Sony Ericsson Mobile Communication AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Netfreez
Case No. DTV2007-0010
1. The Parties
The Complainants are Sony Ericsson Mobile Communications AB of Lund, Sweden (Complainant 1), Telefonaktiebolaget LM Ericsson of Stockholm, Sweden, (Complainant 2) and Sony Corporation of Tokyo, Japan (Complainant 3) represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft, Germany.
The Respondent is Netfreez of Alameda, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <sonyericsson.tv> is registered with Go Daddy Software.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 2, 2007. On August 2, 2007, the Center transmitted by email to Go Daddy Software a request for registrar verification in connection with the domain name at issue. On August 6, 2007, Go Daddy Software 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 (because it sought a transfer of the domain name <sony-ericson.org>), the Complainant filed an amendment to the Complaint on August 13, 2007. The Center verified that the Amended 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”). The Amended Complaint is hereafter referred to as the Complaint.
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 14, 2007. In accordance with paragraph 5(a) of the Rules, the due date for a Response was September 3, 2007. Absent any response from the Respondent, the Center notified the Respondent’s default on September 4, 2007.
The Center appointed Philip N. Argy as the sole panelist in this matter on September 10, 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
The following facts are taken from the Complaint and, in the absence of a Response, remain uncontested.
Complainant 1 is a joint venture between Complainants 2 and 3 and has the registered company name “Sony Ericsson Mobile Communications AB” in Sweden.
Complainant 2 is a Swedish mobile communications company and the holder of the Community Trademark ERICSSON (registration numbers 000107003 and 001459130). Complainant 3 is a Japanese electronics company and the holder of the Community Trademark SONY (registration number 000000472).
The disputed domain name <sonyericsson.tv> was created on October 19, 2004. At the time the Complaint was prepared, the disputed domain name resolved to a website offering, among other things, Sony Ericsson mobile phones, ringtones and mobile phones made by competitors of Sony Ericsson.
5. Parties’ Contentions
A. Complainant
Complainants argue that they have rights to the Trademarks SONY and ERICSSON. These rights arise out of their European Community Trademark registrations with the Office for Harmonisation in the Internal Market. The Trademarks SONY and ERICSSON are both famous within the field of mobile communication. Complainant 1 is the licensee of the Trademarks SONY and ERICSSON from Complainants 2 and 3 respectively. It is entitled to use its company name and the trademark SONY ERICSSON for its products. Since being set up in October 2001, Complainant 1 has become a major player in the field of mobile telephony under the “Sony Ericsson” brand. Complainant 1 also owns the domain name <sony-ericson.org>.
The disputed domain name <sonyericsson.tv> is composed of two parts, one of which is identical to the trademark SONY, the other of which is identical to the trademark ERICSSON, both trademarks which are licensed to Complainant 1.
The Respondent has never been authorized by the Complainants to use their Trademarks. The Respondent has never used the domain name <sonyericsson.tv> in connection with a bona fide offering of goods and services. The Respondent has never been commonly known by the domain name <sonyericsson.tv>. The Respondent is not making any legitimate non-commercial or fair use of the domain name <sonyericsson.tv>.
The Respondent is using the domain name in bad faith because it is deliberately using Complainant’s trademark for profit. Complainants have sent a number of letters to the Respondent, informing it about its Trademark infringement, to which the Respondent has not reacted or responded to.
B. Respondent
The Respondent did not respond to the Complaint.
6. Discussion and Findings
In order for the disputed domain name to be transferred to Complainant 1, it must have demonstrated, in accordance with paragraph 4(a) of the Policy, that:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which it has rights; and
(ii) the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the Respondent has registered and used the disputed domain name in bad faith.
A. Identical or Confusingly Similar
The Panel has to be satisfied that Complainant 1 has rights in the SONY ERICSSON trademark. These rights must derive from the individual and well known trademarks SONY and ERICSSON of which Complainant 2 and Complainant 3 are the respective owners. The Complaint asserts that Complainant 1 has been authorized to use the combination of these trademarks in its company name and as a combined trademark (SONY ERICSSON) and to enforce it. The Complaint does not attach any evidence of any licensing agreement with Complainants 2 and 3 that license Complainant 1 as alleged. As there is no Response, the Panel has the assertion both uncontested and untested. The Panel is prepared to infer from the length of time that Complainant 1 has been in business and from the composition of its board of directors, which has been put into evidence, that Complainant 1 has the rights that it claims in the trademark SONY ERICSSON. The Complaint provides no evidence that the trademark SONY ERICSSON has been registered but the Panel is prepared to find based on the material in evidence, from the website at “www.sonyericsson.com”, and from the Panel’s own knowledge, that Complainant 1 does have the rights it claims to have in the trademark SONY ERICSSON.
