WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Corporation v. DNS Administrator, Sadecehosting.Com Internet Hizmetleri San Tic Ltd Sti

Case No. D2017-2343

1. The Parties

The Complainant is Sony Corporation of Tokyo, Japan, represented by Gün & Partners, Turkey.

The Respondent is DNS Administrator, Sadecehosting.Com Internet Hizmetleri San Tic Ltd Sti of Istanbul, Turkey, internally represented.

2. The Domain Name and Registrar

The disputed domain name <sonyyetkiliservis.net> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2017. On November 27, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On November 28, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on December 1, 2017. In accordance with the Rules, paragraph 5, the due date for Response was December 21, 2017. The Center received email communications from the Respondent on December 22, 2017; December 26, 2017; December 28, 2017; and January 5, 2018. The Center received an email communication from a third party on January 11, 2018.

The Center appointed Kaya Köklü as the sole panelist in this matter on January 17, 2018. 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

The Complainant is a multinational Japanese company that is active in the field of selling and marketing various kinds of electronic goods.

The Complainant owns a large number of SONY trademark registrations around the world, including in Turkey. According to the provided documents in the case file, the Complainant is inter alia the registered owner of the Turkish Trademark Registrations No. 77796 (registered on December 31, 1993) and No. 89735 (registered on December 31, 1995), both covering trademark protection particularly for goods in class 9.

The Complainant also owns and operates various domain names which incorporate the SONY trademark, such as <sony.com> and <sony.com.tr>.

The nominal Respondent is a domain name hosting service located in Istanbul, Turkey. The true identity of the person who initiated the disputed domain name registration remains unclear, but appears to be a repair service agent for electronic goods in Istanbul, Turkey. For the purpose of these administrative proceedings, both are accepted by the Panel as the “Respondent”.

The disputed domain name was registered by the Respondent on March 11, 2011.

The disputed domain name resolves to an active website, which is used for offering repair services for various kinds of SONY products in the Turkish language. The Complainant’s screenshots also show that the Respondent promotes its repair services for the Complainant’s products without publishing a visible disclaimer describing the (non-existent) relationship between the Parties.

According to the uncontested information provided in the case file, the Respondent did not reply to a letter previously sent by the Complainant on July 14, 2017, asking for a voluntary deletion of the disputed domain name.

5. Parties’ Contentions

A. Complainant

The Complainant requests the transfer of the disputed domain name.

The Complainant is of the opinion that the disputed domain name is confusingly similar to its SONY trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. It is rather argued that the disputed domain name falsely suggests that there is some official or authorized link with the Complainant for the purposes of repairs and services within Turkey.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith. The Complainant particularly argues that the Respondent was aware of the Complainant’s SONY trademark, when registering the disputed domain name. Concerning bad faith use, the Complainant believes that in light of the criteria set out in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (“Oki Data”), the Respondent cannot successfully rely on a potential right or legitimate interest in the disputed domain name as a reseller or distributor of the Complainant’s products.

B. Respondent

The Respondent indicated in its email communications that it is prepared to cancel the disputed domain name.

It is further noted that the Center received an email communication from a third party on January 11, 2018 containing some defense arguments as to why the Complaint should be denied, though difficult to understand due to deficiencies in grammar and spelling.

In this email communication, as far as the Panel could understand, it is argued that the registration of the disputed domain name already dates back for many years. Also, it alleged that the disputed domain name has never been used in bad faith and it was never attempted to cause confusion among customers. Quite the opposite, it is asserted that the sender of the email is an authorized repair service agency, which complies with all technical standards and that the disputed domain name was used always for legitimate purposes in good faith only.

6. Discussion and Findings

According to paragraph 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to a trademark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

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

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the WIPO Overview 3.0.

A. Identical or Confusingly Similar

The Panel finds that the Complainant has registered trademark rights in the mark SONY by virtue of a large number of longstanding trademark registrations, including trademark registrations covering protection in Turkey.

