WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

MSM Satellite Pte Ltd. and Multi Screen Media Private Limited v. Noorinet

Case No. D2014-0100

1. The Parties

The Complainants are MSM Satellite Pte Ltd. of Singapore and Multi Screen Media Private Limited of Mumbai, Maharashtra, India, represented by Mr. Ritesh Khosla, India.

The Respondent is Noorinet of Gyeongju, Republic of Korea.

2. The Domain Name and Registrar

The disputed domain name <sonypix.com> is registered with Megazone Corp., dba HOSTING.KR (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on January 22, 2014. On January 23, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On January 24, 2014, the Registrar transmitted by email to the Center its verification response confirming the Respondent as the registrant and provided contact details.

On January 28, 2014, the Center notified the Parties in both English and Korean that the language of the Registration Agreement in this case was Korean. On the same day, the Complainants requested for English to be the language of the proceeding. The Respondent did not submit a language of the proceeding request.

The Center verified that the 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 4, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was February 24, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 25, 2014.

The Center appointed Andrew J. Park as the sole panelist in this matter on March 17, 2014. 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

This case concerns the disputed domain name <sonypix.com> which was registered on August 12, 2006.

The first Complainant is MSM Satellite Pte Ltd., a company having its principal place of business in Singapore. The second Complainant is Multi Screen Media Private Limited, a company having its principal place of business IN India. The first Complainant is a subsidiary of the second Complainant and they are hereafter jointly referred to as the Complainant.

The Complainant is a duly licensed subsidiary of Sony Pictures Entertainment Inc., USA as evidenced in the annex of the Complaint. The Complainant and its affiliates are part of MSM Group, which is among India’s leading television channel operators. The Complainant operates well-known and widely viewed television channels, including the following:

- “Sony PIX” – a channel that airs Hollywood movies;

- “Sony MAX” – India’s premium movies and special events channel;

- “Sony SAB” – a Hindi channel focusing on entertaining modern India;

- “Sony SIX” – a channel dedicated to sports; and

- “Sony MIX” – an Indian music channel

The Complainant is also licensed to use the mark SONY in relation to its entertainment channels. The Complainant adopted “Sony PIX” in relation to its channel that airs Hollywood movies, which was launched on April 1, 2006. Sony PIX is one of India’s leading English movie channels and has millions of subscribers. The Complainant has also registered and is using the domain name <sonypix.in> for channel/business information related purposes.

The Complainant contends that it first learned about the disputed domain name on or around December 15, 2014.

The Respondent is Noorinet, a company located in Gyeongju, Republic of Korea. No further information about the Respondent is known beyond what is disclosed in the WhoIs record of the disputed domain name. As of December 15, 2013, the website associated with the disputed domain name shows that the disputed domain name is for sale and invites bids. The website is also linked to the Respondent’s website viz, “www.noori.net.”

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

1) The Complainant has statutory and common law rights in the trademark “Sony PIX,” and the disputed domain name is identical or confusingly similar to the “Sony PIX” trademark.

2) The Respondent has no rights or legitimate interests in respect of the disputed domain name. There is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services. The Respondent is not authorized or permitted by the Complainant to use the disputed domain name, nor is the Respondent connected or related to the Complainant in any manner. The fact that the disputed domain name is offered for sale through bidding and is linked to the Respondent’s personal website indicates that the Respondent is attempting to improperly monetize from the disputed domain name.

3) The disputed domain name was registered and is being used in bad faith. The trademark “Sony PIX” is a well-known mark, which the Respondent must have been aware of. By using the disputed domain name as a temporary landing page that gets redirected to the Respondent’s website, the Respondent intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademarks as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website. The Respondent also improperly attempted to make commercial gain by selling the disputed domain name through bidding.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy sets forth three requirements, which have to be met for the Panel to order the transfer of the disputed domain name to the Complainants. Those requirements are that: (i) the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainants have rights; and (ii) the Respondent has no rights or legitimate interests in respect of the domain name; and (iii) the Respondent’s domain name has been registered and is being used in bad faith.

The Panel has to 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, pursuant to paragraph 15(a) of said Rules. In accordance with paragraph 14(b) of the Rules, if the Respondent does not submit a Response, in the absence of exceptional circumstances, the Panel shall draw inferences as it considers appropriate(e.g., based upon the Complaint).

