Sony Ericsson Mobile Communications AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Umbeke Membe, Deleting domain
Case No. D2008-0279
1. The Parties
The Complainants are (1) Sony Ericsson Mobile Communications AB, Lund, Sweden; (2) Telefonaktiebolaget LM Ericsson, Stockholm, Sweden; and (3) Sony Corporation, Tokyo, Japan, represented by Göhmann Rechtsanwalte Abogados Advokat Steuerberater Partnerschaft, Germany.
The Respondent is Umbeke Membe, Deleting domain, Harare, Zimbabwe.
2. The Domain Name and Registrar
The disputed domain name <sontericsson.com> is registered with eNom.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 26, 2008. On February 26, 2008, the Center transmitted by email to eNom a request for registrar verification in connection with the domain name at issue. On the same day, eNom transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on March 4, 2008. 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 March 5, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was March 25, 2008. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent’s default on March 26, 2008.
The Center appointed David Perkins as the sole panelist in this matter on April 4, 2008. 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
4.A The Complainants
4.A.1 There are three Complainants. They are (1) Sony Ericsson Mobile Communications AB [Sony Ericsson]; (2) Telefonaktiebolaget L.M. Ericsson [Ericsson]; and (3) Sony Corporation [Sony].
4.A.2 Ericsson is the proprietor of the ERICSSON trademark and Sony is the proprietor of the SONY trademarks.
4.A.3 In October 2001, Ericsson and Sony set up as a joint venture, Sony Ericsson of which they are equal owners. Ericsson and Sony have licensed Sony Ericsson to use the combination of the names and marks ERICSSON and SONY, both as a trademark, SONY ERICSSON, and as its company name.
The ERICSSON Trademark
4.A.4 The trademark relied upon by Ericsson for the purposes of this Complaint is Community Trade Mark [CTM] No. 000107003 for the word mark ERICSSON which was registered on February 15, 2001 in Classes 11, 16, 35 to 38 and 41 to 42.
The SONY Trademark
4.A.5 The trademark relied upon by Sony for the purposes of this Complaint is CTM No. 000000472 for the word mark SONY which was registered on May 5, 1998 in Class 4.
The SONY ERICSSON Trademark
4.A.6 The trademark relied upon by Sony Ericsson for the purposes of this Complaint is SONY ERICSSON, which the Complainants claim has become a well-known mark internationally in the field of mobile telephones and in the telecoms industry.
The <sonyerricsson.com> Domain Name
4.A.7 Sony Ericsson have been the proprietor of the <sonyericsson.com> domain name since it was registered on May 19, 2001. That domain name resolves to the website “www.sonyericsson.com” which provides Internet uses with information about its mobile phones, its other products and related topics.
4.B The Respondent
4.B.1 In the absence of a Response, nothing is known about the Respondent, except that he became the owner of the domain name in issue by transfer on February 26, 2008. It was previously registered to Yu Xiaojie of Shanghai, China and was created on May 17, 2007.
5. Parties’ Contentions
5.A Complainants
5.A.1 The Complainants case is that the domain name is confusingly similar to the SONY ERICSSON trademark, being identical but for one letter. The “y” in SONY is substituted by a “t”. The Complainants cite the decision in Volkswagen AG v. David’s VolkswagenPage, WIPO Case No. D2004-0498 as an example of what has been categorised as “confusingly similar”. That case concerned the domain name <volkswagen.org> which was identical with the Complainant’s VOLKSWAGEN trademark. The Panelist stated:
“The domain name <volkswagen.org> is identical or confusingly similar to Complainant’s trademark VOLKSWAGEN. The domain name incorporates the name “Volkswagen” with the suffix “.org”. It is claimed that the public may think that the domain name is somehow connected to the VOLKSWAGEN trademark. The suffix “.org” is not sufficient to exclude the confusing similarity.”
5.A.2 The Complainants also rely upon five decisions under the Policy involving the SONY ERICSSON trademark. First, Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc., WIPO Case No. D2002-1128. There the domain names in issue were <sonyeriksson.com>; <sonyerisson.com>; <sonyericson,.com> and <sonyerricsson.com> each misspelling the SONY ERICSSON trademark by one letter. Those domain names were held to be confusingly similar, the Panel finding that the Complainants had trademark rights in SONY and ERICSSON and that together they were entitled to use and protect the trademark SONY ERICSSON.
5.A.3 The second is Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Darusz Pietras,
WIPO Case No. D2005-0553. There the domain name in issue was <sony-ericsson.org> which was identical to the SONY ERICSSON trademark but for the addition of a hyphen between the SONY and ERICSSON components. The Panel found that the Complainants had trademark rights in SONY, ERICSSON and SONY ERICSSON and held confusing similarity.
5.A.4 The third is Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Aylin Dzhelilova,WIPO Case No. D2006-1568. There the domain name in issue was <sony-ericson.org> which was again identical to the SONY ERICSSON trademark but for the addition of a hyphen and a misspelling of ERICSSON by omitting one letter “s”. The Panel held that the Complainants had rights in the SONY, ERICSSON and SONY ERICSSON trademarks. The Panel then went on to find confusing similarity, characterising it as a classical case of typosquatting and citing
WIPO Case No. D2005-0553 referred to in paragraph 5.A.3 above.
