Sony Computer Entertainment Inc.; Sony Kabushiki Kaisha v. SW E- Solutions Ltd.

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Kabushiki Kaisha a/t/a Sony Corporation and Sony Computer

Entertainment Inc. v. Polytech Group Incorporated, SW E-Solutions Ltd. and Alex

Banh

Case No. D2001-0536

1. The Parties

Complainants: Sony Kabushiki Kaisha

also trading as Sony Corporation

6-7-35, Kitashinagawa, 6-chome,

Shinagawa-ku

Tokyo, Japan

Sony Computer Entertainment Inc.

1-1, Akasaka 7-chome Minato-ku,

Tokyo, 107-0052 Japan

Respondents: Polytech Group Incorporated

The Creque Building

Upper Main Street (P.O. Box 116)

Road Town, Tortola

British Virgin Islands

SW E-Solutions Ltd.

Floor 9, Man Yee Building

68 Des Vouex Road

Central, Hong Kong

Alex Banh

Floor 9, Man Yee Building

68 Des Vouex Road

Central, Hong Kong

2. The Domain Names and Registrars

Domain Names: <sonyplaystation2.com>

<playstationx.com>

<sonyps2.com>

Registrar: Tucows.com, Inc.

3. Procedural History

On April 11, 2001, a Complaint about three disputed domain names, <sonyplaystation2.com>,

<playstationx.com>, <sonyps2.com> was filed by the Complainants

with the WIPO Arbitration and Mediation Center (the "Center") and

copied to the subject registrar and the Respondents Alex Banh and SW E-solutions

Ltd.

On April 12, 2001, the Complainants received an email from Respondent Alex

Banh acknowledging receipt of the Complaint and advising that the three-disputed

domain names had been sold the previous month to Respondent Polytech Group Incorporated.

On April 19, 2001, the Complainants amended the Complaint by including Polytech

Group Incorporated as a further Respondent and filed it with the Center.

The Center has verified that the Amended Complaint satisfies the formal requirements

of the Uniform Domain Name Dispute Resolution Policy (the "Policy")

adopted by the Internet Corporation for Assigned Names and Numbers (ICANN),

the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules")

and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy

(the "Supplemental Rules"). This Administrative Panel ("Panel")

is satisfied that this is the case.

The Center, on April 24, 2001, forwarded Notification of Complaint and Commencement

of Administrative Proceeding (including a copy of the Amended Complaint) via

email, fax and courier, to Respondent Polytech Group Incorporated.

The due date for a response was indicated as May 13, 2001.

Hereinafter, for economy of expression in this Decision, the term "Complaint"

refers to the Amended Complaint, and the term "Respondents" refers

to Polytech Group Incorporated, et al.

On May 15, 2001, the Center sent Notification of Default via email to Respondent

Polytech Group Incorporated as no response had been received by the due date.

The undersigned panelist, Mr. Mark Yang, submitted to the Center, a Statement

of Acceptance and Declaration of Impartiality and Independence. The Center then

transmitted to the parties a Notification of Appointment of Administrative Panel

and Projected Decision Date, in which Mr. Mark Yang was formally appointed as

the Sole Panelist and the projected Decision date was June 5, 2001. The Sole

Panelist finds that this Panel was properly constituted and appointed in accordance

with the Rules and the Supplemental Rules.

This Panel has not received any requests from the Complainants or the Respondents

regarding further submissions, waivers or extensions of deadlines, and this

Panel has not found it necessary to request any further information from the

parties (taking note of the default in responding to the Complaint). The proceedings

have been conducted in English.

Having reviewed the communication records in the case file provided by the

Center, this Panel finds that the Center has discharged its responsibility under

the Rules, paragraph 2(a), "to employ reasonably available means calculated

to achieve actual notice to Respondent". Therefore, this Panel shall issue its

Decision based upon the Complaint, the Policy, the Rules and the Supplemental

Rules and without the benefit of any Response from the Respondents.

4. Factual Background

Complainants are one of the world’s largest entertainment and electronics companies

whose shares are listed on 16 stock exchanges worldwide. Complainants have been

doing business for over 40 years with a current annual sales in excess of $63

billion and worldwide staff of over 189,000. Complainants registered and own

the SONY trademark in over 150 countries including Japan, Hong Kong and the

United States. The SONY trademark is one of best known trademarks in the world.