The Panel further finds that the disputed domain name is confusingly similar to the Complainant’s registered SONY trademarks, as it fully incorporates the Complainant’s trademark. The mere addition of the descriptive Turkish terms “yetkili servis”, which means “authorized service” in the English language, does not serve to distinguish the disputed domain name from the Complainant’s registered SONY trademarks.

Accordingly, the Panel finds that the Complainant has satisfied the requirement under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Panel further finds that the Respondent has failed to demonstrate any rights or legitimate interests in the disputed domain name.

While the burden of proof on this element remains with the complainant, UDRP panels have recognized that this would result in the often impossible task of proving a negative, in particular as the evidence in this regard is often primarily within the knowledge of the respondent. Therefore, the Panel agrees with prior UDRP panels that the complainant is required to make out a prima facie case before the burden of production of evidence shifts to the respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or make any convincing argument to demonstrate rights or legitimate interests in the disputed domain name according to the Policy, paragraphs 4(a)(ii) and 4(c).

In its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s trademark SONY in a confusingly similar way within the disputed domain name.

There is also no indication in the current record that the Respondent is commonly known by the disputed domain name. Furthermore, the Respondent has failed to demonstrate any of the other non-exclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or other evidence of rights or legitimate interests in the disputed domain name. Even if the sender of the email communication received by the Center on January 11, 2018 is accepted as the Respondent, the alleged authorization for repair services provided by a third party (even if true) is not suitable to constitute a right or legitimate interest to use the Complainant’s trademark.

In this regard, the Panel is convinced that the Respondent cannot be assessed as a legitimate repair service for the Complainant’s products in light of Oki Data and thus is not entitled to use the disputed domain name accordingly. The criteria as set forth in Oki Data (which may apply mutatis mutandis for offered repair services) are apparently not fulfilled in the present case. The Panel particularly notes that the Respondent’s website which is linked to the disputed domain name does not adequately disclose the relationship, or lack thereof, between the Respondent and the Complainant, thus creating the false impression that the Respondent might be an official and authorized repair and service agency for the Complainant’s products. In view of the Panel, this takes the Respondent out of the Oki Data safe harbour for purposes of the second element.

Finally, there is also no indication in the case file that would allow accepting a forfeiture of rights by the Complainant in the present case, even if almost seven years have passed since the registration of the disputed domain name. Neither the UDRP nor the facts of the case would justify a denial of the Complainant’s claim for transfer of the disputed domain name due to a delay in initiating the present UDRP administrative proceedings. The Respondent did not provide any indication that the Complainant has delayed its Complaint in a legally abusive manner. In the Panel’s view, such indication, if at all, would only be given if the Complainant intentionally had caused the false impression by way of any explicit or implicit behavior that it will tolerate the use of the disputed domain name. The case file, at least, does not contain any such indication that would justify such an assessment of a forfeiture of rights.

As a conclusion, the Panel finds that the Complainant has also satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and used the disputed domain name in bad faith.

The Panel notes the reputation and wide recognition of the Complainant’s trademark SONY. Due to its worldwide recognition (including in Turkey), the Panel accepts the SONY trademark as a well-known trademark. The Panel believes that the Respondent must have known this well-known trademark when registering the disputed domain name in the year 2011.

It appears that the Respondent has registered the disputed domain name solely for the purpose of creating an association with the Complainant, in particular with its products and services. After having reviewed the Complainant’s screenshots of the website linked to the disputed domain name and the website itself, the Panel is convinced that the Respondent has intentionally registered the disputed domain name in order to generate traffic to its own business. The Panel believes that the Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s SONY trademark as to the source, sponsorship, affiliation or endorsement of its website.

In any case, in view of the Panel, the Respondent does not meet the Oki Data principles on various elements, particularly lack of a distinctive disclaimer and representing itself as the trademark owner by prominently using the Complainant’s logo on its website.

The Panel therefore concludes that the disputed domain name was registered and is used in bad faith and that the Complainant has also satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <sonyyetkiliservis.net> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: January 22, 2018