WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Kabushiki Kaisha a/t/a Sony Corporation and Sony Computer Entertainment Inc. v. Polytech Group Incorporated, SW E-Solutions Ltd. and Alex Banh
Case No. D2001-0536
1. The Parties
Complainants: Sony Kabushiki Kaisha
also trading as Sony Corporation
6-7-35, Kitashinagawa, 6-chome,
Sony Computer Entertainment Inc.
1-1, Akasaka 7-chome Minato-ku,
Tokyo, 107-0052 Japan
Respondents: Polytech Group Incorporated
The Creque Building
Upper Main Street (P.O. Box 116)
Road Town, Tortola
British Virgin Islands
SW E-Solutions Ltd.
Floor 9, Man Yee Building
68 Des Vouex Road
Central, Hong Kong
Floor 9, Man Yee Building
68 Des Vouex Road
Central, Hong Kong
2. The Domain Names and Registrars
Domain Names: <sonyplaystation2.com>
Registrar: Tucows.com, Inc.
3. Procedural History
On April 11, 2001, a Complaint about three disputed domain names, <sonyplaystation2.com>, <playstationx.com>, <sonyps2.com> was filed by the Complainants with the WIPO Arbitration and Mediation Center (the "Center") and copied to the subject registrar and the Respondents Alex Banh and SW E-solutions Ltd.
On April 12, 2001, the Complainants received an email from Respondent Alex Banh acknowledging receipt of the Complaint and advising that the three-disputed domain names had been sold the previous month to Respondent Polytech Group Incorporated.
On April 19, 2001, the Complainants amended the Complaint by including Polytech Group Incorporated as a further Respondent and filed it with the Center.
The Center has verified that the Amended Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy") adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). This Administrative Panel ("Panel") is satisfied that this is the case.
The Center, on April 24, 2001, forwarded Notification of Complaint and Commencement of Administrative Proceeding (including a copy of the Amended Complaint) via email, fax and courier, to Respondent Polytech Group Incorporated.
The due date for a response was indicated as May 13, 2001.
Hereinafter, for economy of expression in this Decision, the term "Complaint" refers to the Amended Complaint, and the term "Respondents" refers to Polytech Group Incorporated, et al.
On May 15, 2001, the Center sent Notification of Default via email to Respondent Polytech Group Incorporated as no response had been received by the due date.
The undersigned panelist, Mr. Mark Yang, submitted to the Center, a Statement of Acceptance and Declaration of Impartiality and Independence. The Center then transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which Mr. Mark Yang was formally appointed as the Sole Panelist and the projected Decision date was June 5, 2001. The Sole Panelist finds that this Panel was properly constituted and appointed in accordance with the Rules and the Supplemental Rules.
This Panel has not received any requests from the Complainants or the Respondents regarding further submissions, waivers or extensions of deadlines, and this Panel has not found it necessary to request any further information from the parties (taking note of the default in responding to the Complaint). The proceedings have been conducted in English.
Having reviewed the communication records in the case file provided by the Center, this Panel finds that the Center has discharged its responsibility under the Rules, paragraph 2(a), "to employ reasonably available means calculated to achieve actual notice to Respondent". Therefore, this Panel shall issue its Decision based upon the Complaint, the Policy, the Rules and the Supplemental Rules and without the benefit of any Response from the Respondents.
4. Factual Background
Complainants are one of the worldís largest entertainment and electronics companies whose shares are listed on 16 stock exchanges worldwide. Complainants have been doing business for over 40 years with a current annual sales in excess of $63 billion and worldwide staff of over 189,000. Complainants registered and own the SONY trademark in over 150 countries including Japan, Hong Kong and the United States. The SONY trademark is one of best known trademarks in the world. In Japanese, Chinese and English languages, the word SONY is a coined or invented word and does not have any meaning other than as being a trademark.
The Complainants own and operate the websites <www.sony.com> and <www.playstation.com>, which provide online information about its various products, including TV electronics and Playstation video games.
The Complainantsí PlayStation home video game system was launched in 1994, and has sold over 70 million units worldwide. The successor system, PlayStation2 or PS2, was recently launched. The Complainants have applied for trademark registration of PLAYSTATION, PS, PS2, PS2 PLAYSTATION2 and PLAYSTATION2 in U.S., Hong Kong, and Japan, many of which have already been registered.
On March 8, 1999, Respondent Alex Banh registered the <playstationx.com> and <sonyplaystation2.com> domain names. On March 12, 1999, Respondent Alex Banh registered the <sonyps2.com> domain name.
On November 28, 2000, Respondent Alex Banh sent an unsolicited letter to Complainant Sony Computer Entertainment Inc. offering to sell the domain names <sonyps2.com> and <sonyplaystation2.com> for US$150,000.00. In his letter, Respondent Alex Banh acknowledged Sonyís intellectual right in those domain names.