6.1. Language of the Proceedings

The registration agreement for the disputed domain name is in Korean. Pursuant to paragraph 11 of the Rules, unless otherwise agreed by the parties, or specified otherwise in the registration agreement, the language of the administrative proceeding shall be the language of the registration agreement, i.e., Korean. However, as noted above, the Complainant upon receiving the Language of Proceeding notification from the Center submitted a request for this dispute to proceed in English. The Center made a preliminary determination to accept the Complaint filed in English, subject to a determination by the Panel pursuant to paragraph 11 of Rules.

In adopting a language other than that of the registration agreement, the Panel has to exercise its discretion judicially in the spirit of fairness and justice to both parties, taking into account all relevant circumstances of the case, including matters such as the parties’ ability to understand and use the proposed language, time and costs. Groupe Auchan v. xmxzl, WIPO Case No. DCC2006-0004; Finter Bank Zurich v. Shumin Peng, WIPO Case No. D2006-0432. Based on (1) the English language content of Respondent's website at the Disputed Domain Name; and (2) the Respondent’s offer to sell the Disputed Domain Name using an English language website to broker the sale, it does not appear Respondent has any difficulty comprehending and communicating in English. As a prior panel has determined, if an entity conducts activities in English, it is difficult for that entity to object if someone complains about such activities in English. Burger King Corporation v. Burger King S.R.L., WIPO Case No. DRO2008-0012. Furthermore, the Panel is mindful of the fact that a decision in Korean would not be readily comprehensible by the Complainant and would therefore likely require it to expend resources to translate the same.

In light of these circumstances, the Panel concludes that it will (1) proceed in line with the Center’s preliminary decision to accept the Complaint as filed in English; and (2) issue a decision in English.

6.2. Discussion

A. Identical or Confusingly Similar

The Complainant clearly has rights in “Sony PIX” by virtue of its license agreement with Sony Corporation to use the trademark “SONY,” as well as its well-known, long-standing, use of the name “Sony PIX” in relation to its television channel that air Hollywood movies.

A series of UDRP decisions have held and it is now well established that the Policy protects rights in unregistered trademarks (see, e.g., Bennett Coleman & Co. Ltd. v. Steven S. Lafwani, WIPO Case No. D2000-0014; SeekAmerica Networks Inc. v. Tariq Masood and Solo Sings, WIPO Case No. D2000-0131; Brisbane City Council v. Warren Bolton Consulting Pty Ltd., WIPO Case No. D2001-0047; and Imperial College v. Christopher Dessimoz, WIPO Case No. D2004-0322). However, the Panel will not automatically accept an unsupported assertion of unregistered trademark rights, but will examine the evidence which may establish that the Complainant holds rights in an unregistered trademark.

In accordance with the WIPO Overview of WIPO Panel Views on Selected UDRP Questions Second Edition (“WIPO Overview 2.0”) paragraph 1.7, in cases where the complaint is based on unregistered trademark rights, the Complainant must show that the name has become a distinctive identifier associated with the Complainant or its goods and services. Relevant evidence of such secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit the complainant's rights in a common law trademark in regards to the first element of the Policy. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction (see Uitgeverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575, Skattedirektoratet v. Eivind Nag, WIPO Case No. D2000-1314, Australian Trade Commission v. Matthew Reader, WIPO Case No. D2002-0786).

Answering this question is a matter of considering all of the evidence as to whether the Complainant has rights in “Sony Pix” for the purposes of the Policy.

In the present case, the Panel finds that the Complainant (a licensee of the SONY mark) has established that the name “Sony PIX” has become a distinctive identifier associated with the Complainant or its services. That is so for the following reasons: the Complainant has been using the name “Sony PIX” in relation to its channel that airs Hollywood movies since April 1, 2006. “Sony PIX” is one of India’s leading English movie channels and has millions of subscribers and fans. The Complainant has used the name “Sony PIX” through advertisement, publicity, promotion, and marketing activities, including through the domain name <sonypix.in>. As a result, the name “Sony PIX” has attracted significant goodwill. Additionally, there is no evidence to suggest a company or business other than the Complainant that uses the name in the same industry as the Complainant. The Panel is therefore satisfied that the Complainant has trade mark rights in “Sony PIX” for the purposes of the Policy.

The next question is whether the disputed domain name is identical or confusingly similar to the trademark. Here, the disputed domain name <sonypix.com> is identical to “Sony PIX.”

