WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc. v. Salvatore Vetro
Case No. D2001-0575
1. The Parties
The Complainants are: Sony Kabuishiki Kaisha, a Japanese corporation with its principal place of business at 6-7-35, Kitashinagawa 6-chome, Shinagawa-ku, Tokyo 141-0001, Japan; and Sony Computer Entertainment Inc., a Japanese corporation and a wholly owned subsidiary of Sony, with its principal place of business at 1-1, Akasaka 7-chome Minato-ku, Tokyo, 107-0052, Japan. The Complainants are represented by Ned W. Branthover, Esq., Robin Blecker & Daley, 330 Madison Avenue, New York, NY 10017, U.S.A.
The Respondent is Salvatore Vetro, an individual whose address is 3493 U.S. Highway 1, Edgewater, Florida 32141, U.S.A.
2. The Domain Names and Registrar
The domain names in dispute are: <sonyps2.net> and <sonypsx2.com>.
The registrar for the disputed domain names is: Network Solutions, Inc. (NSI), 505 Huntmar Park Drive, Herndon, Virginia, 20170, U.S.A.
3. Procedural History
This dispute is to be resolved in accordance with the Uniform Policy for Domain Name Dispute Resolution (the Policy) and Rules (the Rules) approved by the Internet Corporation for Assigned Names and Numbers (ICANN) on October 24, 1999, and the World Intellectual Property Organization Arbitration and Mediation Center’s Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Center, the Supplemental Rules).
The Complaint was filed on April 20, 2001, by e-mail and on April 24, 2001, in hard copy. On April 26, 2001, the Center requested that the Registrar NSI check and report back on the registrant for the domain names <sonyps2.net> and <sonypsx2.com>. On April 27, 2001, NSI reported that the registrant was the Respondent, Salvatore Vetro. (NSI reconfirmed this information to the Center on May 4, 2001.)
On April 27, 2001, the Center requested that the Complainants correct a deficiency in the Complaint concerning submitting to jurisdiction at the location of the Respondent. On April 27, 2001, the Complainants submitted a satisfactory amendment by e-mail, and on May 1, 2001 in hard copy.
On May 8, 2001, the Center forwarded a copy of the Complaint to the Respondent by courier and by e-mail and this proceeding officially began. Respondent did not file a response within the 20 day time period specified by Rule 5, and on May 30, 2001, the Center declared the Respondent in default.
The Respondent has stated in communications to the Center that he did not receive the Complaint. The Respondent stated that he could not read the electronic submission of the Complaint because his ISP provider could not transmit such lengthy documents (Respondent's e-mail to the Center dated May 30, 2001). However, the Respondent has never explained why he failed to receive the courier dispatch of the Complaint by the Center dated May 8, 2001 to the address Respondent used for the disputed domain name registrations (3493 U.S. Highway 1, Edgewater, Florida 32141, U.S.A.). The Panel notes that when the Complainants wrote to the Respondent at this address on November 2, 2000 (Complaint Annex M) to allege trademark infringement, they immediately received a response from the Respondent on November 10, 2000 (Complaint Annex N). The Respondent has not claimed his address has changed in the meantime. The Center also sent the Complaint by courier on May 8, 2001, to the technical address the Respondent furnished when it registered the disputed domain names.
The Panel thus finds the Center has effectively communicated the Complaint to the Respondent, and that the Respondent has had ample opportunity to respond.
The Respondent has not offered any credible explanation as to why he continued to file submissions with the Center after the default date of May 30, 2001. The Rules at 5(d) state the Center may permit late filings by the Respondent in exceptional circumstances. The Respondent has brought no such circumstances to the Center's attention. Therefore, in this Decision, the Panel will not consider any submissions by the Respondent after the default date.
The Administrative Panel submitted a Declaration of Impartiality and Independence on June 25, 2001, and on July 2, 2001, the Center proceeded to appoint the Panel. The Panel finds the Center has adhered to the Policy and the Rules in administering this Case.
This Decision was due by July 15, 2001.
4. Factual Background
The Complainants are Japanese companies with worldwide activities in entertainment and electronics. Among the many products of Complainants are such items as the Trinitron television, the Walkman personal stereo and the PlayStation video game console.
The Respondent is an individual engaged in internet business activities.
The Respondent registered the disputed domain name <sonypsx2.com> on May 24, 1999, and the disputed domain name <sonyps2.net> on July 24, 1999.
The Complainants wrote to the Respondent on November 2, 2000 (Complaint Annex M) alleging trademark infringement and requesting the Respondent transfer the disputed domain name <sonypsx2.com> to the Complainants.
