sony-ericson.org

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Ericsson Mobile Communications AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Aylin Dzhelilova

Case No. D2006-1568

1. The Parties

The Complainants are Sony Ericsson Mobile Communication AB, of Lund, Sweden, Telefonaktiebolaget LM Ericsson, of Stockholm, Sweden and Sony Corporation, of Tokyo, Japan represented by Göhmann Wrede Haas Kappus & Hartmann, Germany.

The Respondent is Aylin Dzhelilova of Bourgass, Bulgaria.

2. The Domain Name and Registrar

The disputed domain name <sony-ericson.org> (“the Disputed Domain Name”) is registered with Intercosmos Media Group d/b/a directNIC.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 8, 2006. On December 13, 2006, the Center transmitted by email to Intercosmos Media Group d/b/a directNIC.com a request for registrar verification in connection with the domain name at issue. On December 13, 2006, Intercosmos Media Group d/b/a directNIC.com 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. 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 29, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was January 18, 2007. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 22, 2007.

The Center appointed Jacques de Werra as the sole panelist in this matter on February 7, 2007. 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

Telefonaktiebolaget LM Ericsson is the owner of a word and design Community trademark ERICSSON that was registered with the Office for Harmonisation in the Internal Market on March 23, 1999, under the number 000107003 for inter alia apparatus and instruments for data communication. Telefonaktiebolaget LM Ericsson is the owner of a word Community trademark ERICSSON that was registered with the Office for Harmonisation in the Internal Market on February 15, 2001, under the number 001459130. The trademark ERICSSON is one of the most famous trademarks in the field of mobile communication and mobile telephones.

Sony Corporation is the owner of the word Community trademark SONY that was registered with the office of Harmonisation in the Internal Market under the number 000000472 for inter alia apparatus and instruments for data communication on May 5, 1998. The trademark SONY is one of the most famous trademarks in the field of mobile communication, multimedia and entertainment.

Sony Ericsson Mobile Communications AB is licensee of Telefonaktiebolaget LM Ericsson and of Sony Corporation and is entitled to use the combination of the trademarks SONY and ERICSSON respectively owned by these companies as a company name and as a trademark for its products. In addition Sony Ericsson Mobile Communications AB has the right to enforce the trademarks SONY and ERICSSON together as trademark SONY ERICSSON. Sony Ericsson Mobile Communications AB has, immediately after it was set up by Telefonaktiebolaget LM Ericsson and Sony Corporation in October 2001, become a major player in the field of mobile telephones. Furthermore Sony Ericsson Mobile Communications AB is the holder of the company name “Sony Ericsson” and operates the web site “www.sony-ericsson.org”. On this web site (which redirects to the website “www.sonyericsson.com”), Sony Ericsson Mobile Communications AB provides the Internet users with information about its products – especially mobile phones and other related topics.

5. Parties’ Contentions

A. Complainant

The Complainants allege that the the first part of the Disputed Domain Name is identical to the famous SONY trademark of Sony Corporation, that its second part is confusingly similar to the famous ERICSSON trademark of Telefonaktiebolaget LM Ericsson and that the Disputed Domain Name as such is confusingly similar to the trademark SONY ERICSSON which is used by Sony Ericsson Mobile Communications AB. The Complainants thus allege that it could be assumed that the public may get the impression that the Disputed Domain Name is somehow connected to the Complainants’ trademarks.

The Complainants further allege that the Respondent has no rights or legitimate interests in respect of the domain name because:

- The Respondent has never been authorised by the Complainants to use their trademarks in any way;

- The Respondent cannot demonstrate under paragraph 4(c)(i) of the Policy that she has made any use of, or demonstrable preparation to use, the domain name or name corresponding to the domain name in connection with a bona fide offering of goods or services;

- The Respondent cannot establish rights in the Disputed Domain Name under paragraph 4(c)(ii) of the Policy because the Respondent (as an individual, business, or other organisation) has never been commonly known by the Disputed Domain Name and has not acquired trademark or service mark rights in the Disputed Domain Name and the Respondent has never been called by, affiliated with or commonly known by the Disputed Domain Name;

- The Respondent does not make any legitimate non-commercial or fair use of the Disputed Domain Name, instead she is holding it with the only purpose to sell it to Sony Ericsson Mobile Communications AB. This means that the only reason why the Respondent is holding the Disputed Domain Name is to gain money with it to the detriment of Sony Ericsson Mobile Communications AB who is the right holder in the Disputed Domain Name, which cannot be considered as a legitimate non-commercial or fair use of the Disputed Domain Name.

The Complainants finally allege that the Disputed Domain Name was registered and is being used in bad faith given that its use has to be considered as bad faith because the deliberate use of somebody’s trademark cannot be regarded as fair use. The potential for damage lies in the fact that the Complainants’ reputation and goodwill is out of their control and rests with the Respondent. In these circumstances, the Complainants allege that it cannot be considered as fair for the Complainants to have to rely upon the goodwill of the Respondent, which might vary from day to day. The Complainants further allege that they have tried to contact the Respondent several times and have sent her letters in which she has been informed about the trademark infringement and has been asked to transfer the Disputed Domain Name and that the Respondent has never reacted to those letters and has not been co-operative.

