Sony Kabushiki Kaisha aka Sony Corporation v. SONY DESIGN.COM

WIPO

Arbitration and Mediation Center

ADMINISTRATIVE PANEL

DECISION

Sony Kabushiki Kaisha aka Sony Corporation v. Sonydesign.Com

Case No. D2003-0616

1. The Parties

The Complainant is Sony Kabushiki Kaisha aka Sony Corporation, of Tokyo, Japan,

represented by Robin Blecker & Daley, United States of America.

The Respondent is Sonydesign.Com, of Niigata, Japan.

2. The Domain Name and Registrar

The disputed domain name <sonydesign.com> is registered with Gandi SARL.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center")

on August 6, 2003. On August 6, 2003, the Center transmitted by email to Gandi

SARL a request for registrar verification in connection with the domain name

at issue. On August 8,2003, Gandi SARL 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. In response to a notification by the Center that the Complaint was

administratively deficient, the Complainant filed an amendment to the Complaint

on August 8, 2003. 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 August

12, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response

was September 1, 2003. The Respondent did not submit any response.

Accordingly, the Center notified the Respondent’s default on September 3,2003.

The Center appointed Zentaro Kitagawa as the sole panelist in this matter on

September 15, 2003. 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

1. Complainant Sony is a leading manufacturer of audio, video, communications

and information technology products for the consumer and professional markets.

2. Sony conducts its businesses almost exclusively in connection with the name

and trademark SONY, and the SONY trademark is registered in over 193 countries

including Japan, Hong Kong and the United States.

3. Sony operates five Sony Design Centers located in Tokyo, Singapore, New

Jersey, San Francisco and London which are responsible for creating products

with innovative designs.

4. Sony spends millions of dollars a year for advertising and promoting the

SONY trademark throughout the world. The SONY mark has been disseminated through

all types of advertising media such as network and cable television programming,

radio broadcasting and print media as well as online advertising and promotions.

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

word and does not have any meaning other than as the trademark SONY.

6. Sony conducts business on the Internet using the SONY mark. For example,

Sony operates a web site at "www.sony.com" that has online games, information

concerning music, movies, electronics, such as televisions, stereos and Playstation®

video games.

7. Sony owns over 30 registrations in the United States and over 450 registrations

in Japan for the mark SONY. These registrations cover an extensive range of

goods and services. The Complaint is based upon these trademarks which are as

follows:

JAPAN

Mark Registration No. International Classification of Goods/Services

SONY

0512083

Class 7

SONY

0618689

Class 9

SONY DESIGN

2066566

Class 28

SONY DESIGN

2149883

Class 9

SONY DESIGN

2175020

Class 16

UNITED STATES

Mark Registration No. Goods/Services

SONY

770275

television cameras

SONY

785967

analysis apparatus

and equipment

SONY

777400

lighting apparatus

SONY

801885

electrical sound recording

apparatus

SONY

1258436

video tape recorders,

video disc players, video cameras, and recorded video tapes in addition

to unrecorded video tapes

8. The Respondent registered with the Registrar the <sonydesign.com>

domain name on January 25, 2000. Sometime thereafter, Respondent posted a Web

site at "www.sonydesign.com". On the homepage, the site is introduced as the

"Sonydesign labo. site" and visitors are invited to "Tell us

your dreams" by submitting ideas for PC, cameras, VTRs, phones and games

using an online form. The Web page further states: "Design your dreams!

Digital dreams come true. SONY Design labo."

9. The Complainant unsuccessfully attempted to contact the Respondent at the

address and telephone number provided in the domain name registration for <sonydesign.com>.

5. Parties’ Contentions

A. Complainant

1. The disputed domain name is identical or confusingly similar to Complainant’s

marks SONY and SONY DESIGN (Para. 4(a)(i) of the Policy)

In evaluating the similarity between the <sonydesign.com> domain name

and Complainant’s marks, the relevant portion of the Respondent’s domain name

is "sonydesign", since the presence of the top level domain (TLD) ".com"

suffix is irrelevant in the comparison of a domain name to a trademark. The

<sonydesign.com> domain name is a total misappropriation of the Complainant’s

famous and coined marks SONY and SONY DESIGN, and is confusingly similar to

Complainant’s SONY and SONY DESIGN marks.

2. The Respondent has no rights or legitimate interests in the disputed domain

name (Para. 4(a)(ii) of the Policy)

Firstly, there is no evidence of the Respondent’s use of the disputed domain

name in connection with a bona fide offering of goods and services. Based upon

the numerous trademark registrations for and the fame, goodwill and notoriety

associated with the SONY mark, it is impossible to conceive of a circumstance

in which the Respondent could legitimately use this domain name without creating

a false impression of association with Complainant.

