from the registrar. On October 29, 2000 registration details were confirmed by the registrar, which stated that its Service Agreement version 5.0 applied. That agreement incorporates the Policy and requires the registrant to submit to administrative proceedings under the Policy.
On October 31, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee, and formally notified the respondent by post/courier and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
The last day specified in the notice for a response was November 20, 2000. No response was filed. On November 22, 2000 the Center notified the respondent that it was in default and that the Center would proceed to appoint an administrative panel.
On November 30, 2000 the complainant submitted, by way of amendment to the complaint, that the panel should regard as persuasive the findings in its favor made on November 16, 2000 in case D2000-1007 concerning the domain name mysony.com.
On November 30, 2000, the Center invited Alan L. Limbury to serve as panelist. That day, Mr. Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On November 30, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of December 13, 2000.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Centerís assessment concerning the complaintís compliance with the formal requirements; the complaint was properly notified in accordance with paragraph 2(a) of the Rules; no response was filed and the administrative panel was properly constituted.
In considering whether to receive the amendment to the complaint, the panel has noted the reported decision mentioned in the amendment. Since the domain names in dispute in the two cases and the respondents and their circumstances are different, the panel has decided not to permit the complainant to amend its complaint. The panel has not had regard to the findings in case D2000-1007 in determining this complaint.
4. Factual Background (uncontested facts)
The complainant is one of the worldís largest entertainment and electronics companies with shares listed on 16 stock exchanges worldwide including Tokyo, New York and London. It has been doing business for over 40 years and currently has annual sales in excess of $63 billion dollars and over 189,000 employees worldwide. It is a leading manufacturer of audio, video, communications and information technology products for consumers and professionals. Its activities include music, motion pictures, television production, computer entertainment operations, online businesses, finance, life insurance, chemicals and many other businesses.
The complainant conducts its businesses almost exclusively in connection with the name and trademark SONY, registered in over 150 countries including Japan, Korea and the United States.
The complainant has invested substantially in research and development, resulting in such well known SONY brand products as the Trinitron color television receiver, Walkman personal stereo, Discman portable CD player, Handycam video camcorder, Playstation video game console, 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.
As a result of the commercial success of SONY products, the SONY mark is one of the most famous marks in the world. According to a survey conducted by Landor Associates, a San Francisco based corporate image consultant, SONY is third in the top ten most recognized and respected brand names in the Western world, after COCA-COLA and IBM.
SONY is a coined or invented word and does not have any meaning other than as a trademark.
Since 1996 the complainant has operated a Web site at <http://www.sony.com> which has online games and information concerning music, movies, TV electronics, Playstation video games and concerning the complainant and its affiliates worldwide.
The complainant plans to continue to expand its internet-related activities by offering more services over the Internet as well as offering SONY brand products for sale directly online and through authorized Internet dealers.
The complainant 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. Copies of the relevant certificates of registration were attached to the complaint.
On May 23, 2000 the respondent, without authorization from the complainant, registered the disputed domain names with the registrar, except SONYSTUDY.COM, which was registered on May 24, 2000.
The disputed domain names were originally registered by Mr. Eonmok Sin ("Sin"), an individual residing in Korea. Mr. Sin had also registered numerous other domain names incorporating the SONY mark, including MYSONY.COM.
On May 10, 2000, the complainantís attorney sent Mr. Sin a letter concerning the MYSONY.COM mark, advising Mr. Sin that his registration of this domain name violated the complainantís rights, particularly since Mr. Sin had registered numerous other SONY domain names, including those the subject of this complaint. Upon Mr. Sinís receipt of the complainantís letter, he assigned the disputed domain names to the respondent and assigned other domain names incorporating the mark SONY to Mr. Shin Kyunghun. Mr. Sin remained the registrant of MYSONY.COM, the subject of case D2000-1007.
The complainant, in filing this proceeding, also filed a complaint against Mr. Shin Kyunghun.
5. Partiesí Contentions
Identity and confusing similarity
The disputed domain names all incorporate the complainantís famous and invented name and mark SONY and are virtually identical and confusingly similar to the SONY mark.