B. Respondent

The Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. SeeMilwaukee Electric Tool Corporation v. Bay Verte Machinery, Inc. d/b/a The Power Tool Store, WIPO Case No. D2002-0774. Accordingly, the jurisdiction of this Panel is limited to providing a remedy in cases of “the abusive registration of domain names”. See Weber-Stephen Products Co. v. Armitage Hardware, WIPO Case No. D2000-0187.

Paragraph 4(a) of the Policy requires that the Complainant prove each of the following three elements to obtain a decision that a domain name should be either cancelled or transferred:

(i) The domain name registered by the Respondent 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 with respect to the domain name; and

(iii) The domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Panel is satisfied that the Complainants have rights to the trademarks SONY, ERICSSON and SONY ERICSSON. Telefonaktiebolaget LM Ericsson and Sony Corporation are the respective owners and thus have rights to the registered trademarks SONY and ERICSSON respectively and Sony Ericsson Mobile Communications AB has been authorized to use the combination of these trademarks as a company name and as a combined trademark (SONY ERICSSON) and to enforce it.

A comparison between the Disputed Domain Name and the trademarks of the Complainants shows that the Disputed Domain Name contains a misspelled variation of the trademark ERICSSON owned by Telefonaktiebolaget LM Ericsson (i.e. ERICSON instead of ERICSSON). On this basis, the Disputed Domain Name constitutes a (classical) case of typosquatting. Typosquatting has been universally condemned by panel decisions. See, e.g., Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095. Consequently, the misspelling of the trademark ERICSSON of Telefonaktiebolaget LM Ericsson in the Disputed Domain Name does not prevent the finding of confusing similarity between the Disputed Domain Name and the trademarks owned by the Complainants.

The comparison between the Disputed Domain Name and the trademarks of the Complainants further shows that the Disputed Domain Name contains a hyphen separating the respective trademarks of Telefonaktiebolaget LM Ericsson and of Sony Corporation. It should be reminded in this respect that other Panels, including a panel in a case regarding the domain name <sony-ericsson.org>, have consistently held that the use of hyphens does not prevent the finding of identity or confusingly similarity. See Sony Ericsson Mobile Communications International AB, Sony Corporation, Telefonaktiebolaget LM Ericsson v. Dariusz Pietras, WIPO Case No. D2005-0553 and Dr. Sally Jensen v. Dissertationdoctors.com and Dissertation-doctors.com,WIPO Case No. D2003-0348.

As a result, based on the rights of the Complainants on the trademarks SONY, ERICSSON and SONY ERICSSON and on the confusing similarity between these trademarks and the Disputed Domain Name, the Panel finds that the conditions of paragraph 4(a)(i) of the Policy are met.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, the Respondent may establish rights to or legitimate interests in the Disputed Domain Name by demonstrating any of the following:

(i) before any notice to it of the dispute, the respondent’s 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) the respondent has been commonly known by the domain name, even if it has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial 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.

Although a complainant bears the ultimate burden of establishing all three elements of paragraph 4(a) of the Policy, it is generally assumed that paragraph 4(c) of the Policy shifts the burden to the respondent to come forward with evidence of a right or legitimate interest in the domain name, once the complainant has made a prima facie showing. See Document Technologies, Inc. v. International Electronic Communications Inc., WIPO Case No. D2000-0270.

In this case, the Complainants have contended that the Respondent has never been authorised by the Complainants to use their trademarks in any way and that the Respondent has not made any use of, or demonstrable preparation to use, the Disputed Domain Name or a name corresponding to the Disputed Domain Name in connection with a bona fide offering of goods or services.

The Respondent has not filed any response in the course of the proceedings so the Respondent has not brought any evidence for supporting its potential rights or legitimate interests in the Disputed Domain Name.

In spite of this, a cursory visit on the Disputed Domain Name shows that it is used for the purpose of listing sponsored advertising links pointing to third party websites on which mobile telecommunications products are offered (and specifically products of competitors of the Complainants), whereby some of these links expressly refer to the trademarks SONY and ERICSSON owned by the Complainants. The Disputed Domain Name is consequently used for the purpose of obtaining a financial remuneration (“revenue-per-click”) in the context of so-called domain parking programs. See Sanofi-aventis v. Edith Van Der Linden, WIPO Case No. D2006-0372.

In this case, the registration of the Disputed Domain Name for no reason other than to connect it to a parking page for “revenue-per-click” does not of itself give rise to a legitimate interest in respect of the domain name at issue. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 and Prestige Brands Holding Inc., and Prestige Brands International, Inc. v. The domain is not for sale / Motohisa Ohno, WIPO Case No. D2006-0608.

