Sony Kabushiki Kaisha aka Sony Corporation v. Sonydesign.Com
Case No. D2003-0616
1. The Parties
The Complainant is Sony Kabushiki Kaisha aka Sony Corporation, of Tokyo, Japan,
represented by Robin Blecker & Daley, United States of America.
The Respondent is Sonydesign.Com, of Niigata, Japan.
2. The Domain Name and Registrar
The disputed domain name <sonydesign.com> is registered with Gandi SARL.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")
on August 6, 2003. On August 6, 2003, the Center transmitted by email to Gandi
SARL a request for registrar verification in connection with the domain name
at issue. On August 8,2003, Gandi SARL transmitted by email to the Center its
verification response confirming that the Respondent is listed as the registrant
and providing the contact details for the administrative, billing, and technical
contact. In response to a notification by the Center that the Complaint was
administratively deficient, the Complainant filed an amendment to the Complaint
on August 8, 2003. The Center verified that the Complaint together with the
amendment to 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 August
12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response
was September 1, 2003. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on September 3,2003.
The Center appointed Zentaro Kitagawa as the sole panelist in this matter on
September 15, 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.
4. Factual Background
1. Complainant Sony is a leading manufacturer of audio, video, communications
and information technology products for the consumer and professional markets.
2. Sony conducts its businesses almost exclusively in connection with the name
and trademark SONY, and the SONY trademark is registered in over 193 countries
including Japan, Hong Kong and the United States.
3. Sony operates five Sony Design Centers located in Tokyo, Singapore, New
Jersey, San Francisco and London which are responsible for creating products
with innovative designs.
4. Sony spends millions of dollars a year for 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.
5. In the Japanese and English languages, the word SONY is a coined or invented
word and does not have any meaning other than as the trademark SONY.
6. Sony conducts business on the Internet using the SONY mark. For example,
Sony operates a web site at "www.sony.com" that has online games, information
concerning music, movies, electronics, such as televisions, stereos and Playstation®
video games.
7. Sony owns over 30 registrations in the United States and over 450 registrations
in Japan for the mark SONY. These registrations cover an extensive range of
goods and services. The Complaint is based upon these trademarks which are as
follows:
JAPAN
Mark Registration No. International Classification of Goods/Services
SONY
0512083
Class 7
SONY
0618689
Class 9
SONY DESIGN
2066566
Class 28
SONY DESIGN
2149883
Class 9
SONY DESIGN
2175020
Class 16
UNITED STATES
Mark Registration No. Goods/Services
SONY
770275
television cameras
SONY
785967
analysis apparatus
and equipment
SONY
777400
lighting apparatus
SONY
801885
electrical sound recording
apparatus
SONY
1258436
video tape recorders,
video disc players, video cameras, and recorded video tapes in addition
to unrecorded video tapes
8. The Respondent registered with the Registrar the <sonydesign.com>
domain name on January 25, 2000. Sometime thereafter, Respondent posted a Web
site at "www.sonydesign.com". On the homepage, the site is introduced as the
"Sonydesign labo. site" and visitors are invited to "Tell us
your dreams" by submitting ideas for PC, cameras, VTRs, phones and games
using an online form. The Web page further states: "Design your dreams!
Digital dreams come true. SONY Design labo."
9. The Complainant unsuccessfully attempted to contact the Respondent at the
address and telephone number provided in the domain name registration for <sonydesign.com>.
5. Parties’ Contentions
A. Complainant
1. The disputed domain name is identical or confusingly similar to Complainant’s
marks SONY and SONY DESIGN (Para. 4(a)(i) of the Policy)
In evaluating the similarity between the <sonydesign.com> domain name
and Complainant’s marks, the relevant portion of the Respondent’s domain name
is "sonydesign", since the presence of the top level domain (TLD) ".com"
suffix is irrelevant in the comparison of a domain name to a trademark. The
<sonydesign.com> domain name is a total misappropriation of the Complainant’s
famous and coined marks SONY and SONY DESIGN, and is confusingly similar to
Complainant’s SONY and SONY DESIGN marks.
2. The Respondent has no rights or legitimate interests in the disputed domain
name (Para. 4(a)(ii) of the Policy)
Firstly, there is no evidence of the Respondent’s use of the disputed domain
name in connection with a bona fide offering of goods and services. Based upon
the numerous trademark registrations for and the fame, goodwill and notoriety
associated with the SONY mark, it is impossible to conceive of a circumstance
in which the Respondent could legitimately use this domain name without creating
a false impression of association with Complainant.