The complainantís adoption and use of the SONY mark precede by forty years the respondentís registration of the disputed domain names. It is inconceivable that the respondent did not have knowledge of the complainantís SONY mark when these domain names were transferred to him.
The respondent was not authorised by the complainant to use the SONY mark nor to apply for any domain name incorporating it.
There is no evidence of the respondentís use, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services. No web sites have been or are accessible by using these domain names, nor does the respondent appear to have any other online location with respect to them. As of October 2, 2000, the respondent has not paid the registration fees
There is no evidence the respondent has been or is commonly known by the disputed domain names or has acquired any trademark or service mark rights in them.
There is no evidence the respondent is making a legitimate non-commercial or fair use of the disputed domain names 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 disputed domain names.
On May 23 and 24, 2000, the respondent became the registrant of the disputed domain names incorporating the SONY mark, a mark that was invented and coined by the complainant. 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 disputed domain names.
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 these domain names that the complainant was the owner of the mark SONY. Clearly, the respondent registered these domain names in bad faith in order to prevent the complainant from commercially using the SONY mark in these domain names. See Telstra Corporation Limited v. Nuclear Marshmallows, (D2000-0003).
The assignments, occurring after receipt of the complainantís letter, reveal the respondent as an accomplice of Mr. Sin who, by making the assignments, was attempting to conceal and/or obfuscate the fact that Mr. Sin held multiple SONY domain name registrations, which would constitute bad faith in the pending proceeding involving mysony.com.
The respondentís acceptance of the transfer of these domain names from Mr. Sin without paying the required registration fee is further evidence of the respondentís complicity in Mr. Sinís attempts at concealing his bad faith use and registration of these domain names. Such actions clearly were aimed at obstructing the complainantís efforts to obtain rightful title to such domain names. Such actions are further evidence of the respondentís bad faith.
A search of NSIís Whois database dated June 9, 2000 shows that the respondent has registered over 1,000 domain names, including many other well-known trademarks owned by third parties such as NBC, CNN, PGA, AOL and BBC.
Thus the respondent has engaged in "a pattern of such conduct" of 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 disputed domain names in bad faith pursuant to para. 4(b)(ii) of the Policy: see Guerlain S.A. v. Peikang, (D2000-0055).
There is no evidence the respondent has taken any positive action in relation to the disputed domain names and such inaction, called "passive holding" of a domain name, has been held to constitute use of the domain name in bad faith. See Telstra Corporation Limited, (supra) and Compaq Computer Corporation v. Beric, (D2000-0042).
The respondentís registration of the disputed domain names 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 disputed domain names and is using these domain names in bad faith.
There was no response or any other communication from the respondent.
6. Discussion and Findings
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and,
(iii) the disputed domain name has been registered and is being used in bad faith.
Numerous cases under the Policy have adopted and applied the principle that a respondentís failure to dispute the allegations of the complainant permits the inferences that the complainantís allegations are true and [where the respondent has a website corresponding to the domain name in dispute] that the respondent knows its website is misleading: see, for example, Hewlett-Packard Company v. Full System (FA 0094637); David G. Cook v. This Domain is For Sale (FA0094957) and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge (FA0094925).
A somewhat broader statement of principle is contained in Reuters Limited v. Global Net 2000, Inc. (D2000-0441):
"The Panel draws two inferences where the Respondent has failed to submit a response: (a)"the Respondent does not deny the facts which the Complainant asserts" and (b) "the Respondent does not deny the conclusions which the Complainant asserts can be drawn from those facts"."
Identity or confusing similarity
Each of the nineteen disputed domain names contains the whole of the complainantís registered trademark SONY. Neither the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix ".com" detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY, instantly recognizable as one of the most famous trademarks in the world. A reader of any of the disputed domain names would be confused into thinking that it was associated with the complainant.
