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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Corporation Vs. Park Kwangsoo
Case No. D2001-0167
1. The Parties
The Complainant is Sony Corporation, 6-7-35, Kitashinagawa, 6-chome, Shinagawa-ku, Tokyo 141-0001, Japan. The Complainant’s authorized representative in this administrative proceeding is: Ned W. Branthover, Esq. of Robin Blecker & Daley, 330 Madison Avenue, New York, NY 10017, USA.
The Respondent is Park, Kwangsoo, SETEC, 327-17, 2f, dong-ju bldg, seogyo-dong, mapo-gu, SEOUL 121-210, Republic of Korea.
2. The Domain Name and Registrar
The Respondent is the registrant of the following domain name: "newsony.com", registered with Network Solutions, Inc.(NSI), 505 Huntmar Park Drive Herndon, VA 20170, USA, E-mail: email@example.com
3. Procedural History
The Complaint in this case was filed by e-mail on January 31, 2001, and in hardcopy on February, 1, 2001, with the WIPO Arbitration and Mediation Center (the Center).
The Center has found that the Complaint satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and WIPO's Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules).
On February 5, 2001, the Center transmitted a request to NSI, to:
h Confirm that a copy of the Complaint was sent to NSI as required by the Supplemental Rules, by the Complainant,
h Confirm that "newsony.com" is registered with NSI,
h Confirm that the entity identified in the present case as the Respondent is the current registrant of the domain name,
h Provide full contact details that are available in NSI's, WHOIS database for the registrant, technical contact, administrative contact and billing contact, for the said domain name,
h Confirm that the Uniform Domain Name Dispute Resolution Policy applies to the registered domain name,
h Indicate the current status of the domain name.
By communication dated February 8, 2001, NSI informed the Center that:
· NSI is in receipt of the Complaint sent to it by the Complainant;
· It is the Registrar of the domain name registration,
· SETEC is the current registrant of the "newsony.com" domain name registration,
· The Registrant is:
SETEC (Contact details omitted)
Administrative Contact: Park, Kwangsoo (KPM58)
SEOUL, SEOUL 121-210 KR
· The UDRP applies to this domain name
· The domain name registration is in active status.
On February 12, 2001, the Respondent was notified of the Complaint filed by the Complainant and opportunity was granted as per the Rules for filing of a Response. The Notification was sent by post, facsimile and e-mail. The Administrative Panel finds that the Center has satisfied its notification obligations under Rule 2(b).
The Center did not receive any response from the Respondent.
On March 7, 2001, the Center notified the Respondent of its default in complying with the deadline indicated in the notification of complaint.
On March 15, 2001, the Center appointed an Administrative Panel consisting of a single member, Maninder Singh, and this was notified to the Complainant and the Respondent.
The language of the administrative proceeding is English.
4. Factual Background
The Complainant in this administrative proceeding is Sony Corporation, 6-7-35, Kitashinagawa, 6-chome, Shinagawa-ku, Tokyo 141-0001, Japan. Since the Respondent has failed to furnish its response after being notified with the complaint, the Panel proceeds to consider the following facts submitted on behalf of the Complainant :
· Sony is one of the world’s premiere entertainment and electronics companies. Sony is a leading manufacturer of audio, video, communications and information technology products for the consumer and professional markets. Its music, motion pictures, television production, computer entertainment operations and online businesses make Sony one of the most comprehensive entertainment companies in the world.
· Sony is publicly held with shares listed on 16 stock exchanges worldwide including Tokyo, New York and London.
· While Sony’s primary business activities are in entertainment and consumer electronics, Sony is involved in a wide range of businesses including finance, life insurance, chemicals and many others, all in connection with the SONY mark.
· Sony conducts its businesses almost exclusively in connection with the name and trademark SONY, and the SONY trademark is registered in over 150 countries including Japan, the Republic of Korea and the United States of America.
· Sony has been doing business for over 40 years and currently has annual sales in excess of $63 billion dollars and employs over 189,000 people worldwide.
· Sony has invested billions of dollars in research and development which has resulted in Sony creating innovative SONY brand products which have become household items, such as the Trinitron® color television receiver, Walkman® personal stereo, Discman® portable CD player, Handycam® video camcorder, Playstation® video game console and more recently the Wega® flatscreen television receiver and Vaio® laptop computer. These products all share the same characteristics of state of the art performance, innovative design with flawless reliability.
· Sony spends millions of dollars a year advertising and promoting the SONY trademark throughout the world. The SONY mark has been disseminated through all types of advertising media such as network and cable television programming, radio broadcasting and print media as well as online advertising and promotions. Last year Sony spent in excess of one hundred million dollars advertising products and services with the SONY trademark worldwide.
