The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).
The Respondent has registered the disputed domain name primarily for the purpose of disrupting the business of a competitor;
Given the fame and reputation in the “SONY” trademark, and the fact that its goods and services are distributed throughout the world, it can be inferred the Respondent knew of the Complainant’s business. As was held in WIPO Case No. D2006-0652 (Sony Kabushiki Kaisha aka Sony Corporation v. A. Smith - sonyoutlet.com): “The Complainant and its trademark are so well-known that one must assume that the Respondent knew of their existence when registering this domain name. The word “Sony” has no independent existence in English or Japanese. One has to infer that the Respondent registered the domain name in issue in an attempt to use the Complainant’s trademark either to disrupt the Complainant’s business or to divert business to itself.”
Respondent might argue that he is not a competitor of the Complainant. However, as noted in GB Investments, Inc. v. Donald Baker, WIPO Case No. D2007-1320: “In engaging in this commercial activity, Respondent did (if only indirectly) become a competitor of Complainant and attracted Internet users for commercial gain, and in so doing it must have been apparent to the Respondent that this would have a disruptive effect on the business of the Complainant.”
(iv) By using the disputed domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of its web site or location or of a product or service on its web site or location.
The Complainant holds trademark rights for the “SONY” trademark(s) since at least 1964. As mentioned previously, numerous panels have held that the “SONY” trademark is a well-known trademark. The disputed domain name was created in November 2020 and incorporates the Complainant’s Trademark. The disputed domain name was registered in bad faith, knowing the Complainant and targeting its trademark(s).
Complainant refers to CAC Case No. 103603 (Sony Corporation v. Franklin Bailey – US-Sony.com): “In the instant case, there are no doubts that the Complainant's trademark “SONY” enjoys extensive reputation. This has also been recognized in various other prior UDRP decisions. Therefore, it is clear that at the time of the registration of the disputed domain name, Respondent was well aware of Complainant and of its well-known trademark SONY.”
See also CAC Case No. 103557 (Sony Corporation v. Alice Mitchell - SONYCREATIVESOFTWARE.INFO): “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).”
In the case at hand, the disputed domain name is confusingly similar to the well-known “SONY” Trademark(s). As previously mentioned, the disputed domain incorporates the Trademark(s) in its entirety while adding “support” and the dash sign “-” before the “SONY” trademark itself. In cases such as this, where the reputation of Complainant in a given mark is significant and the mark bears strong similarities to the disputed domain name, the likelihood of confusion is such that bad faith on the part of the respondent may be inferred (see, for example, Telstra Corporation Limited v. Peter Yellowlees, WIPO Case No. D2002-0638 and Sony Kabushiki Kaisha v sony.net, WIPO Case No. D2000-1074, Verner Panton Design v. Fontana di Luce Corp WIPO Case No. D2012-1909).
Respondent was using without permission the Complainant’s well-known trademark in order to get traffic on its website and to obtain commercial gain from the false impression created for the Internet users with regard to a potential affiliation or connection with Complainant. This false impression was increased by the incorporation of the Complainant’s “SONY” trademark in the disputed domain names, the unauthorized featuring of the Complainant’s marks and by referencing to itself as a “official service for repair of SONY equipment”.
Furthermore, Respondent is offering services for goods similar to those of Complainant under the Complainant’s trademark. Such use carries a risk of implied affiliation with Complainant (see also: WIPO Case D-2019-2398 (philipszoom.club). It is mala fides to register and use a domain name identical or confusingly similar to a complainant’s trademark that resolves to a website that advertises or offers competing goods and services. Considering the close competitive proximity of the services (inter alia repair of the Complainant’s goods), initial interest confusion arises.
Respondent also failed the conditions required to avail of the “Oki Data” exception, and panels have found that a Respondent’s use of the ineffective disclaimer constitutes an admission of by the Respondent that the users may be confused. WIPO Case D2019-1727 (Philip Morris Products S.A. v. Baryshev Ruslan <remont-iqos.com>).