In Japanese, Chinese and English languages, the word SONY is a coined or invented

word and does not have any meaning other than as being a trademark.

The Complainants own and operate the websites <www.sony.com> and <www.playstation.com>,

which provide online information about its various products, including TV electronics

and Playstation video games.

The Complainants’ PlayStation home video game system was launched in 1994,

and has sold over 70 million units worldwide. The successor system, PlayStation2

or PS2, was recently launched. The Complainants have applied for trademark registration

of PLAYSTATION, PS, PS2, PS2 PLAYSTATION2 and PLAYSTATION2 in U.S., Hong Kong,

and Japan, many of which have already been registered.

On March 8, 1999, Respondent Alex Banh registered the <playstationx.com>

and <sonyplaystation2.com> domain names. On March 12, 1999, Respondent

Alex Banh registered the <sonyps2.com> domain name.

On November 28, 2000, Respondent Alex Banh sent an unsolicited letter to Complainant

Sony Computer Entertainment Inc. offering to sell the domain names <sonyps2.com>

and <sonyplaystation2.com> for US$150,000.00. In his letter, Respondent

Alex Banh acknowledged Sony’s intellectual right in those domain names.

On January 16, 2001, the Complainant Sony Computer Entertainment Inc.’s attorney

sent a response letter to Respondent Alex Banh that declined the offer and demanded

that Respondent Alex Banh cease use of those two domain names as well as a third

one <playstationx.com> registered by him and transfer all three domain

names to the the Complainant Sony Computer Entertainment Inc.

Upon receipt of that response letter, Respondent Alex Banh informed that he

had earlier sold the domain names to another company.

For the period starting from the registration dates of March 8 and 12, 1999,

to January 11, 2001, there was no website access to the domain names <sonyplaystation2.com>

and <sonyps2.com>. On January 11, 2001, and since the filing date of the

Complaint, only a standard page-holder has been posted on <playstionx.com>

by Respondent Alex Banh. Around April 4, 2001, Respondents posted websites at

<sonyplaystation2.com> and <sonyps2.com> with the same page containing

the distinctive PS2 design and PLAYSTATION2 design owned by the Complainants.

Before the expiration dates of registrations for the disputed domain names

(March 8, 2001, for <sonyplaystation2.com> and <playstationx.com>,

and March 12, 2001, for <sonyps2.com>), Respondent Alex Banh

transferred all three domain names at issue to Respondent SW E-solutions Ltd.

After receipt of the Complaint, Respondent Alex Banh sent an email to the Complainants

advising that the domain names in dispute had once again been transferred to

Respondent Polytech Group Incorporated.

5. Parties’ Contentions

A. Complainants contend that the disputed domain names <sonyplaystation2.com>,

<sonyps2.com> and <playstationx.com> are virtually identical and

confusingly similar to Complainants’ SONY, PS, PS2, PSX, PLAYSTATION and PLAYSTATION2

trademarks, that the Respondent has no rights or legitimate interest in the

disputed domain names, and that the disputed domain names are registered and

being used in bad faith.

B. Respondent Polytech Group Incorporated, the current registrant of the disputed

domain names, has not responded to these proceedings. This Panel therefore considers

that the Respondents have no contentions.

6. Discussion and Findings

One requirement of fundamental due process is that a respondent has notice

of proceedings that may substantially affect its rights. The Policy, Rules and

Supplemental Rules establish procedures intended to assure that a respondent

is given adequate notice of proceedings commenced against it, and a reasonable

opportunity to respond (see, e.g., Rules, paragraph 2(a)).

In this case, this Panel is satisfied that the Center took all steps reasonably

necessary to notify the Respondents of the filing of the Complaint and initiation

of these proceedings, and that the failure of the Respondents to furnish a Response

to the Complaint, is not due to any omission by the Center. There is sufficient

evidence in the case file provided by the Center, for this Panel to conclude

the Center discharged its obligations under Rules, paragraph 2(a) (see

Procedural History, supra).

