WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Corporation v. Domain Admin, Privatewhois.biz
Case No. D2017-2341
1. The Parties
The Complainant is Sony Corporation of Tokyo, Japan, represented by Gün & Partners, Turkey.
The Respondent is Domain Admin, Privatewhois.biz of Istanbul, Turkey.
2. The Domain Name and Registrar
The disputed domain name <sonyyetkiliservisi.com> is registered with Domain.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2017. On November 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same date, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 29, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 19, 2017. The Response was filed with the Center on December 16, 2017, in Turkish. On December 21, 2017, an English translation of the Response was filed by a third party with the Center.
The Center appointed Kaya Köklü as the sole panelist in this matter on January 4, 2018. 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 a multinational Japanese company that is active in the field of selling and marketing various kinds of electronic goods.
The Complainant owns a large number of SONY trademark registrations around the world, including in Turkey. According to the provided documents in the case file, the Complainant is inter alia the registered owner of the Turkish Trademark Registrations No. 77796 (registered on December 31, 1993) and No. 89735 (registered on December 31, 1995), both covering trademark protection particularly for goods in class 9.
The Complainant also owns and operates various domain names which incorporate the SONY trademark, such as <sony.com> and <sony.com.tr>.
The nominal Respondent is a privacy service located in Istanbul, Turkey. The true identity of the person who initiated the disputed domain name registration has not been revealed by the privacy service, but appears to be a repair service agent for electronic goods from Turkey.
The disputed domain name was registered on June 29, 2007.
The disputed domain name resolves to an active website, which is used for offering repair services for various kinds of SONY products in the Turkish language. The Complainant’s screenshots show that the Respondent prominently uses the SONY figurative trademark to promote its services without publishing any visible disclaimer describing the non-existent relationship between the Parties.
According to the uncontested information provided in the case file, the Respondent did not reply to a letter previously sent by the Complainant on July 14, 2017, asking for a voluntary deletion of the disputed domain name.
5. Parties’ Contentions
The Complainant requests the transfer of the disputed domain name.
The Complainant is of the opinion that the disputed domain name is confusingly similar to its SONY trademark.
Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant for the purposes of repairs and services within Turkey.
Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent was aware of the Complainant’s SONY trademark, when registering the disputed domain name. Concerning bad faith use, the Complainant believes that in light of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), the Respondent cannot successfully rely on a potential right or legitimate interest in the disputed domain name as a reseller or distributor of the Complainant’s products.
The nominal Respondent did not reply to the Complainant’s contentions.
However, the Center received email communications from a third party on December 16, 2017 (in Turkish) and on December 21, 2017 (in English) containing some defense arguments why the Complaint should be denied.
In these email communications, it is particularly argued that the first come, first served principle should apply. It is further asserted that the owner of the disputed domain name is an authorized service agent of another Turkish company that is alleged to be an importer of SONY products. Furthermore, it is argued that the Complainant can no longer claim rights in the disputed domain name as the registration dates back more than 10 years. Also, it is alleged that the disputed domain name has never been used in bad faith and it was never attempted to blackmail the Complainant. Quite the opposite, it is alleged that the disputed domain name was always used for legitimate purposes in good faith only.
6. Discussion and Findings
According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and
(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.
Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.
However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.
It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the WIPO Overview 3.0.
A. Identical or Confusingly Similar
The Panel finds that the Complainant has registered trademark rights in the mark SONY by virtue of a large number of longstanding trademark registrations, including trademark registrations covering protection in Turkey.
The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered SONY trademarks, as it fully incorporates the Complainant’s trademark. The mere addition of the descriptive Turkish terms “yetkili servisi”, which means in combination with the Complainant’s trademark “authorized service of SONY” in the English language, does not serve to distinguish the disputed domain name from the Complainant’s registered SONY trademarks.
Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate Interests
The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.
While the burden of proof on this element remains with the complainant, UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.
The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).
In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark SONY in a confusingly similar way within the disputed domain name.
There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. In particular, the alleged authorization for repair services provided by a third party (even if true) is not suitable to constitute a right or legitimate interest to use the Complainant’s trademark.
In this regard, the Panel is convinced that the Respondent cannot be assessed as a legitimate repair service for the Complainant’s products in light of Oki Data and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data (which may apply mutatis mutandis for offered repair services) are apparently not fulfilled in the present case. The Panel particularly notes that the Respondent’s website which is linked to the disputed domain name does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized repair and service agency for the Complainant’s products. In view of the Panel, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element.
Furthermore, the Panel notes that the first come, first served principle as argued in the email communication of December 21, 2017 to the Center does generally not apply for the registration of domain names which incorporate registered trademarks of third parties.
Finally, there is also no indication in the case file that would allow accepting a forfeiture of rights by the Complainant in the present case, even if 10 years have passed since the registration of the disputed domain name. Neither the UDRP nor the facts of the case would justify a denial of the Complainant’s claim for transfer of the disputed domain name due to a delay in initiating the present UDRP administrative proceedings. The Respondent did not provide any indication that the Complainant has delayed its Complaint in a legally abusive manner. In the Panel’s view, such indication, if at all, would only be given if the Complainant intentionally had caused the false impression by way of any explicit or implicit behavior that it will tolerate the use of the disputed domain name. The case file, at least, does not contain any such indication that would justify an assessment of a forfeiture of rights.
As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
The Panel is further convinced that the Respondent has registered and used the disputed domain name in bad faith.
The Panel notes the reputation and wide recognition of the Complainant’s trademark SONY. Due to its worldwide recognition (including in Turkey), the Panel accepts the SONY trademark as a well-known trademark. The Panel believes that the Respondent must have known this well-known trademark when registering the disputed domain name.
It rather appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant, in particular with its products and services. After having reviewed the Complainant’s screenshots of the website linked to the disputed domain name, the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own business. The Panel notes that the Respondent has not published a visible disclaimer on its website linked to the disputed domain name to explain that there is no existing relationship between itself and the Complainant. Hence, the Panel believes that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s SONY trademark as to the source, sponsorship, affiliation or endorsement of its website.
In any case, in view of the Panel, the Respondent does not meet the Oki Data principles on various elements, namely lack of a distinctive disclaimer and representing itself as the trademark owner by prominently using the Complainant’s logo and figurative trademark on its website.
Lastly, the Panel notes that the Respondent (whose true identity remains unclear in the present administrative proceedings) used a privacy service when creating the disputed domain name. Although privacy services might be legitimate in many cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain name (which fully incorporates the Complainant’s trademark SONY), rather indicates that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.
The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.
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 <sonyyetkiliservisi.com> be transferred to the Complainant.
Date: January 18, 2018