WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson c/o Sony Ericsson Mobile Communications AB, Sony corporation, c/o Sony Ericsson Mobile Communications AB v. Mohamed Ali Aal Ali
Case No. DAE2006-0002
1. The Parties
The Complainants are Sony Ericsson Mobile Communications International AB of Lund, Sweden, Telefonaktiebolaget LM Ericsson of Stockholm, Sweden c/o Sony Ericsson Mobile Communications AB, and Sony Corporation of Tokyo, Japan c/o Sony Ericsson Mobile Communications AB, represented by Göhmann Wrede Haas Kappus & Hartmann of Germany (referred to collectively as “the Complainant” except as otherwise noted).
The Respondent is Mohamed Ali Aal Ali of Fujairah, United Arab Emirates.
2. The Domain Name and Registrar
The disputed domain name <sonyericsson.ae> is registered with UAE Network Information Center (UAEnic).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 21, 2006. On July 21, 2006, the Center transmitted by email to UAE Network Information Center (UAEnic) a request for registrar verification in connection with the domain name at issue. On July 24, 2006, UAE Network Information Center (UAEnic) transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint together with the amendment to the Complaint satisfied the formal requirements of the .AE Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .AE Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .AE Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was September 18, 2006. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2006.
The Center appointed Adam Taylor as the sole panelist in this matter on October 9, 2006. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The trademark SONY is very well known for mobile communications, multimedia and entertainment. The trademark ERICSSON is very well known for mobile communication and mobile telephones.
The Third Complainant owns the trademark for the word SONY registered with the Office for Harmonization in the Internal Market (“OHIM”) on May 5, 1998, under the number 000000472 for inter alia apparatus and instruments for data communication.
The Second Complainant is the holder of the trademark for the stylized word ERICSSON registered with OHIM on March 23, 1999, under the number 000107003 for inter-alia apparatus and instruments for data communication. Also the Second Complainant owns the trademark for the word ERICSSON registered with OHIM on February 15, 2001, under the number 001459130 for similar products.
The First Complainant was set up as a joint venture by the Second and Third Complainants in October 2001, and has since become globally known in the field of mobile telephones and telecommunications under the name “Sony Ericsson”. The First Complainant operates a website at sonyericsson.com providing Internet users with information about its products-especially mobile phones-and other related topics.
There is no evidence in the record as to the date when the disputed domain name was registered. This information does not appear in the .ae Whois.
The disputed domain name has not been used for a website.
On July 20, 2005, the Complainant’s lawyer sent a cease and desist letter to the Respondent.
The Respondent emailed on July 23, 2005, saying: “I’m keeping the domain name”.
In response to a further email from the Complainant’s lawyer, the Respondent emailed on October 14, 2006, saying he was willing to co-operate with the Complainant “if they have any offers for me”.
Following a further exchange of emails in which the Complainant’s lawyer sought to establish what the Respondent meant by “offers”, the Respondent emailed on October 19, 2005, saying: “I’ve been holding this domain long time ago, I got some offers from people who wanted to invest in this domain. I refused to sell my domain to any one of them. I didn’t mean the registration fees. I would consider giving away my domain for $1,000,000.”
After the Complainant’s lawyer pointed out that in his view the offer was bad faith, the Respondent responded on February 12, 2006, saying that he was entitled to the disputed domain name as it has been registered in his name, and he had not violated any trademark rights as he had never used the domain name.
5. Parties’ Contentions
Identical or Confusingly Similar
The first part of the disputed domain name is identical to the famous trademark of the Third Complainant. The second part is identical to the famous trademark of the Second Complainant. The complete domain name is identical to the trademark “Sony Ericsson” used by the First Complainant. The First Complainant is a licensee of the trademarks “Sony” and “Ericsson” from the Second and Third Complainants and has the right to enforce the trademarks together.
The public will get the impression that the disputed domain name is connected to the Complainant’s trademarks.
All Complainants have already successfully initiated comparable domain dispute resolution proceedings.
Rights or Legitimate Interests
The Respondent has never been authorized by the Complainant to use its trademarks in any way.
The Respondent cannot demonstrate under para 4(c)(i) of the Policy that he has made any use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
The Respondent cannot establish rights in the domain name under para 4(c)(ii) of the Policy because the Respondent has never been commonly known by the domain name and has not acquired trademark or service mark rights in the domain name.
The Respondent is not making any legitimate non-commercial or fair use of the domain name. Instead he is holding it for the sole purpose of selling it to the First Complainant. This can not be considered as a legitimate non-commercial or fair use of the domain name.
Registered or Used in Bad Faith
The domain name has primarily been registered or acquired with the intention of selling, licensing or otherwise transferring it to the Complainant or its competitors for payment that exceeds the costs directly related to the domain name.