On January 16, 2001, the Complainant Sony Computer Entertainment Inc.ís attorney sent a response letter to Respondent Alex Banh that declined the offer and demanded that Respondent Alex Banh cease use of those two domain names as well as a third one <playstationx.com> registered by him and transfer all three domain names to the the Complainant Sony Computer Entertainment Inc.
Upon receipt of that response letter, Respondent Alex Banh informed that he had earlier sold the domain names to another company.
For the period starting from the registration dates of March 8 and 12, 1999, to January 11, 2001, there was no website access to the domain names <sonyplaystation2.com> and <sonyps2.com>. On January 11, 2001, and since the filing date of the Complaint, only a standard page-holder has been posted on <playstionx.com> by Respondent Alex Banh. Around April 4, 2001, Respondents posted websites at <sonyplaystation2.com> and <sonyps2.com> with the same page containing the distinctive PS2 design and PLAYSTATION2 design owned by the Complainants.
Before the expiration dates of registrations for the disputed domain names (March 8, 2001, for <sonyplaystation2.com> and <playstationx.com>, and March 12, 2001, for <sonyps2.com>), Respondent Alex Banh transferred all three domain names at issue to Respondent SW E-solutions Ltd.
After receipt of the Complaint, Respondent Alex Banh sent an email to the Complainants advising that the domain names in dispute had once again been transferred to Respondent Polytech Group Incorporated.
5. Partiesí Contentions
A. Complainants contend that the disputed domain names <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com> are virtually identical and confusingly similar to Complainantsí SONY, PS, PS2, PSX, PLAYSTATION and PLAYSTATION2 trademarks, that the Respondent has no rights or legitimate interest in the disputed domain names, and that the disputed domain names are registered and being used in bad faith.
B. Respondent Polytech Group Incorporated, the current registrant of the disputed domain names, has not responded to these proceedings. This Panel therefore considers that the Respondents have no contentions.
6. Discussion and Findings
One requirement of fundamental due process is that a respondent has notice of proceedings that may substantially affect its rights. The Policy, Rules and Supplemental Rules establish procedures intended to assure that a respondent is given adequate notice of proceedings commenced against it, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
In this case, this Panel is satisfied that the Center took all steps reasonably necessary to notify the Respondents of the filing of the Complaint and initiation of these proceedings, and that the failure of the Respondents to furnish a Response to the Complaint, is not due to any omission by the Center. There is sufficient evidence in the case file provided by the Center, for this Panel to conclude the Center discharged its obligations under Rules, paragraph 2(a) (see Procedural History, supra).
Paragraph 4(a) of the Policy sets forth three elements that must be established by a Complainant to merit a finding that a Respondent has engaged in abusive domain name registration, and to obtain relief. These elements are:
(i) Respondentís domain name is identical or confusingly similar to a trade-mark or service mark in which the Complainant has rights; and
(ii) Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) Respondentís domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a Complainant to warrant relief.
Respondents have defaulted, and have not responded to the allegations in the Complaint. This Panel is directed to decide this administrative proceeding on the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions may be drawn by this Panel on the basis of Complainantís undisputed allegations (Rules, paragraph 15(a)). These factual conclusions are set out below and in Factual Background, above.
Respondentís domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
Complainants own trademark registrations or pending trademark applications for the marks SONY, PS, PS2, PSX, PLAYSTATION and PLAYSTATION2 in many countries around the world including Japan, the United States and Hong Kong. The Complainants have used their aforementioned trademarks in commerce for a substantial period of time and have achieved worldwide recognition for their products bearing such trademarks. This Panel determines that Complainants have rights in such trademarks.
Complainants contend that the disputed domain names are virtually identical and confusingly similar to Complainantsí trademarks. Respondent has not contested this contention. This Panel therefore adopts the facts and conclusions alleged in the Complaint as true. Since the disputed domain names <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com> are alleged to be virtually identical and confusingly similar to Complainantís marks SONY, PS, PS2, PSX, PLAYSTATION and PLAYSTATION2, and there is no evidence otherwise, further analysis is unnecessary. This Panel determines that the disputed domain names, are confusingly similar to Complainantsí trademarks, within the meaning of paragraph 4(a)(i) of the Policy.
Respondent has no rights or legitimate interests in respect of the domain name
Complainants allege in the Complaint that:
(a) Respondents have not used the <sonyplaystation2.com>, <sonyps2.com> or <playstationx.com> domain names in connection with a bona fide offering of goods and services;
(b) Respondents are not commonly known by, or acquired any trademark or service marks in, the <sonyplaystation2.com>, <sonyps2.com> or <playstationx.com> domain names; and
(c) Respondents are not making a legitimate non-commercial or fair use of the <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com> domain names, without intent for commercial gain to misleadingly divert consumers or to tarnish the Complainantsí trademarks.
