WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / David Grant
Case No. D2020-3162
1. The Parties
Complainant is Sony Corporation, Japan, represented by CSC Digital Brand Services Group AB, Sweden.
Respondent is WhoisGuard Protected, WhoisGuard, Inc., Panama / David Grant, United States of America (“United States”).1
2. The Domain Name and Registrar
The disputed domain name <sonyrelieffund.com> is registered with NameCheap, Inc. (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 25, 2020. On November 25, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 25, 2020, 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 Complainant on November 26, 2020, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on November 30, 2020.
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 Respondent of the Complaint, and the proceedings commenced on November 30, 2020. In accordance with the Rules, paragraph 5, the due date for Response was December 20, 2020. Respondent did not submit any response. On December 1, 2020, Complainant sent an email to the Center indicating that any email sent to Respondent’s email address was forwarded to a third-party email address. Accordingly, the Center notified Respondent’s default on December 20, 2020.
The Center appointed Stephanie G. Hartung as the sole panelist in this matter on January 14, 2021. 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
Complainant is a company organized under the laws of Japan that is active in several industries, including smart phones, movie pictures, music, cameras, and financial services.
Complainant has provided evidence that it is the registered owner of numerous trademarks worldwide relating to its company name and brand “Sony”, including, but not limited, to the following, which enjoy protection for the territory of the United States:
- Word mark SONY, United States Patent and Trademark Office (“USPTO”), registration number: 0777400, registration date: September 22, 1964, status: active;
- Word mark SONY, USPTO, registration number: 0770275, registration date: May 26, 1964, status: active.
Moreover, Complainant has demonstrated to own numerous domain names relating to its SONY trademark, including since 1989 the domain name <sony.com>, which resolves to Complainant’s official website at “www.sony.com”, promoting Complainant’s diverse products and related services worldwide.
In 2020, Complainant established the “Sony Global Relief Fund for COVID-19”, a USD 100 million fund to support people around the world who have been affected by the Covid-19 pandemic.
Respondent, according to the information disclosed by the Registrar, is a resident of the United States who registered the disputed domain name on August 20, 2020. By the time of the rendering of this decision, the disputed domain name does not resolve to any valid content on the Internet. However, according to evidence submitted by Complainant, the disputed domain name was used to send fraudulent emails.
Complainant requests that the disputed domain name be transferred to Complainant.
5. Parties’ Contentions
Complainant contends that, as a result of significant advertising investments over the years, its SONY trademark and brand has become well recognized and respected worldwide and across the industries Complainant operates in.
Complainant submits that the disputed domain name is confusingly similar to Complainant’s SONY trademark as it merely consists of the latter and the additional term “relief fund” that closely relates to and describes Complainant’s business. Moreover, Complainant asserts that Respondent has no rights or legitimate interests in respect of the disputed domain name since (1) Respondent is not sponsored by or affiliated with Complainant in any way and has not been given permission to use Complainant’s SONY trademark in any manner, including in domain names, (2) Respondent is not commonly known by the disputed domain name and apparently has not acquired any other (trademark) rights relating thereto, and (3) Respondent has not used the disputed domain name in connection with a bona fide offering of goods or services or in a noncommercial manner, but rather to send fraudulent emails (by spoofing Complainant’s official email address) to unsuspecting users informing them that they were eligible to receive funds from Complainant’s “Global Relief Fund for COVID-19” in order to collect sensitive user data. Finally, Complainant argues that Respondent registered and is using the disputed domain name in bad faith since (1) by registering the disputed domain name that consists of Complainant’s SONY trademark and the term “relief fund”, Respondent has clearly demonstrated knowledge of and familiarity with Complainant’s brand and business, and (2) the fact that Respondent is using the disputed domain name for purposes of launching a phishing attack by sending fraudulent emails may not be characterized other than clear evidence of bad faith registration and use of the disputed domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
Under paragraph 4(a) of the Policy, Complainant carries the burden of proving:
(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) that the disputed domain name has been registered and is being used in bad faith.
Respondent’s default in the case at hand does not automatically result in a decision in favor of Complainant, however, paragraph 5(f) of the Rules provides that if Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute solely based upon the Complaint. Further, according to paragraph 14(b) of the Rules, the Panel may draw such inferences from Respondent’s failure to submit a Response as it considers appropriate.
