WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Interactive Entertainment Europe Limited v. Host Master, 1337 Services LLC
Case No. DIO2020-0013
1. The Parties
The Complainant is Sony Interactive Entertainment Europe Limited, United Kingdom, represented IP Twins S.A.S., France.
The Respondent is Host Master, 1337 Services LLC, Saint Kitts and Nevis.
2. The Domain Name and Registrar
The disputed domain name <ps4database.io> is registered with EPAG Domainservices GmbH (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 28, 2020. On October 28, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On October 28, 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 the Complainant on October 29, 2020, 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 30, 2020.
The Center verified that the Complaint, together with the amended Complaint, satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO 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 2, 2020. In accordance with the Rules, paragraph 5, the due date for Response was November 22, 2020. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on November 23, 2020.
The Center appointed Evan D. Brown as the sole panelist in this matter on November 30, 2020. 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 leading provider of home video game consoles, accessories, and services related thereto. It makes and sells the PlayStation console and has sold hundreds of millions of units. The PS4 is a model of such console, and the Complainant owns trademark registrations for that mark in several countries around the world, including in the European Union (Reg. No. 012075354, registered on February 11, 2014).
The disputed domain name was registered on June 1, 2018. The disputed domain name resolves to an active website that displays the PS4 trademark and allows users to search for PS4 game patches to download, providing links for such downloads.
5. Parties’ Contentions
The Complainant contends that the disputed domain name is identical or confusingly similar to the Complainant’s trademark; that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and, that the disputed domain name was registered or is being used in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
To succeed, the Complainant must demonstrate that all of the elements listed in paragraph 4(a) of the Policy have been satisfied, namely, that:
(i) the disputed 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 disputed domain name; and
(iii) the disputed domain name has been registered or is being used in bad faith.
The Complainant has demonstrated that each of these elements have been satisfied.
A. Identical or Confusingly Similar
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. See, Advance Magazine Publishers Inc., Les Publications Conde Nast S.A. v. Voguechen, WIPO Case No. D2014-0657.1 The Complainant has demonstrated its rights in the PS4 mark by providing evidence of its numerous trademark registrations. The disputed domain name incorporates the mark in its entirety. This is sufficient for showing confusing similarity under the Policy. The presence of the word “database” in the disputed domain name does not prevent a finding of confusing similarity. The Complainant has established this first element under the policy.
B. Rights or Legitimate Interests
The Panel evaluates this element of the Policy by first looking to see whether the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name. If the Complainant makes that showing, the burden of demonstrating rights or legitimate interests shifts to the Respondent.
On this point, the Complainant asserts, among other things, that:
- the Complainant is unaware of any other person other than the Complainant and its affiliated companies who have rights to the trademark PS4;
- the Respondent is not known by the disputed domain name;
- the Respondent has no license or authorization from the Complainant to use the mark PS4 within the disputed domain name; and,
- the Respondent has not, before the original filing of the Complaint, used or made preparations to use the disputed domain name in relation to a bona fide offering of goods or services.
The Complainant briefly argues that the Panel should not find the Respondent's use of the disputed domain name to be legitimate under the test set forth in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903, “primarily since the Respondent is not an authorized distributor of the Complainant.”
The Panel feels it inappropriate to give the Oki Data test as quick a treatment as the Complainant indicates that the Panel should. Whether a respondent is an authorized distributor of a complainant is merely implied in one of the well-accepted factors in the Oki Data test (disclosure of the relationship between the parties). As articulated in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview"), section 2.8.1, the following cumulative requirements will be applied in a case’s specific conditions:
(i) the Respondent must actually be offering the goods or services at issue;
(ii) the Respondent must use the site to sell only the trademarked goods or services;
(iii) the site must accurately and prominently disclose the Registrant’s relationship with the trademark holder; and,
(iv) the Respondent must not try to “corner the market” in domain names that reflect the trademark.
