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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Corporation v. Whoisguard Protected, Whoisguard, Inc. / VINCENT, ZESDORN

Case No. D2017-1226

1. The Parties

The Complainant is Sony Corporation of Tokyo, Japan, represented by Hogan Lovells (Paris) LLP, France.

The Respondent is Whoisguard Protected, Whoisguard, Inc. of Panama / VINCENT, ZESDORN of Warminster, United States of America (“US”).

2. The Domain Name and Registrar

The disputed domain name <sonyhr.com> is registered with eNom, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 26, 2017. On June 26, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 3, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 6, 2017.

The Center verified that the Complaint together with the amended Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on July 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was July 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 31, 2017.

The Center appointed Mario Soerensen Garcia as the sole panelist in this matter on August 3, 2017. 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 Complainant is Sony Corporation, a Japanese multinational with headquarter in Tokyo and founded in 1946, doing business in the field of consumer and professional electronics, gaming, entertainment and financial services. The Complainant is one of the leading manufacturers of electronic products in the world, employing 125,300 (as of March 2016) staff globally, with great notoriety and visibility, including online.

The Complainant owns several trademark registrations in multiple jurisdictions for the trademark SONY, including the US trademark registration dated from 1963 in class 9 (registration No. 0770275, filed on June 19, 1963 and granted on May 26, 1964).

The Complainant also owns numerous domain names consisting of the mark SONY, including the domain name <sony.com>, registered in1989.

The disputed domain name was registered on August 4, 2015 and the website is currently inactive.

5. Parties’ Contentions

A. Complainant

The Complainant argues that the Respondent registered the disputed domain name on August 4, 2015 without authorization, seeking to capitalize on the fame of the Complainant’s SONY mark.

The disputed domain name combines the mark SONY with the descriptive term “hr” which stands for “human resources”, suggesting an association with the human-resources department of the Complainant and consequently increasing the likelihood of confusion among the Complainant’s customers and the consuming public.

The Complainant alleges that the Respondent is not an authorized dealer, distributor or licensee of the Complainant, and that it cannot assert that it is commonly known by the disputed domain name and that the disputed domain name was registered without any legitimate interest.

In addition, the Complainant says that although the Respondent is not currently using the disputed domain name, it was previously active to point to a website reproducing the Complainant’s SONY logo and used to misleadingly and fraudulently provide online employment verifications of “Sony Corporation of America”, where users had to enter their names and social security members to login.

According to the Complainant, the Respondent is not authorized to register and use the disputed domain name, and the disputed domain name was registered with full knowledge of the Complainant’s rights in the term SONY and with only one purpose: profiteering and deceit.

Finally, the Complainant requests the cancellation of the disputed domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

As per paragraph 4(a) of the Policy, the Complainant must prove that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The evidence presented demonstrates that the Complainant is the owner of several trademark registrations for SONY around the world, including the US.

The Complainant’s trademark predates the disputed domain name.

The disputed domain name incorporates the Complainant’s trademark SONY in its entirety. The addition of the descriptive term “hr” does not avoid confusing similarity between the disputed domain name and the Complainant’s trademark.

The Panel finds that paragraph 4(a)(i) of the Policy has been proved by the Complainant, i.e., the disputed domain name is confusingly similar to the Complainant’s trademark.

B. Rights or Legitimate Interests

The Respondent has not submitted a response to the Complaint.

There is no evidence that the Respondent has any authorization to use the Complainant’s trademark or to register domain names containing the trademark SONY.

There is no evidence that the Respondent is commonly known by the disputed domain name.

There is no evidence that the Respondent is making a legitimate noncommercial or fair use of the disputed domain name or that before any notice of the dispute the Respondent has made use of, or demonstrable preparations to use the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Complainant showed evidence that the disputed domain name was used before the notice of the dispute to mislead users.

The Panel finds that the use of the disputed domain name, which incorporates the Complainant’s trademark, does not correspond to a bona fide use of the disputed domain name under the Policy.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(ii) of the Policy has been satisfied, i.e., the Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The trademark SONY is registered by the Complainant in several jurisdictions, including the US, and has been used since a long time. Also, the Complainant registered many domain names consisting of the mark SONY, including the domain name <sony.com>, registered in 1989.

The disputed domain name incorporates the Complainant’s trademark SONY and the Respondent has no rights or legitimate interests in the disputed domain name.

The Complainant’s SONY mark is extremely distinctive, widely known and has a strong online visibility. Thus, a domain name that comprises such a well-known mark is suggestive of the registrant’s bad faith.

In addition to the above, the Complainant showed evidence that the disputed domain name was used by the Respondent to mislead users into believing that the corresponding website was related to the Complainant, by providing employment verifications of “Sony Corporation America” and also reproducing SONY logo.

Therefore, this Panel finds that the Respondent has intentionally attempted to cause confusion with the Complainant’s trademark by misleading Internet users to believe that its website belongs to or is associated with the Complainant.

This Panel finds that the Respondent’s attempt of taking undue advantage of the trademark SONY as described in paragraph 4(b)(iv) of the Policy has been demonstrated. The fact that the disputed domain name subsequently ceased to resolve to an active website does not prevent a finding of bad faith. In the circumstances, passive holding of the disputed domain name is further evidence of the Respondent’s bad faith.

For the above reasons, the Panel finds that the condition of paragraph 4(a)(iii) of the Policy has been satisfied, i.e., the disputed domain name has been registered and is being used in bad faith.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name, <sonyhr.com>, be cancelled.

Mario Soerensen Garcia
Sole Panelist
Date: August 8, 2017

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