5.A.5 The fourth is Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Domain Buyer,WIPO Case No. D2007-1802. There the domain name in issue was <sonyerikson.com>, again a misspelling of ERICSSON substituting “k” in the domain name for “c in the trademark. The Panel held that the Complainants had rights in the trademarks SONY, ERICSSON sand SONY ERICSSON and, despite the minor misspelling of ERICSSON, considered the ERICSSON component of the trademark phonetically identical to the “erikson” component of the domain name and, consequently, found confusing similarity.
5.A.6 The fifth is Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson c/o Sony Ericsson Mobile Communications AB, Sony corporation, c/o Sony Ericsson Mobile Communications AB v. Mohamed Ali Aal Ali,
WIPO Case No. DAE2006-0002. The case involved the domain name <sonyericsson.ac> which was held to be identical to the SONY ERICSSON trademark in which the Panel stated Sony Ericsson “clearly owns the common law rights”. Accordingly, the Panel considered it unnecessary to consider whether the domain name was confusingly similar to the individual trademarks SONY and ERICSSON.
Rights or Legitimate Interests
5.A.7 The Complainants advance four reasons why they say the Respondent has no rights or legitimate interests in respect of the domain name in issue. First, the Complainants have not licensed or otherwise authorised the Respondent to use their trademarks. Second, they say that the Respondent cannot demonstrate under paragraph 4(c)(i) of the Policy that before he received notice of this dispute, he had made any use or demonstrable preparations to use the domain in issue in connection with a bona fide offering of goods or services.
5.A.8 Nor, the Complainants say, can the Respondent demonstrate under paragraph 4(c)(ii) of the Policy that he has been commonly known by the domain name in issue.
5.A.9 As to paragraph 4(c)(iii) of the Policy, the Complainants say that the Respondent has not made any legitimate non-commercial or fair use of that domain name.
Registered and Used in Bad Faith
5.A.10 The Complainants say that on several occasions they have attempted to contact the Respondent and that he has been sent a “cease and desist” letter requesting transfer of the domain name. Apparently, there has been no reaction by the Respondent.
5.A.11 The Complainants refer to the decision in Geert Hofstede v. Sigma Two,WIPO Case No. D2003-0646 which involved the domain name <geert-hofstede.com> the Complainant’s personal name. The Complainant, a distinguished international academic scholar, had himself registered the domain names <geerthostede.com> and <geerthostede.nl> and had a pending application for a trademark in the Benelux. The Panel found in favour of the Complainant, holding that registration and use in bad faith followed from the Panel’s finding against the Respondent under paragraph 4(a)(ii) of the Policy. Under that requirement of the Policy the Panel held that the deliberate taking of somebody’s trademark cannot be regarded as fair use. The Panel said:
“The potential for damage lies in the fact that the Complainant’s reputation and goodwill is not in his hands and rests with the Respondent. Why should it be fair for a Complainant in those circumstances to have to rely upon the goodwill of the Respondent, which might vary from day to day.”
5.A.12 In
WIPO Case No. D2003-0646 the Respondent used the domain name in issue to resolve to his “International Business Center” website, which he said was, essentially, a “fan website”. The Complainants rely on the same “potential for damage” in this case as that identified by the Panelist in the extract from his decision in the Geert Hofstede case quoted in the preceding paragraph. The Complainants conclude that the domain name must be considered as having been registered and used in bad faith because the deliberate use of somebody’s trademark cannot be regarded as fair use.
5.B. The Respondent
As noted, no Response has been made.
6. Discussion and Findings
6.1 The Policy paragraph 4(a) provides that the Complainant must prove each of the following in order to succeed in an administrative proceeding:
(i) that the Respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(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.
6.2 The Policy paragraph 4(c) sets out circumstances which, in particular but without limitation, if found by the Panel to be proved shall demonstrate the Respondent’s rights or legitimate interest in the domain name in issue.
6.3 The Policy paragraph 4(b) sets out circumstances which, again in particular but without limitation, if found the Panel to be present shall be evidence of the registration and use of a domain name in bad faith.
6.4 As stated, the circumstances set out in paragraph 4(b) and 4(c) of the Policy are not exclusionary. They are without limitation. That is, the Policy expressly recognizes that other circumstances can be evidence relevant the requirements of paragraphs 4(a)(ii) and (iii) of the Policy.