The panel finds the complainant has established that each of the disputed domain names is confusingly similar to its SONY trademark.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish a registrantís rights or legitimate interests to a disputed domain name. The respondent has made no attempt to demonstrate any of these or any other circumstances of legitimacy and the panel infers that there are no such circumstances.
There is no evidence that any of the disputed domain names bears a relationship to any business or other activity of the respondent.
In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (Case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had neither used nor developed the domain name for a legitimate noncommercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (Case FA94970).
Here there has been no active use of any of the disputed domain names. It is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant. The respondent was not authorised by the complainant to use its mark nor any of the disputed domain names.
The respondent accepted the transfer of these domain names from Mr. Sin without paying the required registration fee: see Parfums Christian Dior v. 1 Netpower, Inc., (D2000-0022).
Under these circumstances, the panel finds the complainant to have established that the respondent has no rights or legitimate interests in respect of any of the disputed domain names.
In SportSoft Golf, Inc. v. Hale Irwinís Golfersí Passport (FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (FA94737); Canada Inc. v. Sandro Ursino (AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. Ebiotech.com (FA95037).
For the following reasons the panel finds that the respondent knew or should have known of the registration and use of the complainantís trademark SONY when he accepted the assignment from Mr. Sin and registered the disputed domain names in his own name:
(i) The name SONY is a coined word, having no meaning other than as a trademark denoting the goods and services of the complainant;
(ii) On the evidence the trademark SONY is famous: it is the third most recognized and respected brand name in the Western world;
(iii) The only feature common to all the disputed domain names is the mark SONY;
(iv) The assignment took place shortly after the complainant drew its rights in the SONY mark to the attention of Mr. Sin, whose address is identical to that of the respondent, from which the panel infers that Mr. Sin informed the respondent of the contents of the complainantís letter before making the assignment; and
(v) The respondent did not contest any of the complainantís assertions of fact nor its contentions.
The panel has found that it is inconceivable that the respondent could make any active use of the disputed domain names without creating a false impression of association with the complainant. Accordingly, the panel finds that one purpose for which the disputed domain names were registered by the respondent in his own name, following the complainantís letter to Mr. Sin, was to prevent the complainant from reflecting its mark SONY in corresponding domain names.
Registration for this purpose constitutes evidence of both bad faith registration and bad faith use (paragraph 4(b)(ii) of the Policy) provided the respondent has engaged in a pattern of such conduct.
In relation to each of the nineteen disputed domain names, the registration of the other eighteen provides sufficient evidence of a pattern of such conduct. There is further evidence of such a pattern: on the same days as the respondent registered the disputed domain names, he also registered other domain names incorporating the well-known trademarks of others, including AOL, CNN, NBC, PGA, BBC and CBS. Similar cases have been held to be classic cases of cybersquatting: Sanrio Company, Ltd and Sanrio, Inc. v. Neric Lau, (D2000-0172) and Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (D2000-0113).
Accordingly, the complainant has established that the disputed domain names were registered and are being used in bad faith, within the meaning of paragraph 4(b)(ii) of the Policy.
Because paragraph 4(b) deems bad faith registration of the kind described in paragraph 4(b)(ii) also to be evidence of bad faith use, it is unnecessary to invoke the principle of "passive use" established in Telstra Corporation Limited v. Nuclear Marshmallows (D2000-0003) and followed in such cases as Compaq Computer Corporation v. Beric (D2000-0042); Barneyís, Inc. v. BNY Bulletin Board (D2000-0059); Recordati S.P.A. v. Domain Name Clearing Company (D2000-0194); CBS Broadcasting, Inc. v. Dennis Toeppen (D2000-0400); Video Networks Limited v. Larry Joe King (D2000-0487) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (D2000-0468).
Pursuant to paragraphs 4(i) of the Policy and 15 of the Rules, the panel requires the following domain names to be transferred to the complainant:
Alan L. Limbury
Dated: December 9, 2000
1. Randall Rothberg, The Media Business: Advertising; For the U.S. and Japan, the Power of Brands, New York Times, November 14, 1988.
2. Another purpose was to assist Mr. Sin to defend himself against the complainant.