Decision for dispute CAC-UDRP-107313

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.

The Complaint has been filed by multiple Sony entities, i.e. Sony Interactive Entertainment Inc (Complainant No. 1) and its subsidiaries Sony Interactive Entertainment Europe Limited (Complainant No. 2) and Sony Interactive Entertainment LLC. (Complainant No. 3), hereafter jointly referred to as “Complainant”.

The Complainant is a wholly owned subsidiary of Sony Group Corporation, and the company responsible for the PlayStation® gaming console and related products and services. 

The Complainant is the owner of numerous “Astro Bot” trademarks, which is the subject of trademark registrations in various countries since at least 2018, for various products and services in the field of entertainment services and video game:

• The Singapore trademark word registration No 40201809985U for "Astro Bot", registered on December 20, 2018;
• The Australian trademark word registration No.  2383474 for "ASTRO BOT", registered on August 25, 2023;
• The International trademark registration No. 1484524 for "ASTRO BOT RESCUE MISSION" (figurative mark), registered on June 25, 2019;
• The International trademark word registration No. 1774820 for "ASTRO BOT", registered on September 5, 2023;
• The International trademark registration No. 1776119 for "ASTRO BOT" (figurative mark), registered on September 5, 2023;
• The European trademark word registration No. 018917718 for "ASTRO BOT", registered on December 19, 2023;
• The European Union trademark No. 018917753 for "ASTRO BOT" (figurative mark), registered on December 19, 2023;
• The Chinese trademark No. 42302846 for "ASTRO BOT" (word mark), registered on 7 April 2021;
• The Chinese trademark No. 42299011 for "ASTRO BOT" (word mark), registered on 07 October 2020;
• The UK trademark No. UK00003949670 for "ASTRO BOT" (word mark), registered on 19 January 2024; and
• The UK trademark No. UK00003949672 for "ASTRO BOT" (figurative mark), registered on 19 January 2024,

hereninafter referred to collectively and individually as the "Trademark”.

The Complainant is a wholly owned subsidiary of Sony Group Corporation, and the company responsible for the PlayStation® gaming console and related products and services. The Complainant, through its extensive sales and services, enjoys a global reputation. Globally, the Complainant has 116 million active monthly users on its PlayStation Network, and 47.4 million subscribers to its PlayStation Plus service.

The Complainant is also the developer and publisher of Astro Bot, a series of augmented reality and platform games. The Astro Bot series comprises of: Astro Bot Rescue Mission, 2018; Astro's Playroom, the 2020 sequel to Astro Bot Rescue Mission and Astro Bot, the 2024 sequel to Astro's Playroom. Global sales of Astro Bot reached 1.5 million copies in the first 2 months of release.

The disputed domain names were registered on different dates but within the same time frame, at a few days interval:

• <astrobotplush.com> was registered on 10 September, 2024;
• <astrobotmerch.com> was registered  on 16 September, 2024;
• <astrobotmerchs.com> registered  on 20 September, 2024.

At the time of filing the Complaint, the disputed domain names resolved to websites that targeted the Complainants’ trademarks and business by displaying an online shop, which appeared to be fraudulent.

COMPLAINANT:

The Complainant contends that the disputed domain names are confusingly similar to the Trademark and that its Trademark rights predate the registration of the disputed domain names.

Furthermore, the Complainant contends that the Respondent has no rights or legitimate interests in the disputed domain names. In this regard, the Complainant states that the Respondent is not commonly known by the disputed domain names, that it is not affiliated with nor authorized by the Complainant in any way, that the Complainant does not carry out any activity for, nor has any business with the Respondent, and that neither license nor authorization has been granted to the Respondent to make any use of the Trademark or apply for registration of the disputed domain names by the Complainant. Moreover, the Respondent is not using the disputed domain names for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, until recently, the disputed domain names resolved to websites that targeted Complainants’ trademarks and business by displaying an online shop, which was fraudulent.

Finally, the Complainant contends that the disputed domain names were registered and are being used in bad faith. It contends that the Respondent must have been aware of the Complainant and its Trademark at the time of registration of the disputed domain names as the Trademark is well-known. The Respondent registered and used the disputed domain names to mislead Internet users into believing they were official and/or authorized websites of the Complainant.

RESPONDENT:

Out of the three Respondents, i.e panen grup / willyanto shyaputra (Respondent No. 1), Shenzhen Yunnuotaifeng Tech Co., Ltd. / Jason King Respondent No. 2), Prodip Mondal (Respondent No. 3) only the Respondent No. 1 filed a response with the following content:

"First of all,
I bought this domain (astrobotmerch.com) because at that time it was sold in the Aged domain / Expired domain category at Namecheap. I had no intention of creating or referring to a particular brand in purchasing the domain.

I only bought the domain sold at Namecheap because I saw its value (DA PA points) on a particular site, potentially making it easy to be indexed on Google rank for the development of my Landing Page branding website.

If there is a dispute regarding the domain, and you want to have the domain, I ask for compensation for the time and money I have spent to do research for the domain name."

The Respondent No. 2 and No. 3 did not file an administratively compliant Response. 

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

Multiple Complainants

In the present proceedings, there are three Complainants, namely, Sony Interactive Entertainment Inc (Complainant No. 1) and its subsidiaries Sony Interactive Entertainment Europe Limited (Complainant No. 2) and Sony Interactive Entertainment LLC (Complainant No. 3).

Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “UDRP Rules”) and Rule 3(a) of the Czech Arbitration Court’s Supplemental Rules (the “CAC Suppplemental Rules”) provide that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” Rule 3(a) of CAC's Supplemental Rules further states that “It is possible to file a Class Complaint provided the following conditions are met: The Class Complaint is based on legal arguments applicable equally, or substantially in the same manner, to all the disputed domain names; (..)".