The Respondent answered the Complainants November 2, 2001 letter on November 10, 2000 (Complaint, Annex N). In this letter the Respondent stated in part:
"Thank you for your recent interest in the sale of our domain address. Unfortunately, at this time we are in the process of negotiating the sale of said domain with a foreign buyer, whom (sic) wishes to remain anonymous. However, these negotiations are not yet complete and we are willing to listen to what your company has to propose."
The Complainants sent follow-up letters to the Respondent on February 20, 2001, February 27, 2001, and March 6, 2001, all demanding the Respondent transfer the disputed domain names to the Complainants (Complaint Annexes B, O and P respectively). The Respondent did not respond to any of these letters, and the Complainants have now brought this proceeding seeking transfer of the disputed domain names.
5. The Parties’ Contentions
- Complainants conduct their business almost exclusively in connection with the name and trademark SONY, which is registered in over 150 countries, including Japan, Hong Kong and the United States.
- Landor Associates, the San Francisco-based corporate image consultant, has rated SONY one of the top 10 most recognized and respected brand names in the world. (Complaint Annex D).
- The Complainants operate a website at <www.sony.com> that offers online games, information concerning music, movies, TV electronics, and PlayStation video games.
- Complainants' PlaySation home video game system, which was launched in 1994, is also referred to by the trademark PS.
- The Complainants own and operate a web site at playstation.com that provides links to the Complainants' Australian, European, Japanese, Middle Eastern, and North American PlayStation sites. On these various pages, there are press releases and messages regarding PlayStation, PS, PlayStation 2, and PS2 (Complaint Annex G).
- The Complainants recently launched the successor to the PlayStation system, which is called PlayStation 2 and PS2.
- The Complainants have three applications pending in the U.S. Patent and Trademark Office for the PS2 trademark, and own one U.S. trademark registration for PSX and five registrations for PS.
- The <sonyps2.net> domain name redirects internet users to Sega web sites related to its Dreamcast console and games. The Sega Dreamcast video game console is a competitor of Complainants' Playstation and Playstation 2 video game consoles. Respondent is utilizing technology called "domain aliasing", which allows the <sonyps2.net> domain name to remain in the Internet user's address box, thus misidentifying the sega.net page as located at the <sonyps2.net> domain name. (Complaint Annex J).
- The web site for <sonypsx2.com> redirected internet users to the Sega web site for Sega's on-line store, and specifically the page selling the Sega Dreamcast video game console. (Complaint Annex K).
- The Respondent later changed the redirection of the web site for the domain name <sonypsx2.com> to Microsoft's web site for its X-Box video game, which is scheduled to be released in the Fall, 2001. (Complaint Annex L)
- The domain names <sonyps2.net> and <sonypsx2.com> are virtually identical and confusingly similar to the Complainants' SONY, PS, PS2 and PSX marks because these disputed domain names wholly incorporate and consist of combinations of Complainants' marks.
- There have been numerous instances of actual confusion resulting from Respondent's use of domain names consisting of Complainant's marks and diverting such web traffic to Complainants' competitors' sites.
- The Respondent has no legitimate rights or interests in the disputed domain names under the Policy at para 4(c).
- There is no evidence the Respondent has used the disputed domain names in a bona fide offering of goods and services.
- Complainants are not aware of any connection between the Respondent and Sega or Microsoft, and believe that the only reason Respondent has set up the disputed domain names is to redirect Complainants' competitors' sites to bring these disputed domain names to Complainants' attention in order to extort payment from Complainants for the disputed domain names. There is no question that such use of the disputed domain names is not a bona fide offering of goods and services.
- There is no evidence that shows the Respondent is commonly known by the disputed domain names, or that he has acquired any trademark or service mark rights in these domain names.
- At no time did the Respondent have authorization to register the disputed domain names.
- The Respondent registered and is using the disputed domain names in bad faith because his conduct is aimed at eliciting payment from the Complainants for the disputed domain names, and therefore is in clear violation of the Policy.
- The Respondent registered the disputed domain names in bad faith in order to prevent the Complainants from reflecting their marks in the domain names.
- The Respondent registered the disputed domain names to disrupt the business of a competitor within the meaning of section 4b(iii) of the Policy.
- The Respondent, by registering the disputed domain names, which wholly incorporate various combinations of Complainants' marks, and using them as aliases for web sites that offered products similar to Complainants', created a likelihood of confusion as to the source or endorsement of these aliased web sites. These actions clearly show that Respondent registered and used the disputed domain names in bad faith within the meaning of section 4(b)(iv) of the Policy.
The Respondent is in default in this proceeding.
6. Discussion and Findings
In order for the Complainants to obtain transfer of the disputed domain names, <sonyps2.net> and <sonypsx2.com>, the Complainants must prove the following (the Policy, para 4(a)(i-iii):
- the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith.