For these reasons, pursuant to the Policy, paragraph 4(a)(i), the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark

B. Rights or Legitimate Interests

There is no evidence in this case to support a finding that the Respondent has rights or legitimate interests in the disputed domain name.

The general consensus of panel opinion on the issue of whether a respondent has rights or legitimate interests is set out in paragraph 2.1 of the WIPO Overview 2.0. On this approach, a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP.

In this case, the Complainant has established a strong prima facie case against the Respondent. The Respondent has failed to come forward with any allegations or evidence demonstrating rights or legitimate interests in the disputed domain name, and, further, there is no evidence in the case file that would demonstrate that the Respondent had such rights or legitimate interests.

First, the Panel considers that in the absence of any license or permission from the Complainant to use the Complainant’s trademark, no actual or contemplated bona fide or legitimate use of the domain name could reasonably be claimed. Such is the case here, in as much as the Complainant’s television station associated with “Sony PIX” is widely known and the Complainant did not give any license or other permission to the Respondent to use “Sony PIX.” See Audi AG v. Mike Gillespie, Gillespie Auto Group, WIPO Case No. D2007-1850.

Second, there is no evidence that the Respondent is using the disputed domain name in connection with a bona fide offering of goods or services at present. In addition, there is no evidence to suggest that the Respondent has been commonly known by the disputed domain name. The name “Sony PIX” has no apparent association with the Respondent.

Third, the evidence supports that there was no bona fide offering of goods or services in connection with the Respondent’s use of, or demonstrable preparations to use, the disputed domain name. Indeed, the evidence supports that the Respondent used the disputed domain name containing the Complainant’s trademark to bait Internet users to buy the disputed domain name, look for investors for the website “www.noori.net,” and direct Internet users to the Respondent’s own website. There is no evidence of any intention to carry out a business of offering goods or services under the disputed domain name. This shows that the Respondent was using the website solely for generating revenue for its own business, either under “noori.net” or by creating consumer confusion as to the owner of the domain name. In the Panel’s view, this indicates no bona fide offering of goods or services. See Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057.

Accordingly, pursuant to paragraph 4(a)(ii) of the Policy, the Panel finds under the circumstances that the Complainant has established that the Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides a non-exclusive list of circumstances that evidence registration and use of a domain name in bad faith - any one of which is sufficient to support a finding of bad faith. In particular, paragraph 4(b)(iv) states that the following circumstance is evidence of bad faith registration and use:

“by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location.”

The evidence, which is not rebutted by the Respondent, clearly shows that the Respondent had attempted to attract for commercial gain Internet users to the websites of the disputed domain names by creating a likelihood of confusion with the Complainant’s trademarks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

Commercial gain must have been the Respondent’s intention for registering the disputed domain name. Based on the evidence submitted, the Panel agrees with the Complainant that the trademark “Sony PIX” is well-known. Thus, in deciding to incorporate the trademark “Sony PIX” in the disputed domain name, the Respondent must have been aware of and intended to benefit from the reputation in the same. Indeed, the website associated with the disputed domain name shows that the disputed domain name is for sale and invites bids. The website is also linked to the Respondent’s website viz, “www.noori.net.”

Accordingly, the Panel finds that the only credible explanation for the use of the disputed domain name is to take advantage of the similarity between the disputed domain name and the Complainant’s trademark to draw Internet users to that site for commercial advantage. As mentioned above, the Respondent has no connection whatsoever to “Sony PIX.” The registration of a domain name by a respondent that is similar to a distinctive trademark, when the respondent has no relationship to that trademark, is sufficient evidence of bad faith (see Charles Jourdan Holding AG v. AAIM, WIPO Case No. D2000-0403; Centurion Bank of Punjab Limited v. West Coast Consulting, LLC, WIPO Case No. D2005-1319). Thus, it is the Panel’s opinion that the Respondent must have been aware of the trademark “Sony PIX” and intentionally attempted to attract for commercial gain Internet users to the Respondent’s website by creating a likelihood of confusion with the Complainants’ trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

For the above reasons, pursuant to paragraph 4(a)(iii) of the Policy, the Panel finds that the Complainants have shown that the disputed domain name has been registered and used in bad faith by the Respondent.

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 <sonypix.com> be transferred to the Complainant.

Andrew J. Park
Sole Panelist
Date: March 31, 2014