The lack of response from Respondent to Complainant’s takedown requests to cease and desist, supports an inference of bad faith, and is certainly not a hallmark of a Respondent acting in good faith. See WIPO Case No. D2000-1623 (lack of response considered as a relevant factor in the analysis of bad faith).
Lastly, the Panel finds it relevant that Respondent uses a privacy protection service – Whois Privacy Corp. - to hide its true identity. Complainant refers to WIPO Case D2017-2341 (Sony Corporation v. Domain Admin, Privatewhois.biz) and notes that although privacy services might be legitimate in certain cases, it is difficult to see in the present case why Respondent should need to protect its identity except to make it difficult for Complainant to protect its trademark rights. Complainant notes that in accordance with section 3.6 of the WIPO Overview 3.0 and the cases cited therein, use of such a privacy protection service may in itself constitute a factor indicating bad faith. In the case at hand, it must be concluded that the Respondent is merely attempting to complicate the protection of Complainant's trademark rights by hiding its identity.
Therefore, Respondent is using the disputed domain name to intentionally attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website. Indeed, this conduct additionally confirms that Respondent has used the domain name in bad faith.
(ii) Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct;
In a previous instance, another UDRP proceeding was brought by Complainant against Respondent. Complainant refers to CAC case No. 103930 (Sony Group Corporation v. Alexander Kleshchin – SONY-PROFI.COM), in which the respective domain name was ordered transferred to the Complainant. The same aspects of Paragraph 4(b) of the 1999 UDRP Policy as listed above were applicable in such case, which proves that a pattern of conduct exists in terms of bad faith registration. Previous UDRP panels have held that establishing a pattern of bad faith conduct requires more than one, but as few as two instances of abusive domain name registrations. In this case, which is the second instance of bad faith conduct of Respondent identified by Complainant, it can be considered that the repeated conduct of Respondent is intended to prevent Complainant from reflecting its trademark in a domain name. This pattern is also reflected in CAC case No. 103871 (KONINKLIJKE PHILIPS N.V. v. Nikita Magomedov, Alexander Kleshchin) where the trademark of another brand owner was used in multiple domain names registered by Respondent in an abusive manner.
Aside from the above, the Panel also considers that additional bad faith consideration factors must be assessed. According to paragraph 3.2.1. of the WIPO Jurisprudential Overview 3.0, panels may take additional factors into account when assessing whether the registration of a disputed domain name is in bad faith, such as:
“(v) any respondent pattern of targeting marks along a range of factors, such as a common area of commerce, intended consumers, or geographic location”
A reverse IP search revealed that Respondent also owns a large number of domain names with a similar format (Annex 15). These domain names are combinations of known trademarks in the fields of electronics (e.g. Toshiba, MSI, Acer, HP, Dell, etc.) and generic words that are associated with customer care, repair and/or maintenance service, i.e., “service”, “help”, or similar words, i.e., “supp” and “serv”—which, to Complainant’s understanding, are intended as abbreviations of “support” and “service”. These generic words are used in a similar manner with the element “support” in the domain name in question. It is therefore evident that Respondent is attempting to pass off as an official repair / service center for goods originating from a multitude of (well-known) trademarks. Additionally, these websites have the same layout and design as support-sony.com.
The Panel notes also that Respondent is acting much like the respondent in Case No. D2001-1344 <usedphilips.com> “the Respondent is engaged in a pattern of registering a great number of domain names including other trademarks, such as <usedsanyo.com>, <usedfuji.com>, <usedhewlettpackard.com> and <usedpanasonic.com>, as well as domain names combining the word "used" with another generic term in the electronic field. This pattern indicates that the Respondent registered the disputed domain name in order to prevent the Complainant from reflecting the trademark PHILIPS in a domain name used, for example, for a website related to a second-hand service/market of the Complainant’s products.” This is evidenced also by CAC case No. 103871 (KONINKLIJKE PHILIPS N.V. v. Nikita Magomedov, Alexander Kleshchin), according to which Respondent had registered, in the same manner, multiple domain names containing the trademark PHILIPS, such as <philips-helper.com>, <philips-aid.com>, <phil-rem.com>, <philips-ru.com>, <philips-assist.com>, <remont-philips.com>.
|