WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Interactive Entertainment Inc. v. Govind Anda

Case No. D2019-2361

1. The Parties

The Complainant is Sony Interactive Entertainment Inc., Japan, represented by Fross Zelnick Lehrman & Zissu, PC, United States of America (“United States”).

The Respondent is Govind Anda, United Kingdom.

2. The Domain Name and Registrar

The disputed domain name <playstationdirect.com> (“Domain Name”) is registered with Easyspace (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 27, 2019. On September 30, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On October 1, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on October 2, 2019 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 October 3, 2019.

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 October 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was October 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 28, 2019.

The Center appointed Willem J.H. Leppink as the sole panelist in this matter on October 30, 2019. 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.

On November 4 and 11, 2019, the Respondent sent email communications to the Center, stating “Hi, I don’t seem to understand what’s this all about, Please explain in layman’s term. Regards” and “Hi, So what are my options with this? I am not a business I am an individual person. I don’t have money to pursue this through the legal channels. Regards”. No formal Response was received.

4. Factual Background

The following facts are undisputed.

The Complainant is a worldwide well-known company, famous for inter alia its PlayStation gaming platform. The Complainant has sold over 400 million PlayStation units since its introduction in Japan in 1994.

The Complainant is the owner of many registered trademarks for the word mark PLAYSTATION worldwide, including, but not limited to, various United States trademarks (word marks) PLAYSTATION, the earliest of which was registered on April 12, 1997 (trademark registration no. 2087964) for goods in class 16. This trademark registration will be referred to as the “Trademark”.

The Complainant is the owner of various domain names that incorporate the Trademark, including <playstation.com>, registered in 1997.

The Domain Name was registered on May 5, 2005. The Domain Name is currently not being used in connection with an active website. However, the website to which the Domain Name resolved, was being used to sell electronic parts of the Complainant’s PlayStation devices, as well as electronic parts of other companies.

5. Parties’ Contentions

A. Complainant

Insofar as relevant, the Complainant contends the following.

The Domain Name is confusingly similar to the Trademark. The dominant part of the Domain Name reproduces the Trademark. In addition, the non-distinguishing term “direct” is added, which has no particular meaning or significance that would distinguish the Domain Name from the Trademark. Moreover, the generic Top-Level Domain (“gTLD”) “.com” need not to be taken into consideration.

The Respondent has no rights or legitimate interest in the Domain Name. The Respondent registered the Domain Name a decade after the Complainant obtained registrations for its trademarks around the world. The Respondent offered many non-PlayStation related products on its former website and failed to disclose the lack of any relationship with the Complainant. Moreover, the Respondent gave consumers the impression that it was authorized by the Complainant and, therefore, traded on the fame of the Trademark.

The Domain Name was registered and is being used in bad faith. The Domain Name is obviously connected to the well-known Trademark. The mere holding of the Domain Name constitutes bad faith due to the absence of legitimate use. The Respondent has banked on the established goodwill and consumers recognition of the Trademark to drive traffic to its website to sell similar and related products. In addition, the Respondent has attempted to profit from the registration of the Domain Name by demanding excessive payments.

B. Respondent

Except for the email communications received from the Respondent on November 4 and 11, 2019, the Respondent did not formally reply to the Complainant’s contentions.

6. Discussion and Findings

Pursuant to paragraph 4(a) of the Policy, the Complainant must prove each of the following three elements:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant must demonstrate that it has rights in a trademark and, if so, the Domain Name must be shown to be identical or confusingly similar to the trademark.

The Complainant has shown that it has rights in the Trademark.

As set out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7, the first element functions primarily as a standing requirement. The threshold test for confusing similarity between the Domain Name and the Trademark involves a relatively straightforward comparison.

In light of the foregoing, the Panel finds that the Domain Name is confusingly similar to the Trademark. The Domain Name consists of the elements “playstation” and “direct”. The element “playstation” is identical to the Trademark. The element “direct” is a solely descriptive term. The Panel finds that the Trademark is included in its entirety in the Domain Name and that the element “direct” does not prevent a finding of confusing similarity.

In addition, with regard to the suffix “.com”, as it was established in many previous UDRP decisions (see A.P. Møller v. Web Society, WIPO Case No. D2000-0135; Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429; Arab Bank for Investment And Foreign Trade (ARBIFT) v. Mr. Kenn Wagenheim / 07@usa.net, WIPO Case No. D2000-1400; Delikomat Betriebsverpflegung Gesellschaft m.b.H. v. Alexander Lehner, WIPO Case No. D2001-1447; and Crédit Industriel et Commercial S.A v. Name Privacy, WIPO Case No. D2005-0457), it does not generally affect the analysis under the first element of the Policy for the purpose of determining whether a domain name is identical or confusingly similar; indeed, the suffix is a necessary component of a domain name and does not give any distinctiveness.

Thus, the Panel finds that the Domain Name is confusingly similar to the Trademark.

For all the foregoing reasons, the Panel is satisfied that the first element of the Policy is met.