Identical or Confusingly Similar
The Complainants have provided a wealth of material on the registration and use of their SONY trademark worldwide. A few examples are as follows: a copy of United States Patent and Trademark Office registration no. 705,902 dated October 18, 1960, for radios, televisions and similar products; there is also United States Patent and Trademark office registration no. 770,275 dated May 26, 1964, for television cameras. (Complaint Annex E).
The Panel notes the Complainants have shown from reputable sources that the SONY mark is one of the world's most famous (Complaint Annex D).
Th Complainants also have provided a copy of their PSX trademark registration on the principal register of the United States of America, no.2,265,784, dated July 27, 1999 (Complaint Annex I). Then there is a copy of one of the Complainants' PS mark registrations on the United States principal register, registration no. 2,223,708 dated February 16, 1999 (Complaint Annex I). Both of these marks are for computer entertainment systems.
As for the PS2 mark , the Complainants have shown that they have been using this mark in commerce for some time and filed for registration in the United States in 1999 (Complaint Annexes H and I).
The disputed domain name <sonyps2.net> is identical to the Complainants' SONY and PS2 marks. The second disputed domain name <sonypsx2.com> is confusingly similar to the Complainants' SONYPSX mark since it only adds the number "2", which leads the public to think it refers to a second version of this particular product. Most importantly, the disputed domain names incorporate the Complainants' world-famous SONY mark.
The Panel finds the Respondent has registered domain names identical (<sonyps2.net>) and confusingly similar (<sonypsx2.com>) to trademarks in which the Complainants have rights.
Legitimate Rights or Interests
To date, the Respondent's use of the disputed domain names has been basically to involuntarily link web traffic to sites of competitors of the Complainants. The Panel finds this is not a legitimate right or interest under the Policy.
Registered and Used in Bad Faith
The Complainants contend the Respondent has violated the Policy at 4(b)(i) in that he attempted to sell the domain name back to the Complainants for more than he paid for it. The Complainants base this contention on two facts in this proceeding: first, the Respondent used the disputed domain names to link to websites of Complainants' competitors, which the Complainants contend was intended to whet their appetite to regain the domain names. Second, in his November 10, 2000, letter to the Complainants, the Respondent stated he was negotiating the sale of the domain name to a foreign buyer, but that he would "listen to what your company has to propose" (Complaint Exhibit N). The Panel finds this is sufficient evidence to conclude the Respondent registered the disputed domain names to sell them at a profit to Complainants or their competitors in violation of the Policy at 4(b)(i).
The Complainants also contend the Respondent violated the bad faith provisions of the Policy at 4(b)(ii) because he registered the disputed domain names in order to prevent the Complainants from doing so. The Panel finds this also is substantiated by the facts. In choosing to register the disputed domain names, the Respondent clearly was attempting to hold hostage domain names that the Complainants would need. The Panel also agrees that the Respondent's registering two domain names using the Complainants' same SONY trademarks is enough to constitute a pattern as required by 4(b)(ii). (cf. Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, ICANN/WIPO Case No.D2000-0056, March 27, 2000).
The Complainants further contend the Respondent contravened section 4(b)(iii) of the Policy by disrupting the business of the Complainants' competitors. The Respondent accomplished this by making Complainants' competitors believe the Complainants were improperly linking to competitors’ websites in order to disrupt their business, a technique called "domain aliasing". While the Panel finds disrupting a competitor's business was one of Respondent's goals in registering the disputed domain names, it does not appear to be the primary purpose per the Policy at 4b(iii) (see Household International, Inc. v. Cyntom Enterprises, ICANN/NAF Case No. FA0095784, November 7, 2000). Rather, in this proceeding, it appears the Respondent thought some disruption would force the Complainants to come to terms.
The Panel does not agree with the Complainants that the Respondent has violated the bad faith section of the Policy at 4b(iv). The Panel does not see from the record that the Respondent was attempting to use the disputed domain names to attract web traffic for commercial gain over and above the commercial gain the Respondent was hoping to realize by selling the domain name back to the Complainants.
On balance, the Panel finds there are ample grounds for finding the Respondent registered and is using the disputed domain names in bad faith.
The Panel has found the Respondent registered two disputed domain names that are identical (<sonyps2.net>) and confusingly similar (<sonypsx2.com>) to the Complainants' trademarks. The Panel has found, further, that the Respondent has no legitimate rights or interests in the disputed domain names. And finally, the Panel has found there are ample grounds for concluding the Respondent registered and was using the disputed domain names in bad faith.
Hence, pursuant to ICANN Policy paragraph 4(i) and Rule 15, the Panel orders that the disputed domain names <sonyps2.net> and <sonypsx2.com> be transferred from the Respondent, Salvatore Vetro, to the Complainants, Sony Kabushiki Kaisha also trading as Sony Corporation and Sony Computer Entertainment Inc.
Dennis A. Foster
Date: July 18, 2001