· As a result of the commercial success of SONY products, the SONY mark has developed an enviable cache, image and reputation and is one of the most famous marks in the world.
· It has been reported that SONY has been rated as one of the top 10 most recognized and respected brand names in the world according to a survey conducted by Landor Associates, the San Francisco based corporate image consultant.
· In the Japanese, English and Korean languages, the word SONY is a coined or invented word and does not have any meaning other than as the trademark SONY.
· Sony has numerous registrations for the trademark SONY in Japan, where it is headquartered, in the United States of America, where the domain name of the Respondent is registered, and in the Republic of Korea, where the Respondent is located.
· Sony conducts business on the Internet. For example, Sony operates a Website at "http://www.sony.com" which has online games, information concerning music, movies, TV electronics, Playstation video games and Sony Corporation and its affiliates worldwide.
· Sony’s future plans are to continue to expand its Internet-related activities in terms of offering more services over the Internet as well as offering more SONY brand products for sale directly online and through its authorized Internet dealers.
· Sony owns over 400 trademark registrations in Japan for the mark SONY and composite marks thereof, over 60 registrations and applications in the United States of America and the Republic of Korea. These registrations cover an extensive range of goods and services. In accordance with Rules, paragraph 3(b)(viii), the Complaint is based upon these trademarks which are as follows:
Mark Registration No. Goods/Services
SONY 0618689 Class 11
Republic of KOREA
Mark Registration No. Goods/Services
SONY 5860 radio, television, tape recorder (sound recording and reproduction machine), and accessories and parts thereof, tape for tape recorder, reel for tape, recorded tape, microphone (including wireless microphone), announcing machine, loudspeaker (including stereophonic loudspeakers), automatic-transformer, eraser of recorded tape, microphones-mixer, amplifier, inverter, monoprinter, signal tracer, signal injector, transistor, batteries, electric vacuum - tubes, converters (rectifier units for operation of battery radio), pickups, electric - communicating apparatus, dictating machines and record players.
UNITED STATES OF AMERICA
Mark Registration No. Goods/Services
SONY 705902 radio, television, tape recorder (sound recording and reproduction machine), and accessories and parts thereof, tape for tape recorder, reel for tape, recorded tape, microphone (including wireless microphone), announcing machine, loudspeaker (including stereophonic loudspeakers), automatic-transformer, eraser of recorded tape, microphones-mixer, amplifier, inverter, monoprinter, signal tracer, signal injector, transistor, batteries, electric vacuum - tubes, converters (rectifier units for operation of battery radio), pickups, electric - communicating apparatus, dictating machine
SONY 770275 television cameras
SONY 777400 lighting apparatus
SONY 785967 analysis apparatus and equipment - namely, automatic analog correlators, automatic transient waveform recorders and data recorders, correlators and meters
SONY 801885 electrical sound recording apparatus, including electric record players, electrically driven record changers, and automatic phonograph record changers
SONY 1207979 computers, world processors, floppy discs and typewriters adapted for use with data recording apparatus
SONY 1258436 video tape recorders, video disc players, video cameras, and recorded video tapes in addition to unrecorded video tapes
SONY 1622127 radios, televisions, tape recorders (sound recording and reproduction machines), and accessories and parts thereof (See Annex 5 for remainder of description)
· On January 3, 2000, the Respondent, without authorization from the Complainant, registered the domain name "newsony.com" with Network Solutions, Inc. ("NSI").
· On June 8, 2000, Respondent sent an unsolicited letter to the Chief Executive Officer of Complainant Sony Corporation, Mr. Nobuyuki Idei, regarding the "newsony.com" domain name. In this letter, the Respondent informed the Complainant that it has an "Internet domain address [sic] related with your company name." The Respondent apologizes for registering this domain name that is composed of Complainant’s famous SONY trademark and claims that the reason it had registered the domain name was for an "internal business purpose." The Respondent describes itself as a company "involved in exporting Electronic item field [sic] as well as sports Internet marketing business field [sic]."
· In its letter, Respondent states that other companies have asked Respondent to sell them the "newsony.com" domain name. Respondent states that it is "not sure why they are wanting our domains related to your company."
· Respondent offered to sell the domain name to the Complainant for "proper value price."
· Printouts of Respondent’s website located at "newsony.com", dated June 30, 2000, are attached to the Complaint. The website at "newsony.com" consisted of a few pages displaying photos of virtually naked women, with the domain name "newsony.com" flashing in front of the naked women. Specifically, the SONY portion of the domain name is significantly larger than the rest of the domain name.
· On January 24, 2000, the Complainant’s trademark counsel reviewed the website located at the "newsony.com" domain name. The website in existence on this date was substantially different than the pages that are currently posted. Previously, the "newsony.com" website merely displayed a standard page-holder. Apparently, some time after January 24, 2000, the Respondent substituted the "under construction" notice at the "newsony.com" website with the current pornographic images.