A. Identical or Confusingly Similar
The Panel concludes that the disputed domain name <sonyrelieffund.com> is confusingly similar to the SONY trademark in which Complainant has rights.
The disputed domain name incorporates the SONY trademark in its entirety. Numerous UDRP panels have recognized that incorporating a trademark in its entirety is sufficient to establish that the disputed domain name is confusingly similar to a registered trademark (see e.g. PepsiCo, Inc. v. PEPSI, SRL (a/k/a P.E.P.S.I.) and EMS Computer Industry (a/k/a EMS), WIPO Case No. D2003-0696). Moreover, it has been held in many UDRP decisions and has become a consensus view among UDRP panels (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8), that the addition of other terms (whether e.g. descriptive or otherwise) would not prevent the finding of confusing similarity under the first element of the UDRP. Accordingly, the addition of the descriptive terms “relief” and “fund”, which even directly point to Complainant’s “Sony Global Relief Fund for COVID-19”, does not dispel the confusing similarity arising from the incorporation of Complainant’s SONY trademark in the disputed domain name.
Therefore, Complainant has established the first element under the Policy set forth by paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Panel is further convinced on the basis of Complainant’s undisputed contentions that Respondent has not made use of the disputed domain name in connection with a bona fide offering of goods or services, nor has Respondent been commonly known by the disputed domain name, nor can it be found that Respondent has made a legitimate noncommercial or fair use thereof without intent for commercial gain.
Respondent has not been authorized to use Complainant’s SONY trademark, either as a domain name or in any other way. Also, there is no reason to believe that Respondent’s name somehow corresponds with the disputed domain name and Respondent does not appear to have any trademark rights associated with the term “Sony” on its own. Finally, Respondent apparently sent fraudulent emails (by spoofing Complainant’s official email address) to unsuspecting users informing them that they were eligible to receive funds from Complainant’s “Global Relief Fund for COVID-19” in order to collect sensitive user data to Respondent’s illegal advantage; such use of the disputed domain name obviously neither qualifies as bona fide nor as legitimate noncommercial or fair within the meaning of the Policy.
Accordingly, Complainant has established a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name. Now, the burden of production shifts to Respondent to come forward with appropriate evidence demonstrating to the contrary (see WIPO Overview 3.0, section 2.1). Given that Respondent has defaulted, it has not met that burden.
Therefore, the Panel finds that Complainant has also satisfied paragraph 4(a)(ii) and, thus, the second element of the Policy.
C. Registered and Used in Bad Faith
The Panel finally holds that the disputed domain name was registered and is being used by Respondent in bad faith.
The circumstances to this case leave no doubt that Respondent was fully aware of Complainant’s rights in the SONY trademark (notwithstanding its claimed worldwide recognition) when registering the disputed domain name and that the latter clearly is directed thereto. Moreover, using the disputed domain name for phishing activities by sending fraudulent emails (including spoofing Complainant’s official email address) to unsuspecting users informing them that they were eligible to receive funds from Complainant’s “Global Relief Fund for COVID-19” in order to collect sensitive user data to Respondent’s illegal advantage, is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s SONY trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s email. Such circumstances are evidence of registration and use of the disputed domain name in bad faith within the larger meaning of paragraph 4(b)(iv) of the Policy.
In addition to the above, the Center received an email communication from Complainant pointing out that Respondent’s email address registered with the Registrar seems to forward any incoming emails to a third-party email address, which, in the circumstances of the case, is further evidence of bad faith.
In connection with this finding, it also carries weight in the eyes of the Panel that Respondent obviously provided false or incomplete contact information in the WhoIs register for the disputed domain name since, according to the email correspondence between the Center and the postal courier DHL, the Written Notice dated November 30, 2020, could not be delivered. This fact at least throws a light on Respondent’s behavior which also supports the Panel’s bad faith finding.
Therefore, the Panel holds that Complainant has also satisfied the third element under the Policy as set forth by paragraph 4(a)(iii).
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 <sonyrelieffund.com> be transferred to Complainant.
Stephanie G. Hartung
Date: January 27, 2021
1 It is evident from the case file that WhoisGuard Protected, WhoisGuard, Inc., Panama, is a privacy protection service and that David Grant, United States, is the underlying registrant of the disputed domain name. Therefore, unless otherwise indicated, the term “Respondent” is used by the Panel in the case at hand to refer to the latter underlying registrant only.