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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc.
Case No. D2002-1128
1. The Parties
The Complainants are (1) Sony Ericsson Mobile Communications International AB, c/o Sony Ericsson Mobile Communications (USA) Inc., c/o Eileen C. Pruette, Vice President Legal (US), and Global IPR, Triangle Park, NC, USA ("the First Complainant"); (2) Telefonaktiebolaget LM Ericsson, c/o Carolina Lion, Stockholm, Sweden ("the Second Complainant"); and (3) Sony Corporation, c/o Takashi Kotoyori, Tokyo, Japan ("the Third Complainant"), in all cases represented by Dr. Maximilian Schunke, of Göhmann Wrede Haas Kappus & Hartmann, Hanover, Germany.
The Respondent is Party Night Inc., c/o Mr. Peter Carrington, Amsterdam, Netherlands.
2. The Domain Names and Registrar
The disputed domain names (collectively, "the Domain Names") are:
The Domain Names are, in each case, registered with Key-Systems GmbH d/b/a domaindiscount24.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center ("the Center") on December 10, 2002. On that date, the Center transmitted by email to Key-Systems GmbH d/b/a domaindiscount24.com a request for registrar verification in connection with the Domain Names. On December 11, 2002, Key-Systems GmbH d/b/a domaindiscount24.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant of each of the Domain Names and providing in each case the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy ("the Policy"), 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 16, 2002. In accordance with the Rules, paragraph 5(a), the due date for the Response was January 5, 2003. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 10, 2003.
The Center appointed Steven A. Maier as the sole panelist in this matter on January 16, 2003. 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.
Having reviewed the communications in the light of the Respondent’s non-response, the Panel is satisfied that the Center has discharged its responsibility under paragraph 2 of the Rules to notify the Respondent of this Complaint. Under paragraph 14(a) of the Rules, where a party fails to comply with the time limits provided by the Rules, the Panel shall proceed to a decision on the Complaint in the absence of exceptional circumstances. The Panel is aware of no such circumstances in this case.
4. Factual Background
The Complainants make the following submissions of fact in this matter which, in the absence of a Response, are uncontested:
(1) The Second Complainant is the sole and exclusive holder of the trade mark "Ericsson", registered with the Office for Harmonization in the Internal Market on March 23, 1999, under number 000107003 for, inter alia, apparatus and instruments for data communication. Additionally, the Second Complainant is the sole and exclusive holder of the trade mark "Ericsson" registered with the German patent authorities on October 8, 1982, under number 1039430, which trade mark was extended for a further 10 years on January 17, 2001. "Ericsson" is one of the most famous trade marks in the field of mobile communication and mobile telephones.
(2) The Third Complainant is the sole and exclusive holder of the trade mark "Sony", registered with the Office for Harmonization in the Internal Market on May 5, 1998, under number 000000472 for, inter alia, apparatus and instruments for data communication. "Sony" is also one of the most famous trade marks in the field of mobile communication and mobile telephones.
(3) The First Complainant is a joint venture company operated and equally owned by the Second and Third Complainants and is licensed to use the combination of their trade marks referred to above as a company name and trade mark for its products. It is entitled to enforce the trade marks "Sony" and "Ericsson" together. Since its creation in October 2001, it has become a major player in the field of mobile telephones and the name "Sony Ericsson" has become globally recognised in the telecommunications industry and among consumers.
(4) The First Complainant is the owner and operator of the website "www.sonyericsson.com" which provides internet users with information about its products, especially mobile phones, and other topics.
(5) The Complainants have tried unsuccessfully to contact the Respondent at the address provided in connection with the domain name registrations, namely, Jan Lykenstraat 58, 1071 CS Amsterdam, Netherlands. That address belongs to a Hotel Bilderberg in Amsterdam where neither the Respondent, nor its named representative, Mr. Peter Carrington, is known. The hotel has, however, received communications from various parties for the Respondent and Mr. Carrington over the past year. The names of the Respondent and Mr. Carrington appear to be pseudonyms.
(6) The Respondent has similarly been unable to be served, and has failed to respond, in three previous administrative proceedings: Cimcities LLC v. Party Night Inc, WIPO Case No D2002-0613; The Nieman Marcus Group, Inc v. Party Night Inc, NAF Case No FA0205000114350; and MBNA America Bank, NA v. Peter Carrington a/k/a Party Night Inc, NAF Case No FA0207000115040.
The registration agreement under which the Domain Names are registered incorporates the Policy and the Panel has jurisdiction to determine this dispute.
5. Parties’ Contentions
(1) Identical or Confusingly Similar
Domain Name <sonyeriksson.com>
The Complainants contend that the first part of this Domain Name is identical to the Third Complainant’s trade mark, that the second part is confusingly similar to the Second Complainant’s and that the combination is confusingly similar to the trade marks as used by the First Complainant. The only difference is the substitution of the letter "k" for "c". The letters are phonetically the same and an internet user may easily mistype the name "sonyericsson" with a "k" or wrongly believe that it is spelt with a "k". The Domain Name is therefore confusingly similar to the Complainants’ trade marks.
Domain Name <sonyerisson.com>
The Complainants make similar contentions as in the case of <sonyeriksson.com>, save that in this case the letter "c" has been left out completely rather than replaced with a "k". The Complainants contend that it is a common typographical error to miss out a letter and that the Respondent is engaging in "typosquatting" by intentionally registering a name that is a misspelling of a distinctive name or mark.
Domain Name <sonyericson.com>
The Complainants make similar contentions, save that a letter "s" has been left out.