· In response to the Respondent’s letter, the Complainant’s attorney sent the Respondent a letter dated July 10, 2000. This letter was addressed to Jin Seok Lee, the Administrative Contact listed in the WHOIS database for "newsony.com". Based on the WHOIS database report and from the letter received from the Respondent, it appears that this individual is an employee of SETEC.
· In this letter, the Complainant sets forth its trademark rights in SONY, as had been acknowledged by the Respondent, and Complainant declined to purchase the "newsony.com" domain name from Respondent. The Complainant stated that the Respondent’s explanation for registering the domain name is disingenuous and that the Respondent intentionally chose a domain name incorporating Sony’s famous trademark and posted a pornographic site at "newsony.com" to draw traffic to its Website and to sell these domain names to Sony for a profit. Therefore, the Complainant demanded that the Respondent cease use of the domain names "newsony.com" or any variation thereof and transfer it to the Complainant. In order to reach an amicable and swift resolution of this matter, the Complainant offered to reimburse the Respondent for any actual expenses it may incur in effecting the transfer.
· On July 19, 2000, the Complainant’s Attorney received a letter from the Respondent by facsimile, dated July 20, 2000. In this letter, the Respondent acknowledges receipt of the Complainant’s letter of July 10, 2000, and again informs the Complainant that it is the registrant of the "newsony.com" domain name. In this letter, the Respondent claims that it did not register this domain name in order to sell it to the Complainant, because the Respondent is an "exporting company of electronic products like a [sic] Car Accessories products: 6 Disc CD Auto Changer System, FRS (2-Way Radio), Car Security Alarm as well as RD (Radar Laser Detector)." The Respondent asserts that it registered the "newsony.com" domain name for its "Internet live broadcasting business and Internet shopping mall business regarded to [sic] our electronic products." Claiming that its "internal Internet business plan related the [sic] domain names was modified," the Respondent is therefore willing to sell the domain name at issue to "anyone will [sic] pay proper value price." Adding that it does not care whether the Complainant "start a suit against our domains or not," the Respondent said that its "further actions for the domains should be depended on your proper reimbursing degree as well as actual and positive mind."
· On July 31, 2000, the Complainant revisited the Respondent’s "newsony.com" website. While the Respondent had removed the previous pages depicting partially-nude women, it substituted two new ones, also displaying pornographic images.
The dispute arises out of the grievance of the Complainant that the name "SONY" for which the Complainant is known all over the world has been got registered as a domain name, viz., "newsony.com" by the Respondent for which it is not entitled.
5. Parties Contentions
The Complainant's contentions in brief are as under:
· It is the case of the Complainant that the disputed domain name "newsony.com" is virtually identical and confusingly similar to the domain name of the Complainant, viz., "SONY.COM". It has been contended by the Complainant that the addition of the prefix "new" is totally irrelevant and it will not have any impact on the overall impression of the dominant part of the name. The trademark SONY is so instantly recognised as one of the most famous trademarks in the world. Any reader is bound to get confused with the domain name of the Respondent and will certainly relate it to the Complainant. The disputed domain name is identical to numerous trademark registrations owned by the Complainant. The attempt on the part of the Respondent by registering "newsony.com" is an act of total appropriation of Complainant's invented SONY mark which is identical visually, phonetically and connotatively. The Respondent itself has admitted in the correspondence that it has an Internet domain address related with the Complainant company.
· The Complainant further contends that the Respondent has no right or legitimate interest in the domain name "newsony.com". There is no prior use of the disputed domain name. The Respondent is not at all known by the domain name and there is no legitimate non-commercial 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. Thus, the Respondent has no legitimate interest.
· The user of the website posted by the Respondent at "newsony.com" as on June 30, 2000, contained pornographic photos of barely-clothed women and as such it cannot be stated that this is a bonafide offering any goods or services by the Respondent.
· In view of numerous trademark registrations, reputation and goodwill enjoyed and associated with SONY mark of the complainant, it is impossible to conceive that the Respondent can have any legitimate use of the disputed domain name.
· There is no evidence that shows the Respondent, as either an individual, business or other organisation, has been or is commonly known by the domain name "newsony.com". The Complainant has not granted any licence or any permission to the Respondent in this regard. Nor is there any authorisation by the Complainant in favour of the Respondent.
· Though the Respondent has held the disputed domain name for over six months, it has not made any demonstrable efforts of its bonafide use. On the other hand, the user of the disputed domain name "newsony.com" by associating with a website containing pornographic photos certainly constitutes tarnishment of the Complainant's goodwill in its mark.