Paragraph 4(a) of the Policy sets forth three elements that must be established

by a Complainant to merit a finding that a Respondent has engaged in abusive

domain name registration, and to obtain relief. These elements are:

(i) Respondent’s domain name is identical or confusingly similar to a trade-mark

or service mark in which the Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the domain

name; and

(iii) Respondent’s domain name has been registered and is being used in bad

faith.

Each of the aforesaid three elements must be proved by a Complainant to warrant

relief.

Respondents have defaulted, and have not responded to the allegations in the

Complaint. This Panel is directed to decide this administrative proceeding on

the basis of the Complaint (Rules, paragraph 14(a)), and certain factual conclusions

may be drawn by this Panel on the basis of Complainant’s undisputed allegations

(Rules, paragraph 15(a)). These factual conclusions are set out below and in

Factual Background, above.

Respondent’s domain name is identical or confusingly similar to a trademark

or service mark in which the Complainant has rights

Complainants own trademark registrations or pending trademark applications

for the marks SONY, PS, PS2, PSX, PLAYSTATION and PLAYSTATION2 in many countries

around the world including Japan, the United States and Hong Kong. The Complainants

have used their aforementioned trademarks in commerce for a substantial period

of time and have achieved worldwide recognition for their products bearing such

trademarks. This Panel determines that Complainants have rights in such trademarks.

Complainants contend that the disputed domain names are virtually identical

and confusingly similar to Complainants’ trademarks. Respondent has not contested

this contention. This Panel therefore adopts the facts and conclusions alleged

in the Complaint as true. Since the disputed domain names <sonyplaystation2.com>,

<sonyps2.com> and <playstationx.com> are alleged to be virtually

identical and confusingly similar to Complainant’s marks SONY, PS, PS2, PSX,

PLAYSTATION and PLAYSTATION2, and there is no evidence otherwise, further analysis

is unnecessary. This Panel determines that the disputed domain names, are confusingly

similar to Complainants’ trademarks, within the meaning of paragraph 4(a)(i)

of the Policy.

Respondent has no rights or legitimate interests in respect of the domain name

Complainants allege in the Complaint that:

(a) Respondents have not used the <sonyplaystation2.com>, <sonyps2.com>

or <playstationx.com> domain names in connection with a bona fide offering

of goods and services;

(b) Respondents are not commonly known by, or acquired any trademark or service

marks in, the <sonyplaystation2.com>, <sonyps2.com> or <playstationx.com>

domain names; and

(c) Respondents are not making a legitimate non-commercial or fair use of the

<sonyplaystation2.com>, <sonyps2.com> and <playstationx.com>

domain names, without intent for commercial gain to misleadingly divert consumers

or to tarnish the Complainants’ trademarks.

Complainants list the following alleged facts:

1) That there is no websites access for <sonyplaystation2.com> and <sonyps2.com>

until March 2001, two years after their registration. Thereafter, only a single

web page was posted by the Respondents with a notice of "Gaming website

coming soon". After the receipt of the Complaint, the Respondents redirected

the domain names to a Chinese website <chinaren.com>;

2) That there is no website access for <playstationx.com> other than

the standard page-holder until January 11, 2001, to denote that the site is

"under construction";

3) That the Respondents are not commonly known by the disputed domain names.

The Respondents do not have any license agreements or permission from the Complainants

to use their marks or apply for any domain name incorporating those marks; and

4) That there have not been any actual use of the disputed domain names in

connection with the Respondents’ business other than transfers of the domain

names between the Respondents.

These facts may lead to various conclusions, including that Respondent Polytech

Group Incorporated has no legitimate interest in the disputed domain name registrations.

Respondent Polytech Group Incorporated has not countered the allegation that

there is a lack of a legitimate interest in the disputed domain names. With

neither an appearance nor a rebuttal by Respondent, the facts alleged in the

Complaint are sufficient to conclude in favor of Complainants. Accordingly,

it is decided that Respondents have no legitimate interest in the disputed domain

names.