Secondly, there is no evidence that shows the Respondent, as either an individual,

business, or other organization, has been or is commonly known by the <sonydesign.com>

domain name, or that it has acquired any trademark or service mark rights in

the domain name. The Complainant has not licensed, contracted or otherwise permitted

the Respondent in any way to use the SONY or SONY DESIGN marks or to apply for

any domain names incorporating these marks, nor has the Complainant acquiesced

in any way to such use or application of the marks by the Respondent. At no

time did the Respondent have authorization from Complainant to register the

disputed domain name.

Thirdly, there is also no evidence that shows the Respondent is making a legitimate

non-commercial or fair use of the <sonydesign.com> domain name without

intent for commercial gain. Based upon the foregoing, the Respondent clearly

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

3. The Respondent registered and is using the disputed domain name in bad faith

(Para. 4(a)(iii) of the Policy)

Firstly, the Complainant has not authorized the Respondent to register the

<sonydesign.com> domain name. Without authorization from the Complainant,

there is no conceivable bona fide use of this disputed domain name except to

sell it to the Complainant or to perpetrate a fraud. Therefore, the Respondent

has registered the disputed domain name primarily for the purpose of selling

it to the Complainant for valuable consideration in excess of out-of-pocket

costs directly related to the domain name.

Secondly, the Respondent has surreptitiously taken advantage of the goodwill

Sony has garnered with great effort and expense by operating an unauthorized

site at "www.sonydesign.com", designed to deceive the public into believing

that product ideas were being solicited by Sony. In addition to lost investment

opportunities, Sony will be forced to bear the burden of litigation expenses

arising from submissions to the Respondent’s site unwittingly made by the misled

public who demand compensation for inventions they believed were communicated

to Sony, thereby damaging the goodwill Sony has painstakingly developed over

several decades.

Thirdly, there is no conceivable bona fide use of the domain name <sonydesign.com>

by the Respondent. Indeed, without authorization from the Complainant, the Respondent

registered a domain name incorporating the Complainant’s famous SONY mark in

order to lure an unsuspecting public to its site, which purports to be sponsored

by the Complainant. The Respondent attempts to financially gain by deceiving

the public into believing that the Complainant is soliciting product ideas through

the site at "www.sonydesign.com" when instead the Respondent will be benefiting

from any product ideas submitted. Moreover, the Respondent’s provision of false

contact information in the domain name registration of <sonydesign.com>

is evidence of bad faith.

Based on the foregoing, and in accordance with Para. 4(b)(i) of the Policy,

the Complainant requests the Administrative Panel a decision that the <sonydesign.com>

domain name be transferred to the Complainant.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

The Policy Requirements

Paragraph 4(a) of the Policy provides that the Complainant must prove each

of the following:

(i) The domain name <sonydesign.com> is identical or confusingly similar

to a trademark, in which the Complainant has rights,

(ii) The Respondent has no right or legitimate interest in respect of the domain

name <sonydesign.com>; and

(iii) The domain name <sonydesign.com> has been registered and is being

used in bad faith.

Identical or Confusingly Similar

In comparing a domain name to a trademark, the top level domain (TLD) ".com"

is irrelevant. Therefore, it is clear that the <sonydesign.com> domain

name is a misappropriation of the Complainant’s marks SONY and SONYDESIGN and

is confusingly similar to the Complainant’s marks.

Rights or Legitimate Interests

It is shown that the Complainant has not licensed, contracted or otherwise

permitted the Respondent to use the SONY or SONY DESIGN marks. There is also

no evidence that shows the Respondent is making a legitimate non-commercial

or fair use of the <sonydesign.com> domain name without intent for commercial

gain. The Respondent is acting in a misleading fashion to divert consumers or

to tarnish the marks at issue so as to create an impression of association with

the Complainant. Therefore, the Respondent has no rights or legitimate interests

in respect of the disputed domain name.

Registered and Used in Bad Faith

The Respondent’s unauthorized registration and use of the disputed domain name

prevents the Complainant from reflecting the marks in a corresponding domain

name. Such registration and use misleads the public to its site, which purports

to be sponsored by the Complainant. The Respondent also attempts to commercially

gain by deceiving the public into believing that the Complainant is soliciting

product ideas through the site at "www.sonydesign.com". Furthermore, the Respondent

provides a false contact information in the site at "www.sonydesign.com". Therefore,

it is shown that the Respondent has registered and used the disputed domain

name in bad faith.

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, <sonydesign.com>

be transferred to the Complainant.

Zentaro Kitagawa

Sole Panelist

Dated: September 29, 2003

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