Domain Name <sonyerricsson.com
The Complainants make similar contentions, save that a letter "r" has been added.
(2) No Rights or Legitimate Interest
The Complainants makes the following contentions in respect of all of the Domain Names:
(a) The Respondent has never been authorised to use the Complainants’ trade marks.
(b) The Respondent is unable to demonstrate that it has made any use of, or demonstrable preparation to use, the Domain Names or names corresponding to them in connection with a bona fide offering of goods or services. In fact, the Respondent is using the Domain Names deceptively to misdirect visitors to a website at URL "http://www.amateurvideos.nl/hanky-panky-party.html". This is a pornographic website and incorporates pop-up windows leading to other sites, offering pornography, "medication" for sexuality, weight loss and hair loss and "penis enlargement pills".
(c) The Respondent (whether as an individual, a business or any other organisation) has never been commonly known by the Domain Names and has not acquired trade mark or service mark rights in them. Nor has it ever been called by or affiliated with the Domain Names.
(d) That the Respondent is not making any legitimate non-commercial or fair use of the Domain Names without intent for commercial gain misleadingly to divert consumers or tarnish the trade marks at issue. The Respondent’s use of the Domain Names diverts visitors who have misspelled the Complainants’ names to pornographic sites or those containing other dubious material. It is to be inferred that the Respondent receives payment from the operators of those sites. The Respondent is taking advantage of internet users’ known disposition to misspell domain names to divert traffic from the Complainants’ website "www.sonyericsson.com" for commercial gain. The nature of the websites to which users are diverted also harms the reputation of the Complainants’ marks.
(3) Registration and Use in Bad Faith
The Complainants rely on the contentions set out above as indicative of the Respondent’s bad faith, in particular, the creation of a likelihood of confusion, the systematic registration of names that are close misspellings of the Complainants’ names and the use of the Domain Names to attract internet users to websites of dubious content. The Complainants rely on paragraph 4(b)(iv) of the Policy (see below).
The Complainants also contend that, as demonstrated by the administrative decisions referred to above, the Respondent has been engaged in similar practices on previous occasions.
The Complainants seek transfers of the disputed Domain Names to the First Complainant.
The Respondent has failed to file a Response.
6. Discussion and Findings
In order to succeed in its Complaint, the Complainant is required to show that all three of the elements set out under paragraph 4(a) of the Policy are present. Those elements are:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) that the domain name has been registered and is being used in bad faith.
Identical or Confusingly Similar
In this case, the Complainants have established the existence of the trade marks "Sony" and "Ericsson" and the Panel is satisfied that they are entitled to use and to protect the trade marks in conjunction with one another as "Sony Ericsson". Further, the First Complainant is a joint venture company with a global reputation in the mobile communications marketplace and operates a website at "www.sonyericsson.com". The Panel has no hesitation in finding that the Domain Names, <sonyeriksson.com>, <sonyerisson.com>, <sonyericson.com> and <sonyerricsson.com>, are confusingly similar to the Complainants’ marks, being identical but for the substitution, omission or addition of one character.
No Rights or Legitimate Interest
Under paragraph 4(c) of the Policy, there are three sets of circumstances in particular (but without limitation) to which the Respondent may point to demonstrate a legitimate interest in the domain name in dispute. These are:
(i) before any notice to the Respondent of the dispute, its use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) that the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or
(iii) that the Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.
The Panel does not consider that any of the above, or any other circumstances which would tend to support the Respondent’s legitimate interest in the Domain Names, are present in this case. The Respondent has tendered no evidence in the matter and the Panel agrees with the Complainants’ contentions that these are clear cases of ‘typosquatting’. It is to be inferred from all the circumstances that the Respondent registered the Domain Names with the primary intention of diverting internet users who intend to access the First Complainant’s website but make a predictable typing mistake in so doing. This is unfairly to take advantage of the Complainants’ goodwill. While the Respondent is using the Domain Names to offer goods and services via the website referred to above, such offering is not bona fide in the circumstances. There is no evidence that the Respondent has been commonly known by the Domain Names, and the circumstances set out in subparagraph (iii) above plainly do not apply; indeed the reverse of those circumstances is true.
Registration and Use in Bad Faith
The Complainants rely on paragraph 4(b)(iv) of the Policy which provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
"by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
The Panel finds that the Respondent’s registration and use of the Domain Names falls within this provision. The present case involves the deliberate diversion of internet users who intend to access the Complainants’ website and the taking of unfair advantage of the Complainants’ goodwill. The confusion caused by the Respondent is "initial interest confusion" and the Panel does not believe that internet users who have visited the Respondent’s site would be likely to be confused into believing that it was the Complainants’ site. In the view of the Panel, however, and in line with other decided "typosquatting" cases under the Policy, the deliberate creation of initial interest confusion and the consequent diversion of internet traffic is sufficient to establish bad faith on the Respondent’s part.
The Complainants’ assertions that the Respondent provided false contact details and that it has been engaged in other similar cases, are unchallenged by the Respondent. The Panel finds that these matters bolster the allegation of bad faith, as does the Respondent’s failure to respond to the Complaint, which is a matter from which the Panel is entitled to draw inferences under paragraph 14(b) of the Rules.
For the foregoing reasons, in accordance with Paragraphs 4(a) of the Policy and 15 of the Rules, the Panel orders that the disputed Domain Names <sonyeriksson.com>, <sonyerisson.com>, <sonyericson.com> and <sonyerricsson.com>, be transferred to the First Complainant.
Steven A. Maier
Date: January 27, 2003