The Complainant does not assert that the files available through the Respondent’s website are pirated, counterfeit, or otherwise illegitimate files. In reviewing the website (which the Panel is permitted to do under the general powers of a panel articulated in the Rules), the Panel found that the only patch files made available for download are via URLs containing the domain name <playstation.net>, which appears to be a domain name owned and operated by one of the Complainant’s affiliates. In that sense, and to the extent the services of a database would be seen as synonymous with downloads, the Respondent could arguably be seen as “offering the … services at issue”.
The Respondent’s website appears to be focused only on PS4-related downloads. And the Complaint contains no assertion that the Respondent is using the disputed domain name to provide the goods or services of any other trademark owner. So, the second factor of the Oki Data test is in principle met.
The Panel does not find, however, that the Respondent’s website accurately and prominently discloses the Respondent’s relationship with the Complainant. Each page of the website contains an “About” link at the top. When one clicks on this link, he or she is taken to a page containing the following as its first two sentences: “PS4 Database is a database of PlayStation 4 Game Patches. The website has been developed by @OctolusNET for the PlayStation 4 scene!” Clicking on the hyperlinked @OctolusNET username takes the visitor to the Twitter account of one identifying himself as the “CEO Of OctoVPN” – not a person holding himself out as affiliated with the Complainant. And the text on the page goes on to explain that “[d]ue to how Sony work [sic] & our system. [sic] We are not able to monitor games that have not been submitted to our database - we are only capable of obtaining current patches.” This language indicates that the party operating this system is not “Sony” – i.e., not the Complainant.
But this language does not “prominently” disclose the Respondent’s relationship with the Complainant. One has to search for the information described above, and it is not necessary for a user to see this information to use the services at the Respondent’s website. Other UDRP panels have relied on more conspicuous designations to meet the Oki Data standard. For example, in the case of General Motors LLC v. Flashcraft, Inc DBA Cad Company, WIPO Case No. D2011-2117, the panel therein denied transfer of the disputed domain name on Oki Data grounds, finding that “[t]he website . . . discloses the Respondent’s non-affiliation with the Complainant in prominent and unmistakable terms . . . .” (emphasis added). The Respondent’s website in this case does not disclose its association with the Complainant in prominent and unmistakable terms. In this Panel’s view, that is a strong indication that the disclosure is not prominent.
As for the question of whether the Respondent has tried to “corner the market”, the record is not clear. The home page of the Respondent’s website says that “[t]he new official domain for this website is now Ps4Database.io!” This language indicates the Respondent had tried other domain names before this one. And the cease and desist letter that counsel for the Complainant sent to the Respondent on August 3, 2020, notes that the Respondent had also registered the domain name <ps4patches.com>. These facts could be a partial view of a larger scheme of the Respondent to corner the market on these sorts of domain names. Ultimately, however, it does not matter, as the Panel has already determined that the Oki Data test is not met for other reasons.
For these reasons, the Panel finds that the Complainant has made a prima facie showing that the Respondent lacks rights or legitimate interests in respect of the disputed domain name, and the Respondent has not come forth with any evidence to overcome that showing. The Complainant has succeeded under this second Policy element.
C. Registered or Used in Bad Faith
The Policy requires that the Complainant show that the Respondent registered or used the disputed domain name in bad faith. The circumstances of this case show that the Respondent targeted the Complainant and its PS4 trademark when it registered the disputed domain name. The website at the disputed domain name has apparently been created for the express purpose of providing access to software patches provided by the Complainant. This use of the disputed domain shows a bad faith intent to trade off of the goodwill of the Complainant’s mark. It would not be necessary to use the Complainant’s trademark in the domain name for a website that offers the Respondent’s services. The fact that the disputed domain name does contain the mark indicates that the Respondent wishes to use the goodwill of the Complainant’s mark to attract visitors to the website. Accordingly, the Complainant has satisfied this third element under the Policy.
For the foregoing reasons, the Panel orders that the disputed domain name <ps4database.io> be transferred to the Complainant.
Evan D. Brown
Date: December 17, 2020
1 Noting the substantial substantive similarities between the Policy and the Uniform Domain Name Dispute Resolution Policy (“UDRP”), the Panel has referred to prior UDRP cases and the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”) where appropriate.