· The Complainant further contends that the registration of the disputed domain name by the Respondent is in bad faith. It is obvious that the Respondent had registered the disputed domain name with a view to sell it to the Complainant. In fact the Respondent did attempt to sell or transfer the domain name "newsony.com" for valuable consideration.
· The Respondent has caused substantial initial interest confusion between its "newsony.com" and the SONY mark of the Complainant. The Respondent by intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant's SONY mark, its registration is in bad faith. Even though users would soon discover the unlikelihood of a business relationship between the Complainant and the Respondent.
There was no response or any other communication from the Respondent.
6. Discussion and Findings
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(1) That the domain name registered by the Respondent is identical or confusingly similar to a service mark or trademark in which the Complainant has rights; and
(2) That the Respondent has no legitimate interests in respect of the domain name; and
(3) That the domain name has been registered and used in bad faith.
Identical and confusing similarity:
It is clear from the record that the impugned domain name is identical to the name of the Complainant i.e. SONY. There is no doubt that the name/mark SONY of the Complainant and the impugned domain name i.e. "newsony.com" by the Respondent is identical and confusingly similar. I have no hesitation in accepting the total possibility of confusion in the minds of the website users/consumers. The reliance of the Complainant on the following decisions of the WIPO Center is well placed and completely applicable to the facts and circumstances of the present case :
(a) Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409: In this case the Panel has held that the use of various other prefixes and suffixes with the mark SONY such as "SONYACADEMY.COM", "SONYCAMPUS.COM", "SONYCOLLEGE.COM", "WORLDSONY.COM", "SUNSONY.COM", "DREAMSONY.COM" etc. would not entitle the Respondent in that case to continue with the disputed domain names registrations and an order for their transfer in favour of the Complainant was made.
(b) Dellcomputer corporation vs. Alex and Birgita Ewaldsson, WIPO Case No. D2000-1087: In this case, the Complainant known for its manufacturing of computers challenged various domain name registrations of the Respondent containing the word Dell, such as, "deldrivers.com", "dellit.com" etc. The Panel, after consideration of the facts directed the transfer of the 122 domain names to the Complainant.
(c) Carrefour S.A. v. Multigestiones Puetonorte S.L., WIPO Case No. D2000-0837: In this case, the Complainant was carrying on the business of retail sales through its super market outlets in more than 30 countries with the trademark CARREFOUR and had trademark registrations in numerous jurisdictions. The Respondent had the following domain name registrations : "carrefour-group.com", "carrefourgroup.com" and "newcarrefourgroup.com". The Panel directed the transfer of these three domain names to the Complainant.
I am in agreement with the principles enunciated in the above-mentioned decisions which also clearly apply to the facts and circumstances of the present case. There is no doubt that the use of the domain name "newsony.com" is bound to cause confusion and anyone would relate it with the Complainant. It is, therefore, identical and confusingly similar with the trademark of the Complainant.
The Respondent has not shown any use except that pornographic material has been put on the website. There is no bonafide offering of goods or services. I also accept the contention of the Complainant that there is nothing on record to even indicate that the respondent has been or is commonly known by the disputed domain name. There is no licence or authorisation by the Complainant in favour of the Respondent. The decisions relied upon by the Complainant, viz., Motorola Inc. vs. New Gate Internet, Inc. WIPO Case No.D2000-0079 is fully applicable in the facts of the present case. Similarly, the decision of the Panel in the case of MatchNet PLC. vs. Mac Trading WIPO Case D2000-0205 - relied upon by the Complainant in support of its contention that user of sexually explicit and pornographic material under the disputed name constitutes prima facie tarnishment of the Complainant's goodwill, is also applicable in the present case. Thus, it is clear that the Respondent has no legitimate interest in the disputed domain name.
For establishing its contentions that the registration and use of the disputed domain name is in bad faith, the Complainant has raised various legal contentions. However, in view of uncontroverted facts of a clear attempt on the part of the Respondent to sell the disputed name to the Complainant, I have no hesitation in holding that the registration and use of the disputed domain name by the Respondent is in bad faith. In its very first communication dated June 8, 2000, the Respondent admitted that the disputed domain name is related with the Complainant. The Respondent apologised for registering the disputed domain name but, however, offered to transfer the disputed domain name to the Complainant with "proper value price". Similarly, in its letter dated July 7, 2000, the Respondent claimed that its registration is lawful but again indicated the desire to know the Complainant's "proper reimbursing degree as well as actual and positive mind". In view of these facts, I hold that the registration and use of the disputed domain name "newsony.com" by the Respondent is in bad faith.
The Panel decides that the Respondent's domain name "newsony.com" should be transferred to the Complainant.
Dated: April 1, 2001