The Complainant demanded transfer of the domain name in return for the costs of this transfer. In response the Respondent stated that he would “consider” transferring the domain name for $ 1,000,000.00 United States dollars. This is bad faith especially given that the Respondent stated the he had offers from several interested persons who wished to invest in the domain name but whose offers he turned down merely to wait until the Complainant contacted him and demanded a transfer of the domain name. Such sum clearly exceeds costs directly related to the domain name. The Complainant’s businesses are world renowned and therefore the Respondent was hoping for an extremely high price from the Complainant.
The use of the domain name is in bad faith because the deliberate use of somebody’s trademark cannot be regarded as fair use. The Complainant’s reputation and goodwill is out of the Complainant’s control. It cannot be considered as fair for the Complainants to have to rely upon the goodwill of the Respondent, which might vary from day to day. This is especially so given the Respondent’s behavior such as his offer to sell the domain name for $ 1,000,000.00 United States dollars and his refusal to agree to any further negotiations.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
As a general point, the Policy and the Rules are very closely modeled on those of the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The Panel in this case will therefore have regard to the approach taken in UDRP cases insofar as they relate provisions which are common to the Policy and the Rules. No doubt the framers of the Policy and the Rules would have expressly provided otherwise if that were not their intention.
A. Procedural Aspects
The Respondent sent an email to the Center on August 8, 2006, responding to the original Complaint which had been served on it by the Complainant. In fact this original Complaint was later amended (in non material respects) and was formally notified by the Center to the Respondent on August 29, 2006. No formal Response was ever filed.
As with the UDRP Rules, there is no provision in the Rules regulating the consequences for Responses that do not meet the formal requirements of the Rules. The majority of UDRP panelists assume that they are entitled at their discretion to determine whether to consider such Responses. See, e.g., Young Genius Software AB v. MWD, James Vargas, WIPO Case No. D2000-0591 and Crédit Industriel et Commercial S.A. v. Yu Ming, WIPO Case No. D2005-0458.
Amongst other things, the email of August 8, 2006, is neither signed nor certified as complete and accurate. The Panel has opted to decide this case without reference to the email. In any event, admission of the document would not have altered the Panel’s decision in this case.
B. Identical or Confusingly Similar
The First Complainant clearly owns common law rights in the name “Sony Ericsson” by virtue of its extensive global trading activities and goodwill in that term, which are unchallenged in this case.
The Panel concludes that the disputed domain name is identical to a trademark in which the First Complainant has rights.
It is unnecessary for the Panel to consider whether the disputed domain name is confusingly similar to the individual trademarks for SONY and ERICSSON owned by the Third and Second Complainants respectively.
The Panel finds that the Complainant has established the first element of the Policy.
C. Rights or Legitimate Interests
As with the UDRP, the Complainants must establish at least a prima facie case under this heading and, if that is made out, the evidential onus shifts to the Respondent to rebut the presumption of absence of rights or legitimate interests thereby created. See, e.g., Atlas Copco Aktiebolag v. Accurate Air Engineering, Inc., WIPO Case No. D2003-0070.
The Complainants have not licensed or otherwise authorized the Respondent to use their trademarks.
As to paragraph 4(c)(i) of the Policy, there is no evidence of use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services.
Nor is there any evidence before the Panel that paragraphs 4(c)(ii) or (iii) of the Policy apply.
The Panel finds that the Complainant has demonstrated a prima facie case of lack of rights and legitimate interests and there is no rebuttal by the Respondent.
The Panel concludes accordingly that the Complainant has established that the Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered or Used in Bad Faith
The evidence before the Panel is that, when approached by the Complainant, the Respondent offered to sell the disputed domain name for the grossly excessive price of $1,000,000 United States dollars. Clearly such a sum was well beyond any costs reasonably associated with the registration of the disputed domain name, and in all likelihood, it was being sought by the Respondent with the intention of profiting from the considerable fame of the Complainant and its mark. In light of this, as well as the lack of any (let alone any genuine and plausible) explanation for registration of the disputed domain name comprising the Complainant’s widely-known and distinctive trademark, the Panel is satisfied that paragraph 4(b)(i) of the Policy applies. The Panel finds that the Respondent in all likelihood registered the domain name primarily for the purpose of selling it to the Complainants for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name.
The Panel concludes that the disputed domain name was registered and/or has been used in bad faith. (The Panel notes that either registration or use in bad faith is sufficient under the Policy–unlike under the UDRP.)
The Panel finds accordingly that the Complainant has established the third element of the Policy.
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <sonyericsson.ae> be transferred to the First Complainant.
Dated: October 23, 2006