Complainants list the following alleged facts:
1) That there is no websites access for <sonyplaystation2.com> and <sonyps2.com> until March 2001, two years after their registration. Thereafter, only a single web page was posted by the Respondents with a notice of "Gaming website coming soon". After the receipt of the Complaint, the Respondents redirected the domain names to a Chinese website <chinaren.com>;
2) That there is no website access for <playstationx.com> other than the standard page-holder until January 11, 2001, to denote that the site is "under construction";
3) That the Respondents are not commonly known by the disputed domain names. The Respondents do not have any license agreements or permission from the Complainants to use their marks or apply for any domain name incorporating those marks; and
4) That there have not been any actual use of the disputed domain names in connection with the Respondentsí business other than transfers of the domain names between the Respondents.
These facts may lead to various conclusions, including that Respondent Polytech Group Incorporated has no legitimate interest in the disputed domain name registrations. Respondent Polytech Group Incorporated has not countered the allegation that there is a lack of a legitimate interest in the disputed domain names. With neither an appearance nor a rebuttal by Respondent, the facts alleged in the Complaint are sufficient to conclude in favor of Complainants. Accordingly, it is decided that Respondents have no legitimate interest in the disputed domain names.
Respondentís domain name has been registered and is being used in bad faith
The Policy indicates that certain circumstances may, "in particular but without limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are "circumstances indicating that you have registered or you have acquired the domain name "primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your out-of-pocket costs directly related to the domain name;" (Policy, paragraph 4(b)(i)).
This Panel finds that Respondent Alex Banh has registered the domain names <sonyplaystation2.com> and <sonyps2.com> "primarily for the purpose of selling the domain names registration to the complainant who is the owner of the corresponding trademark for valuable consideration in excess of his out-of-pocket costs. There is ample evidence proffered in the Complaint that the Respondent Alex Banh offered to sell the domain names <sonyplaystation2.com> and <sonyps2.com> to the Complainants for the amount of US$150,000 each, and for two years between the registration of the domain names <sonyplaystation2.com> and <sonyps2.com> and the filing date of the Complaint, there was no website access for these two domain names (see paragraph 30 of the Complaint)
Further evidence of registration and use in bad faith provided by the Policy is that "you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting its mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct" (Policy, paragraph 4(b)(ii)). The Panel finds that the Respondent Alex Banh has engaged in a pattern of such conduct and thus having registered and used the disputed domain names in bad faith. There is ample evidence proffered in the Complaint that the Respondent Alex Banh offered to sell the domain names <sonyplaystation2.com> and <sonyps2.com> to the Complainants for the amount of US$150,000 each. After the Complainants refused the offer, Respondent Alex Banh sold those domain names and a third one <playstationx.com> to Respondent SW E-solutions Ltd., and that after receipt of the Complaint, Respondent SW E-solution further sold the three disputed domain names to Respondent Polytech Group Incorporated in effort to frustrate the Complainantsí effort to retrieve its rights in the disputed domain names.
Although Respondent Alex Banh is no longer the registrant for the disputed domain names, his close relationships with the current and previous registrants of the disputed domain names are fully exposed and proved by sufficient evidence in the Complaint. As cited in paragraphs 27 to 29 of the Complaint, Respondent Alex Banh is listed as the Administrative, Technical and Billing Contact for the disputed domain name registrations with the identical address as that of the Respondent SW E-Solutions Ltd. after he sold these domain names to the Respondent SW E-Solutions Ltd. The registrant of the SW E-solutions Ltd.ís domain name <swss.net> is listed as Alex Banh, and the Administrative Contact of SW Linux Ltd.ís domain name <sw-linux.com> are listed in the Whois report as being Respondents Alex Banh and SW E-solutions Ltd. SW Linux Ltd. is another subsidiary Sun Wah Hi-Tech Group which is the parent company of SW E-solutions Ltd. The address of this website is the same as that contained in the Whois report of <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com>. Furthermore, Respondent Alex Banh is listed as the founder and Chief Operating Office of SW Linux Ltd.ís website. The disputed domain names were then sold to Respondent Polytech Group Inc. in March 2001, "under the condition that they will host their website with SW E-solutions Limited where the company provide hosting and domain name registration services through opensrs". The Panel therefore finds that Respondent Alex Banh is likely the mastermind behind the various registrations and transfers or at least the common element thereof.
This Panel finds, within the meaning of paragraph 4(a) of the Policy, that <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com> are confusingly similar to Complainants trademarks SONY, PS, PS2, PSX, PLAYSTATION, PLAYSTATION2; that the Respondents have no rights or legitimate interests in respect of the disputed domain names; and that the disputed domain names have been registered and are being used in bad faith; this Panel orders that the domain names <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com> be transferred to the Complainants.
Mark M. Yang
Dated: June 5, 2001