A comparison between the disputed domain name and the trademarks owned by Complainants 2 and 3 makes clear that the domain name, which includes both the SONY and ERICSSON trademarks, is identical or confusingly similar to those Complainants’ trademarks. There have been a number of UDRP cases, including Konica Corporation, Minolta Kabushiki Kaisha aka Minolta Co., Ltd. v. IC,
WIPO Case No. D2003-0112 and Audi AG v. Hans Wolf,
WIPO Case No. D2001-0148, where a domain name that consists of two separate trademarks has been found to be confusingly similar to one or the other trademark.
Based on the above circumstances, the Panel is therefore satisfied that the first element of paragraph 4(a) of the Policy has been proven both in relation to Complainant 1’s rights in the composite trademark SONY ERICSSON and also in relation to Complainants 2 and 3’s rights in their respective ERICSSON and SONY trademarks.
B. Rights or Legitimate Interests
The failure of the Respondent to respond to the Complainants’ contentions and the evidence adduced by the Complainants makes it easy for the Panel to conclude that the Respondent has never been licensed by the Complainant, never had any connection to the Complainant and, in general, lacks any rights or legitimate interests in the disputed domain name. The Panel could find no justification, right or legitimate interest on the part of the Respondent to the words or trademarks comprising the domain name. The Respondent cannot be making a legitimate non commercial or fair use of the domain name as the website is being used for a commercial purpose by way of advertisements, links and sale offers (whether or not conducted directly by the Respondent). No evidence been adduced to indicate that the Respondent is known by the name “SONY” or “ERICSSON” or “SONY ERICSSON”.
The Panel is satisfied that the second element of paragraph 4(a) of the Policy has been proven by the Complainants.
C. Registered and Used in Bad Faith
The disputed domain name resolves to a website offering discounted Sony Ericsson mobile phones, ringtones and accessories, as well as mobile phones offered by competitors. These appear in the form of “Sponsored links” which provide the owner of the domain name with revenue every time an Internet user clicks on these links.
Despite the failure of the Complainants to provide more than the bare minimum of argument under this element, the only inference which the Panel can reasonably draw from the circumstances surrounding the registration and use of the domain name is that the Respondent intended to divert Internet users to the Respondent’s website by relying on initial interest confusion in the minds of those users as to the trade source of the products promoted on the Respondent’s website. The use of the disputed domain name gives rise to the obvious inference that the Respondent was aware of the Complainants’ trademark rights, both currently and at the time of registration. Past UDRP decisions, including Sony Ericsson Mobile Communications International AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Party Night Inc.,
WIPO Case No. D2002-1128, found that the deliberate creation of initial confusion and the consequent diversion of Internet traffic is sufficient to establish bad faith on the Respondent’s part notwithstanding that the users who have visited the Respondent’s site might not be confused into believing that it was the Complainant’s site.
The fact that the Respondent decided to use a famous trademark in the mobile communications industry to offer for sale and to advertise mobile communications products leaves the Panel to infer that the Respondent intended to usurp the reputation and goodwill of the Complainants. Given the manner of use of the Complainants’ trademarks throughout the website and the types of products offered for sale by the Respondent through the website, it would be difficult, if not impossible, for the Respondent to argue that it did not know of the Complainants’ trademarks or that it did not intend to usurp the Complainants’ established reputation and goodwill. The only reasonable inference in light of the evidence and the failure of the Respondent to submit any Response is that there was an intention from the outset on the part of the Respondent to usurp the goodwill and reputation of the Complainants. A finding of such conduct satisfies the third element of paragraph 4(a) of the Policy.
The Panel is satisfied that the disputed domain name was registered and used in bad faith. The third element of paragraph 4(a) of the Policy has been proven by the Complainants.
7. Decision
For all of the foregoing reasons, and in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name, <sonyericsson.tv> be transferred to Complainant 1, Sony Ericsson Mobile Communications AB.
Philip N. Argy Sole Panelist
Dated: September 20, 2007
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