B. Rights or Legitimate Interests

The Panel has carefully considered the factual allegations that have been made by the Complainant and are supported by the submitted evidence, and email communications that have been received from the Respondent.

In particular, the Respondent has failed to offer the Panel any of the types of evidence set forth in paragraph 4(c) of the Policy from which the Panel might conclude that the Respondent has rights or legitimate interests in the Domain Name, such as:

(i) use or 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 prior to notice of the dispute; or

(ii) being commonly known by the Domain Name (as an individual, business or other organization) even if the Respondent has not acquired any trademark or service mark rights; or

(iii) making 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.

The Respondent does not seem to be affiliated with the Complainant in any way. There is no evidence that “playstation” or “playstationdirect” is the Respondent’s name or that the Respondent is commonly known as “playstation” or “playstationdirect”. There is also no evidence that the Respondent is, or has ever been, a licensee of the Complainant or that the Respondent has ever asked, or has ever been permitted in any way by the Complainant to register or use the Trademark, or to apply for or use any domain name incorporating the Trademark.

Furthermore, the use of the Domain Name cannot be considered a bona fide offering of goods or services. The Panel notes that the Domain Name is currently not being used, but has formerly been used. After removing the website to which the Domain Name resolved, the Respondent has not made any demonstrable preparation to use the Domain Name in connection with a bona fide offering of goods or services, but is rather offering the Domain Name for sale.

Insofar relevant, the Panel acknowledges that the website to which the Domain Name resolved, was formerly used to offer goods.

The question whether the Respondent was using the former website to which the Domain Name resolved, in connection with a bona fide offering of goods, has to be assessed in light of the decision in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (regarding the domain name <okidataparts.com>).

In order for the use to be qualified as a “bona fide offering of goods”, the offering of goods must meet several requirements, referred to as the “Oki Data criteria”.

Those include, at the minimum, the following:

- the respondent must actually be offering the goods or services at issue;

- the respondent must use the website of the domain name to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods;

- the website of the domain name must accurately disclose the respondent’s relationship with the trademark owner; it may not, for example, falsely suggest that the respondent is the trademark owner, or that its website is the official site, if, in fact, it is only one of many sales agents. See, e.g., Houghton Mifflin Co. v. The Weatherman, Inc., WIPO Case No. D2001-0211 (no bona fide offering where website’s use of complainant’s logo, and lack of any disclaimer, suggested that website was the official Curious George website);

- the respondent must not try to corner the market in all domain names, thus it must not deprive the trademark owner of reflecting its own mark in a domain name.

The Panel notes that the former website did not meet all requirements. The Respondent did not solely offer the trademarked goods on that website, but used the Trademark to bait Internet users and then switched them to other goods. In addition, the Panel finds that the former website did not accurately disclose the Respondent’s relationship with the owner of the Trademark.

Moreover, as the Domain Name consists of the Trademark plus an additional term (i.e., direct), such composition cannot constitute fair use as in this case it effectively impersonates or suggests sponsorship or endorsement by the Complainant (see WIPO Overview 3.0, section 2.5.1).

Therefore, the Respondent, for purposes of the Policy, has not been using the Domain Name for a bona fide offering of goods or services. At this time there is no active website at all, which by itself does not create any right or legitimate interest.

Accordingly, the Panel finds that the Respondent cannot be said to have rights to or legitimate interests in the Domain Name.

Finally, given the circumstance of this case, the Panel finds that the Respondent’s lack of rights or legitimate interests in the Domain Name may also be inferred by the fact that no formal response was filed by the Respondent.

Therefore, the Panel is satisfied that the second element of the Policy is met.

C. Registered and Used in Bad Faith

The Panel finds that the Domain Name was registered and is being used in bad faith.

The Panel refers to its considerations under section 6.B and adds the following.

The Panel notes that the relevant period of time to determine if the Domain Name has been registered in bad faith is 2005.

In light of the extensive evidence filed by the Complainant and the absence of a reply, the Panel finds that the Trademark is, as well as the activities of the Complainant, internationally well-known throughout the world. Accordingly, in the Panel’s view, the Respondent must have been aware of the Complainant’s existence and rights at the time of registering the Domain Name.

The behavior of the Respondent fits the example of paragraph 4(b)(iv) of the Policy, i.e. that, by using the Domain Name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location. The fact that the Respondent does no longer use the Domain Name (not in line with the Oki Data criteria), but has offered it for sale, does not change the Panel’s finding of use in bad faith. Moreover the current use, all circumstances considered, can be regarded as passive holding (see WIPO Overview 3.0 under 3.3).

Finally, although the lack of a formal response by the Respondent as such cannot by itself lead to the conclusion that there is registration and use in bad faith, the cumulative circumstances as outlined in the Decision are sufficient for the Panel to find that the registration and use of the Domain Name by the Respondent is in bad faith.

In light of the above circumstances, the Panel is satisfied that the third element of the Policy is met and that the Domain Name was 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 Domain Name <playstationdirect.com> be transferred to the Complainant.

Willem Leppink
Sole Panelist
Date: November 11, 2019