A. Identical or confusingly similar with Complainant’s trademark
The Complainant is the owner of the “SONY” trademark registrations effective in many jurisdictions.
As confirmed by WIPO Overview 3.0, paragraph 1.2.1: “Where the complainant holds a nationally or regionally registered trademark or service mark, this prima facie satisfies the threshold requirement of having trademark rights for purposes of standing to file a UDRP case”.
The disputed domain name fully incorporates the “SONY” mark of the Complainant coupled with the addition of the words “creative” and “software”, both descriptive and referring to Complainant’s subsidiary and its website.
It is well accepted that where the relevant trademark is recognizable within the disputed domain name, the addition of descriptive terms would not prevent a finding of confusing similarity under the first element (see par. 1.8 of WIPO Overview 3.0).
The Panel notes that the addition of the words “creative” and “software” does not change overall impression and does not eliminate the confusing similarity between the disputed domain name and the Complainant’s “SONY” trademarks.
The trademark is clearly recognizable in the disputed domain name and the addition of two descriptive words actually creates an association with Complainant’s business, one of its subsidiaries and its official website and the domain name.
The gTLD suffix “.info” is to be disregarded under the confusing similarity test.
Therefore, the Panel finds that the first requirement of the Policy has been satisfied.
B. Rights or Legitimate Interests
The general rule is the following:
(i) a complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests; and
(ii) once such prima facie case is made, the burden shifts to the respondent who has to demonstrate his rights or legitimate interests in respect of the domain name under paragraph 4 (c) of the Policy.
If the respondent fails to do so, the second element of the Policy is satisfied, see Julian Barnes v. Old Barn Studios, WIPO Case No. D2001-0121; Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110 and CAC Case No. 101284.
The Complainant states that the Respondent is not associated with the Complainant or any related entity, has not received an authorization or a license to use the SONY mark and cannot demonstrate any legitimate offering of goods or services under the SONY mark.
The Complainant also alleges that the disputed domain name was used for phishing and provides some evidence (copies of 2 emails offering to download a software product on behalf of “Sony Creative”).
The disputed domain name was registered on July 20, 2020.
The Respondent did not respond.
While failure to respond does not per se demonstrate that the Respondent does not have rights or legitimate interests, it allows all reasonable inferences of fact in the allegations of the complaint to be deemed true (see paragraph 14(b) of the Rules and Vertical Solutions Management, Inc. v. webnet-marketing, inc., FA 95095, National Arbitration Forum).
The Panel notes that the use of a domain name for illegal activity (e.g. phishing) can never confer rights or legitimate interests on a respondent (see par. 2.13.1 of the WIPO Overview 3.0 and see also CAC Case No. 103393).
There is no evidence of any rights or legitimate interests of the Respondent in this dispute.
The Complainant has made out a prima facie case.
The Panel, therefore, finds that the Complainant satisfied the second requirement of the Policy.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy lists non-exhaustive circumstances indicating registration and use in bad faith.
These circumstances are non-exhaustive and other factors can also be considered in deciding whether the disputed domain name is registered and used in bad faith.
A range of considerations shall apply in assessing Respondent’s bad faith, i.e. the nature of the domain name, the timing and circumstances of the registration of the disputed domain, a clear absence of rights or legitimate interests coupled with no credible explanation for the respondent’s choice of the domain name, or other indicia generally suggesting that the respondent had somehow targeted the Complainant (see par. 3.2.1 of the WIPO Overview 3.0).
The Panel finds that the following factors demonstrate bad faith of the Respondent in this dispute.
First of all, previous UDRP Panels confirmed well-known status of the Complainant’s “SONY” mark (see e.g. one of the earlier UDRP cases Sony Kabushiki Kaisha v. sony.net, WIPO Case No. D2000-1074 recognizing back in 2000 that “the Complainant’s name and principal trademark, SONY, is a household name, exclusively associated with the Complainant and its products”; Sony Kabushiki Kaisha, also trading as Sony Corporation v. Richard Mandanice, WIPO Case No. D2004-1046 and Sony Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / David Grant, WIPO Case No. D2020-3162).
The Complainant’s marks had been registered and had been famous long before the registration of the disputed domain name.
Second, as confirmed by WIPO Overview 3.0 “Panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith” (see par. 3.1.4).
Third, the Complainant provided some evidence confirming suspicious use of the disputed domain name for possible phishing and malware. Under par. 3.4 of WIPO Overview 3.0 “Panels have held that the use of a domain name for purposes other than to host a website may constitute bad faith. Such purposes include sending email, phishing, identity theft, or malware distribution.” The Respondent has concealed his/her identity and that, in addition to the other factors, is also an indication of bad faith.
Fourth, given all the circumstances above and in the absence of Respondent’s response and any explanations, there is no credible explanation for the Respondent’s choice of the disputed domain name.
As noted by the Panel in Sony Corporation v. WhoisGuard Protected, WhoisGuard, Inc. / David Grant, WIPO Case No. D2020-3162: “The circumstances leave no doubt that Respondent was fully aware of Complainant’s rights in the SONY trademark (notwithstanding its claimed worldwide recognition) when registering the disputed domain name and that the latter clearly is directed thereto.
Moreover, using the disputed domain name for phishing activities by sending fraudulent emails is a clear indication that Respondent intentionally attempted to attract, for commercial gain, Internet users to its own email communication by creating a likelihood of confusing with Complainant’s SONY trademark as to the source, sponsorship, affiliation or endorsement of Respondent’s email.”
The Panel finds that the Respondent’s conduct in this case falls within paragraph 4(b) of the Policy, namely 4(b) (iv) and by using the disputed domain name the Respondent is attempting to attract for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s mark as to the affiliation or endorsement of the Respondent’s website.
The Panel holds that the third requirement of the Policy has been satisfied.
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