WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Ericsson Mobile Communications AB v. Chai, Sen
Case No. DCC2006-0003
1. The Parties
The Complainant is Sony Ericsson Mobile Communications AB, of North Carolina, United States of America, represented by Bevan Brittan, LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Chai, Sen, Hebei Datang, Tangshan, of Hebei, People’s Republic of China.
2. The Domain Name and Registrar
The disputed domain name <sony-ericsson.cc> is registered with Network Solutions, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 18, 2006. On September 20, 2006, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On September 20, 2006, Network Solutions, LLC 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 satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for 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 September 28, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 18, 2006. The Response was filed with the Center on October 12, 2006.
The Center appointed Daniel J Gervais as the Sole Panelist in this matter on November 28, 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.
The Complainant asked to file additional material after receiving the Response, and the Respondent wanted the right to reply. The Policy favors rapid resolution and because no material facts that could not have been contemplated in the Complaint are mentioned in the Response, the Panel sees no need for supplemental submissions.
4. Factual Background
The Complainant is a joint venture between Telefonaktiebolaget LM Ericsson of Sweden and the Sony Corporation of Japan. It has been producing, distributing and marketing mobile telephones and accessories under the SONY ERICSSON brand since October 2001. The Complainant owns trademark applications and registrations and domain name registrations in several countries, including the mark SONY ERICSSON. The Complainant operates from locations around the world including China. The Complainant also operates geographic specific websites in more than 60 country domains around the world. The Chinese specific website (where the Respondent is based) can be found at “www.sonyericsson.cn”. The latest statistics available indicate that the “www.sonyericsson.cn” website attracted over 3,500,000 visitors during 2004.
In email communications between the Parties, the Respondent accepted to transfer the domain name in exchange for a new mobile phone. However, ostensibly because the phone proposed would be subject to importation duties, he then stated he would prefer the value of the phone (approximately $500) to be transferred to his account so he could purchase it himself in China.
5. Parties’ Contentions
The Complainant contends that the domain name is identical to the Complainant’s mark SONY ERICSSON and confusingly similar to the registered trademark ERICSSON, phonetically, visually and conceptually and that the registration of the Domain Name is likely falsely to lead the public to believe that the Registrant and the website to which the Domain Name directs is sponsored by or affiliated to or associated with the Complainant, and will lead to confusion in the minds of the public.
The Respondent has no rights or legitimate interest in the Domain Name, and is not nor has never been known by the name SONY ERICSSON or by any similar name.
The Domain Name was registered, has been used and continues to be used in bad faith. The Respondent was aware that prior to its registration of the Domain Name, there was substantial reputation and goodwill associated with the mark SONY ERICSSON, which inures and continues to inure to the Complainant. The Respondent refused to transfer the Domain Name to the Complainant unless this transfer was for a mobile phone produced by the Complainant or money in excess of the registration costs. The registration of the Domain Name and its subsequent use by the Respondent is for the purpose of damaging the Complainant’s name, reputation and goodwill. The Domain Name reverts to a website based on the events surrounding the city of Nanjing during the Second World War. The Complainant contends that this has been done to highlight the Japanese origins of the Complainant and is an attempt to damage its reputation and goodwill in China and with its Chinese customers.
The Respondent states that he is a user of Sony Ericsson mobile phones. His original intention was to create a “fan” site for Sony Ericsson mobile phones but that never materialized. He had no obligation to offer the Complainant’s services on his website and had the right to refer to historical information concerning the 1937 events in Nanjing, China.
The Respondent contends that the phone received by the Respondent from the Complainant’s agent following the agreement to transfer the domain name to the Complainant was a used model. This violated the agreement concerning the transfer of the domain name. The phone did not function in Chinese. It was for the Respondent’s mother who does not speak English. He wanted the monetary value instead to be able to buy her a proper phone, i.e. one made for the Chinese market.
6. Discussion and Findings
In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the domain name, the Complainant must prove that each of the three following elements is satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section 6.A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section 6.B); and
3. The domain name has been registered and is being used in bad faith (see below, section 6.C).
Paragraph 4(a) of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
On the first question, the Panel finds that the Complainant has established rights in the SONY ERICSSON mark.