Identical or Confusingly Similar
6.5 The Complainants, Ericsson and Sony, have provided evidence of ownership of the registered trademarks, respectively ERICSSON and SONY. The First Complainant, Sony Ericsson merely asserts that the name and mark SONY ERICSSON “has within a short period of time become globally recognised in the field of mobile telephones and is now well-known in the telecommunications industry and amongst the respective consumers”. This may well be so but the requirements for establishing common law and/or well-known trademark status which have been developed in the case law under the Policy require the Complainant to produce evidence to support such assertions of trademark rights. This is typically accomplished by reference to revenue, expenditure on marketing and advertising the trademark and examples of such promotion of the mark. In future Complaints these Complainants should address these evidentiary requirements adequately: Rule, paragraph 3(ix)(1). However, simply because the Panel – along with many other members of the public – is aware of the SONY ERICSSON trademark, the Panel is prepared to accept that the First Complainant has established rights to that trademark.
6.6 This is a case of typosquatting, the well known SONY ERICSSON trademark being reproduced identically in the domain name in issue but for substituting for the letter “y” in the SONY component the letter “t” in the domain name. Such practice has consistently and, in this Panel’s view, correctly been characterized as giving rise to confusing similarity. Accordingly, the Complainants satisfy the requirements of paragraphs (4)(a)(1) of the Policy.
Rights or Legitimate Interests
6.7 The Complaint fails to state when the domain in issue was registered or whether it resolves to a website and, if it does, whether that website is active or dormant. It is not the task of the Panel itself to generate evidence which should be presented in the Complaint: Rules, paragraph 3(ix), the final two sentences. However, from the Panel’s own research it appears that the domain name was registered on May 17, 2007 and transferred to the Respondent on February 26, 2008. It also appears that the domain name in issue does resolve to a website which advertises SONY ERICSSON products and contains the following language.
“About us
We empower individuals, organisations and businesses by providing unique up-to-date information. Our dedicated team of professionals strive to gather the most relevant content for our users.
We specialize in Mobile Phones Sony Ericsson, New Sony Ericsson Phones, Sony Ericsson Walkman Phones, Sony Ericsson Camera Phones, Sony Ericsson accessories and an array of other products and services.”
The website also provides links to “CellPhone Comparisons”, “CellPhone Providers”, “Vodaphone Mobile Phones”, “Cingular Mobile Phones” and “Cingular Phone Plans.”
6.8 It is quite extraordinary that the Complainants should have omitted to disclose this in the Complaint, particularly with regard to their submissions in respect of paragraphs 4(c)(i) and (iii) of the Policy; paragraphs 5.A.7 and 5.A.9 above. However, in the absence of license or authorisation to use the SONY ERICSSON trademark it is clear that this use by the Respondent of that trademark is neither bona fide nor fair. The combination of the very well known marks SONY and ERICSSON is such that, absent compelling evidence from the Respondent, it is clear that he cannot have rights to or legitimate interests in the domain name in issue which – as stated – is identical to the combination SONY ERICSSON trademark but for the substitution of the letter “y” with the letter “t”. Accordingly, the Complaint satisfies the requirement of paragraph 4(a)(ii) of the Policy.
6.9 The Panel would, however, merely remind the Complainants that the Rules do not provide for supplementary submissions by a Complainant in addition to the Complaint, except at the express request or discretion of the Panel: Rule 12. Accordingly, it is important for a Complainant’s case to be comprehensive and adequate from the outset so as to meet the requirements of the Policy.
Registered and Used in Bad Faith
6.10 Here, the Complainants refer to having made several attempts to contact the Respondent. None, however, are exhibited to evidence this. Furthermore, the GeertHofstede case, supra, cited by the Complainants concerned a domain name identical to the Complainant’s personal name (in respect of which there was a pending trademark application in the Benelux), which domain name resolved to what was in effect, a fan website. In other words, quite a special fact situation bearing no similarity to the facts of the present case. The Complainants should consider whether citing language from earlier decisions, which they regard as helpful to their case, is apposite or persuasive where such decisions are based on quite dissimilar facts. The Panel does not believe that it is.
6.11 Be that as it may, in the absence of a Response there is no evidence to indicate good faith registration or use. Where the domain name in issue amounts to typosquatting – as it does in this case – registration in bad faith can be assumed, unless very compelling evidence to the contrary is produced by the Respondent.
6.12 As to use, whether or not the domain name in issue is being used – as to which the Complainants provide no information – it is difficult to envisage that any legitimate use could be made of it which would not infringe the Complainants’ trademarks or would otherwise be contrary to law, such as amounting to passing-off or unfair competition: Telstra Corporation Limited v. Nuclear Marshallows,WIPO Case No. D2000-0003.
6.13 However, as noted in paragraph 6.7 above, from the Panel’s own investigation it does appear that the domain name is, in fact, being used. This use is, quite simply, not addressed in the Complaint as it should have been. However, in the absence of evidence to the contrary, it is a fair inference both from the content of the website itself and also from the Complainants’ statement that they have not licensed the Respondent to use their trademarks that here there are circumstances falling within paragraph 4(b)(iv) of the Policy.
6.14 In the circumstances, the Panel finds that the Complainants succeed in establishing the twin requirements of 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, <sontericsson.com> be transferred to Sony Ericsson Mobile Communications AB, the First Complainant.
David Perkins Sole Panelist
Dated: April 10, 2008
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