As a result, the Panel finds that the Respondent has no right or legitimate interest in the Disputed Domain Name as required by paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy states that any of the following circumstances, in particular but without limitation, shall be considered evidence of registration and use of a domain name in bad faith:

(i) circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant (the owner of the trademark or service mark) or to a competitor of that complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name;

(ii) circumstances indicating that the respondent registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;

(iii) circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website 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 the respondent’s website or location or of a product or service on its website or location.

The examples of bad faith registration and use set forth in paragraph 4(b) of the Policy are not meant to be exhaustive of all circumstances from which such bad faith may be found. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The overriding objective of the Policy is to curb the abusive registration of domain names in circumstances where the registrant is seeking to profit from and exploit the trademark of another. See Match.com, LP v. Bill Zag and NWLAWS.ORG, WIPO Case No. D2004-0230.

In this case, the Complainants claim that the Respondent would be holding the Disputed Domain Name for the only purpose to sell it to Sony Ericsson Mobile Communications AB. However, the Complainants have not brought any evidence showing that the Respondent would have offered the Disputed Domain Name for sale to any of the Complainants. Consequently, no circumstances indicating that the Respondent registered the Disputed Domain Name “primarily” for the purpose of selling it to the Complainants or one of their competitors have been established. See Media General Communications, Inc. v. Rarenames, WebReg, WIPO Case No. D2006-0964.

The Complainants further claim that they have tried to contact the Respondent several times, that they have sent her letters in which the Respondent has been informed about the trademark infringement and has been asked to transfer the Disputed Domain Name and that the Respondent has never reacted to those letters and has not been co-operative. The Complainants consider that this would constitute a showing of the bad faith of the Respondent. The Complainants however have not filed any of these previous letters in these proceedings so that the Panel cannot assess the potential evidentiary value of these letters.

In any event, these elements do not prevent a finding of a bad faith registration and use of the Disputed Domain Name by the Respondent for the following reasons:

First of all, the Respondent’s bad faith already results from the fact that the Respondent registered the Disputed Domain Name incorporating the Complainants’ famous trademarks, despite having no connection to the Complainants. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 citing Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co.,WIPO Case No. D2000-0163 (holding that Respondent’s domain name “is so obviously connected with such a well-known product that its very use by someone with no connection with the product suggests opportunistic bad faith”).

In this respect, the famousness of the SONY and ERICSSON trademarks cannot be disputed. Such famousness is confirmed by the numerous decisions which have been rendered in favour of the Complainants in previous cybersquatting cases (some of which have been referred to by the Complainants in these proceedings). See Sony Ericsson Mobile Communications AB v. Chai, Sen, WIPO Case No. DCC2006-0003 (<sony-ericsson.cc>); Sony Ericsson Mobile Communications AB v. PD Hosting Inc, WIPO Case No. DPH2006-0001 (<sonyericson.com.ph>); Sony Ericsson Mobile Communications AB v. Viacerta AB,WIPO Case No. DNU2006-0002 (<sonyericson.nu>); Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson Sony corporation v. Mohamed Ali Aal Ali, WIPO Case No. DAE2006-0002 (<sonyericsson.ae>); Sony ERICSSON Mobile Communications International AB, Sony Corporation, Telefonaktiebolaget LM Ericsson v. Dariusz Pietras, WIPO Case No. D2005-0553 (<sony-ericsson.org>); Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128 (<sonyerricsson.com>, <sonyerisson.com>, <sonyeriksson.com>, <sonyericson.com>); Telefonaktiebolaget L Ericsson Sony Corporation v. Byungkeon Park, WIPO Case No. D2001-1132 (<ericsson-sony.com>, <ericssonsony.com>, <sony-ericsson.com>, <sony-ericsson.net>, <sonyericsson.com>, <sonyericsson.net>).

Secondly, the Disputed Domain Name is used by the Respondent for the purpose of attracting traffic to sites offering products which are competing with those of the Complainants in the mobile telecommunication business for commercial gain (i.e. for “revenue-per-clicks”). Such use of the Disputed Domain Name can only be explained by the intent of the Respondent to attract Internet traffic by capitalizing on the Complainants’ SONY, ERICSSON and SONY ERICSSON famous trademarks. Such use of the Disputed Domain Name constitutes sufficient evidence of the bad faith of the Respondent under Paragraph 4(b)(iv) of the Policy. See Rhino Entertainment Company v. DomainSource.com, Inc., WIPO Case No. D2006-0968 and Imperial Chemical Industries PLC v. RareNames, WIPO Case No. D2006-0124.

For these reasons, the Panel considers that the Complainants have established that the Disputed Domain Name was registered and is being used in bad faith by the Respondent as required by paragraph 4(a)(iii) of the Policy.

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 <sony-ericson.org> be transferred to Sony Ericsson Mobile Communications AB.

Jacques de Werra
Sole Panelist

Dated: February 21, 2007