On the second question, the Panel finds that the domain name, which incorporates the trademark whole, is identical to the Complainant’s above-mentioned mark save for the top-level “.com”, and the addition of a hyphen between the words “sony” and “ericsson”. The addition of the generic top-level domain (gTLD) reference “.com”, which is necessary for a domain name to be operational, does not alter the mark, and can be disregarded for the purpose of comparison with the complainant’s mark. See Pomellato S.p.A v. Richard Tonetti, WIPO Case No. D2000-0493, Telecom Personal, S.A., v. NAMEZERO.COM, Inc, WIPO Case No. D2001-0015, Société Générale and Fimat International Banque v. Lebanon Index/La France DN and Elie Khouri, WIPO Case No. D2002-0760. The addition of the hyphen in this case does not effect the essential identity of the domain name to the Complainant’s mark, and there is no doubt that they are confusingly similar.
Accordingly, the Panel finds for the Complainant on the first part of the test.
B. Rights or Legitimate Interests
The Complainant submits that the Respondent has no rights or legitimate interests in the domain name based on the Complainant’s prior use of the SONY ERICSSON mark.
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
There were no elements introduced in evidence to show that the Respondent is or was commonly known by the domain name. There is no evidence before the Panel to indicate that the Respondent is making a legitimate noncommercial or fair use of the domain name. The evidence suggests that the disputed domain name, which fully incorporates the Complainant’s well-known mark, has been used for matters unrelated to the Complainant and its services, and that such use of the domain name may tarnish the Complainant’s mark. The disputed domain name does not appear to be in use currently, and does not resolve to any active website. While the Respondent may very well be correct to state that he has no obligation to sell the Complainant’s services or products (which would raise reseller issues, see Proteccion S.A. v. Telepathy, Inc. WIPO Case No. D2006-0868), the use made of the disputed domain name in the circumstances is in no way indicative of rights or legitimate interests on the part of the Respondent. To constitute fair use of a commercial mark with such a high degree of notoriety, there should be some link to the Complainant in the use made and such use should be fair and legitimate.
Consequently, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) circumstances indicating that Respondent has registered or 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 of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product.
There is evidence of the situation described in paragraph 4(b)(i). The Panel does not concern itself with the enforcement of the voluntary transfer agreement and does not have to decide whether the consideration paid (the allegedly used mobile phone) was in fact what was agreed upon. However, the contents and tone of email exchanges between the parties shows the willingness of the Respondent to sell what he perceived to a valuable domain name for a sum far in excess of out-of-pocket costs directly related to the domain name.
A number of decisions under the Policy stand for the proposition that in respect of famous marks, which have a higher level of protection in international intellectual property agreements (see e.g., Article 16(2) and (3) of the TRIPS Agreement),factors that have been considered under the third element include whether the person who registers a confusingly similar domain name has provided any evidence of good faith use or preparations for good faith use of the domain name, and whether there is any plausible actual or contemplated active use of the domain name by the respondent that would not be infringing to the Complainant’s marks. See Pharmacia & Upjohn AB v. Dario H. Romero, WIPO Case No. D2000-1273; Advanced Micro Devices, Inc. v. [No Name], WIPO Case No. D2000-0515; Telstra Corporation, Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003; Encyclopedia Britannica, Inc. v. John Zuccarini and the Cupcake Patrol a/k/a Country Walk a/k/a Cupcake Party, WIPO Case No. D2000-0330; eBay Inc. v. Sunho Hong, WIPO Case No. D2000-1633 and Ellerman Investments Limited and The Ritz Hotel Casino Limited v. Antonios Manessis (trading as .com and manessis.com), WIPO Case No. D2001-1461. In the present case there is no evidence establishing good faith use or preparations for such of the disputed domain name, and it is difficult to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be infringing to the Complainant’s marks.
Accordingly, the Panel finds for the Complainant on this third element of the test.
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, <sony-ericsson.cc> be transferred to the Complainant.
Daniel J Gervais
Dated: December 12, 2006