Secondly, there is no evidence that shows the Respondent, as either an individual,
business, or other organization, has been or is commonly known by the <sonydesign.com>
domain name, or that it has acquired any trademark or service mark rights in
the domain name. The Complainant has not licensed, contracted or otherwise permitted
the Respondent in any way to use the SONY or SONY DESIGN marks or to apply for
any domain names incorporating these marks, nor has the Complainant acquiesced
in any way to such use or application of the marks by the Respondent. At no
time did the Respondent have authorization from Complainant to register the
disputed domain name.
Thirdly, there is also no evidence that shows the Respondent is making a legitimate
non-commercial or fair use of the <sonydesign.com> domain name without
intent for commercial gain. Based upon the foregoing, the Respondent clearly
has no rights or legitimate interests in respect of the disputed domain name.
3. The Respondent registered and is using the disputed domain name in bad faith
(Para. 4(a)(iii) of the Policy)
Firstly, the Complainant has not authorized the Respondent to register the
<sonydesign.com> domain name. Without authorization from the Complainant,
there is no conceivable bona fide use of this disputed domain name except to
sell it to the Complainant or to perpetrate a fraud. Therefore, the Respondent
has registered the disputed domain name primarily for the purpose of selling
it to the Complainant for valuable consideration in excess of out-of-pocket
costs directly related to the domain name.
Secondly, the Respondent has surreptitiously taken advantage of the goodwill
Sony has garnered with great effort and expense by operating an unauthorized
site at "www.sonydesign.com", designed to deceive the public into believing
that product ideas were being solicited by Sony. In addition to lost investment
opportunities, Sony will be forced to bear the burden of litigation expenses
arising from submissions to the Respondent’s site unwittingly made by the misled
public who demand compensation for inventions they believed were communicated
to Sony, thereby damaging the goodwill Sony has painstakingly developed over
several decades.
Thirdly, there is no conceivable bona fide use of the domain name <sonydesign.com>
by the Respondent. Indeed, without authorization from the Complainant, the Respondent
registered a domain name incorporating the Complainant’s famous SONY mark in
order to lure an unsuspecting public to its site, which purports to be sponsored
by the Complainant. The Respondent attempts to financially gain by deceiving
the public into believing that the Complainant is soliciting product ideas through
the site at "www.sonydesign.com" when instead the Respondent will be benefiting
from any product ideas submitted. Moreover, the Respondent’s provision of false
contact information in the domain name registration of <sonydesign.com>
is evidence of bad faith.
Based on the foregoing, and in accordance with Para. 4(b)(i) of the Policy,
the Complainant requests the Administrative Panel a decision that the <sonydesign.com>
domain name be transferred to the Complainant.
B. Respondent
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
The Policy Requirements
Paragraph 4(a) of the Policy provides that the Complainant must prove each
of the following:
(i) The domain name <sonydesign.com> is identical or confusingly similar
to a trademark, in which the Complainant has rights,
(ii) The Respondent has no right or legitimate interest in respect of the domain
name <sonydesign.com>; and
(iii) The domain name <sonydesign.com> has been registered and is being
used in bad faith.
Identical or Confusingly Similar
In comparing a domain name to a trademark, the top level domain (TLD) ".com"
is irrelevant. Therefore, it is clear that the <sonydesign.com> domain
name is a misappropriation of the Complainant’s marks SONY and SONYDESIGN and
is confusingly similar to the Complainant’s marks.
Rights or Legitimate Interests
It is shown that the Complainant has not licensed, contracted or otherwise
permitted the Respondent to use the SONY or SONY DESIGN marks. There is also
no evidence that shows the Respondent is making a legitimate non-commercial
or fair use of the <sonydesign.com> domain name without intent for commercial
gain. The Respondent is acting in a misleading fashion to divert consumers or
to tarnish the marks at issue so as to create an impression of association with
the Complainant. Therefore, the Respondent has no rights or legitimate interests
in respect of the disputed domain name.
Registered and Used in Bad Faith
The Respondent’s unauthorized registration and use of the disputed domain name
prevents the Complainant from reflecting the marks in a corresponding domain
name. Such registration and use misleads the public to its site, which purports
to be sponsored by the Complainant. The Respondent also attempts to commercially
gain by deceiving the public into believing that the Complainant is soliciting
product ideas through the site at "www.sonydesign.com". Furthermore, the Respondent
provides a false contact information in the site at "www.sonydesign.com". Therefore,
it is shown that the Respondent has registered and used the disputed domain
name in bad faith.
7. Decision
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the domain name, <sonydesign.com>
be transferred to the Complainant.
Zentaro Kitagawa
Sole Panelist
Dated: September 29, 2003
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