Respondent’s domain name has been registered and is being used in bad faith

The Policy indicates that certain circumstances may, "in particular but without

limitation", be evidence of bad faith (Policy, paragraph 4(b)). Among these

circumstances are "circumstances indicating that you have registered or

you have acquired the domain name "primarily for the purpose of selling,

renting, or otherwise transferring the domain name registration to the complainant

who is the owner of the trademark or service mark or to a competitor who is

the owner of the trademark or service mark or to a competitor of that complainant,

for valuable consideration in excess of your out-of-pocket costs directly related

to the domain name;" (Policy, paragraph 4(b)(i)).

This Panel finds that Respondent Alex Banh has registered the domain names

<sonyplaystation2.com> and <sonyps2.com> "primarily for the

purpose of selling the domain names registration to the complainant who is the

owner of the corresponding trademark for valuable consideration in excess of

his out-of-pocket costs. There is ample evidence proffered in the Complaint

that the Respondent Alex Banh offered to sell the domain names <sonyplaystation2.com>

and <sonyps2.com> to the Complainants for the amount of US$150,000 each,

and for two years between the registration of the domain names <sonyplaystation2.com>

and <sonyps2.com> and the filing date of the Complaint, there was no website

access for these two domain names (see paragraph 30 of the Complaint)

Further evidence of registration and use in bad faith provided by the Policy

is that "you have registered the domain name in order to prevent the owner

of the trademark or service mark from reflecting its mark in a corresponding

domain name, provided that you have engaged in a pattern of such conduct"

(Policy, paragraph 4(b)(ii)). The Panel finds that the Respondent Alex Banh

has engaged in a pattern of such conduct and thus having registered and used

the disputed domain names in bad faith. There is ample evidence proffered in

the Complaint that the Respondent Alex Banh offered to sell the domain names

<sonyplaystation2.com> and <sonyps2.com> to the Complainants for

the amount of US$150,000 each. After the Complainants refused the offer, Respondent

Alex Banh sold those domain names and a third one <playstationx.com> to

Respondent SW E-solutions Ltd., and that after receipt of the Complaint, Respondent

SW E-solution further sold the three disputed domain names to Respondent Polytech

Group Incorporated in effort to frustrate the Complainants’ effort to retrieve

its rights in the disputed domain names.

Although Respondent Alex Banh is no longer the registrant for the disputed

domain names, his close relationships with the current and previous registrants

of the disputed domain names are fully exposed and proved by sufficient evidence

in the Complaint. As cited in paragraphs 27 to 29 of the Complaint, Respondent

Alex Banh is listed as the Administrative, Technical and Billing Contact for

the disputed domain name registrations with the identical address as that of

the Respondent SW E-Solutions Ltd. after he sold these domain names to the Respondent

SW E-Solutions Ltd. The registrant of the SW E-solutions Ltd.’s domain name

<swss.net> is listed as Alex Banh, and the Administrative Contact of SW

Linux Ltd.’s domain name <sw-linux.com> are listed in the Whois report

as being Respondents Alex Banh and SW E-solutions Ltd. SW Linux Ltd. is another

subsidiary Sun Wah Hi-Tech Group which is the parent company of SW E-solutions

Ltd. The address of this website is the same as that contained in the Whois

report of <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com>.

Furthermore, Respondent Alex Banh is listed as the founder and Chief Operating

Office of SW Linux Ltd.’s website. The disputed domain names were then sold

to Respondent Polytech Group Inc. in March 2001, "under the condition that

they will host their website with SW E-solutions Limited where the company provide

hosting and domain name registration services through opensrs". The Panel

therefore finds that Respondent Alex Banh is likely the mastermind behind the

various registrations and transfers or at least the common element thereof.

7. Decision

This Panel finds, within the meaning of paragraph 4(a) of the Policy, that

<sonyplaystation2.com>, <sonyps2.com> and <playstationx.com>

are confusingly similar to Complainants trademarks SONY, PS, PS2, PSX, PLAYSTATION,

PLAYSTATION2; that the Respondents have no rights or legitimate interests in

respect of the disputed domain names; and that the disputed domain names have

been registered and are being used in bad faith; this Panel orders that the

domain names <sonyplaystation2.com>, <sonyps2.com> and <playstationx.com>

be transferred to the Complainants.

Mark M. Yang

Sole Panelist

Dated: June 5, 2001