Previous UDRP decisions have established that multiple complainants may submit a single complaint if they can demonstrate a sufficient connection, such as a licensing arrangement, a partnership, or an affiliation that justifies them acting as a single entity for the purposes of the proceeding. See Athleta (ITM) Inc., Banana Republic (ITM) Inc., and Gap (ITM) Inc. v. Web Commerce Communications Limited, UDRP-105823, CAC November 7, 2023 (the three named “Complainants are subsidiaries of The Gap, Inc” and “[t]herefore, the Panel finds that consolidation would be fair and equitable”), also Procter & Gamble Business Services Canada Company, The Gil-lette Company LLC, Braun GmbH and The Procter & Gamble company v. Whois privacy protection service, et al., D2017-1493, WIPO Oct. 6, 2017 (consolidation of multiple complainants found to be equitable and procedurally efficient where “[t]he Complainant Procter & Gamble is a parent company of the First Three Complainants. Therefore, the evidence shows that the Complainants have a common grievance against the Respondents by virtue of having common legal interest.”).

The Complainants assert that they have a licensing relationship and are part of the globally operating Sony Group Corporation.

In view of the above, the Panel finds that there exists a sufficient nexus or connection between the Complainants and therefore treats them as a single entity in this proceeding. Accordingly, unless individual reference is necessary, Complainants shall be collectively referred to as “Complainant” in this decision. 

Multiple Respondents - Consolidation

The Complainants request the consolidation of all of the disputed domain names into the present proceedings.

The Complainants assert that all of the disputed domain names are owned or under the effective control of a single person or entity, or a group of individuals acting in concert.

The Complainants support its request with the following arguments:

1. The disputed domain names use a similar naming pattern, namely the entirety of the Complainant’s trademark, accompanied by a generic term.
2. The disputed domain names have been registered at the same Registrar, namely Namecheap.
3. The disputed domain names have been registered within the same time frame, at a few days interval (September 10, 16, and 20 2024).
4. The disputed domain names resolve (or used to resolve) to similar websites that feature similar content and serve the same function. Namely, web shops impersonating Complainant and depicting its Trademarks, which serve the same function, namely, the (supposed) unauthorized sale of Astrobot merchandising.

Paragraph 3(c) of the UDRP Rules states that "a complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder". In addressing the Complainants’ request, the Panel will consider whether (i) the disputed domain names or corresponding websites are subject to common control; and (ii) the consolidation would be fair and equitable to all Parties. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 4.11.2.

(i) As regards common control, the Panel notes in particular that all the disputed domain names resolved to copycat websites that featured the Trademark and photos of the Complainants’ products / ASTRO BOT merchandise. Owing to the above and the fact that the composition of the disputed domain names is very similar, the Panel finds that the disputed domain names identified in the Complaint, on the balance of probability, are registered by the same domain name holder or are at least under common control.

(ii) As regards fairness and equity, the Panel sees no reason why the consolidation of the disputes would be unfair or inequitable to any Party. Respondent No. 1 did not express any concerns in its Response and no further response was filed.
Accordingly, the Panel decides to consolidate the disputes regarding the nominally different disputed domain name registrants (referred to below as “the Respondent”) in a single proceeding.

Language of the Proceedings

The Panel notes that the Registration Agreement is in English and the Response was filed in English. There was no objection to the language of the proceedings by the Respondent, therefore the proceedings can be conducted in the default language as per Paragraph 11 of the UDRP Rules.

The Panel is further satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the disputed domain names are identical or confusingly similar to the Complainant's trademark; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain names; and

(iii) the disputed domain names have been registered and are being used in bad faith.

Confusing Similarity

1. The Panel accepts that all disputed domain names are confusingly similar to the Trademark as they fully incorporate it. The addition of the generic terms "plush" "merch" and "merchs" are not sufficient to escape the finding that the disputed domain names are confusingly similar to the Trademark. It is also clear that the Trademark predates the registration of all disputed domain names.

No rights or legitimate interests 

2. The Complainant has substantiated that the Respondent has no rights or legitimate interests in the disputed domain names. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy. With respect to the Respondent's Response

"I bought this domain (astrobotmerch.com) because at that time it was sold in the Aged domain / Expired domain category at Namecheap. I had no intention of creating or referring to a particular brand in purchasing the domain.

I only bought the domain sold at Namecheap because I saw its value (DA PA points) on a particular site, potentially making it easy to be indexed on Google rank for the development of my Landing Page branding website."

the Panel finds that evidence suggests otherwise, namely that the Respondent cannot prove any legitimate offering of goods or services under the Complainants Trademarks as there was no liscence or the like, and that Respondent was and is not using the disputed domain names in connection with any bona fide offering of goods or services (or legitimate noncommercial or fair use), as the websites under the disputed domain names made an unauthorised used of the Trademark and the brand of the Complainants and suggested the sale of unauthorised ASTRO BOT products using the Trademark.

Therefore the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain names.

Bad faith Registration and Use

3.1 The Panel is satisfied that the Respondent registered the disputed domain names with full knowledge of the Complainants and their rights in the Trademark as the Trademark is highly distinctive, well-established and well-known.

3.2 Furthermore, the Complainants assert that the Respondent registered and is using the disputed domain name in bad faith by disrupting the Complainant’s business and misleading Internet users for commercial gain. When a respondent impersonates a complainant through a disputed domain name, such conduct may constitute bad faith disruption under Policy paragraph 4(b)(iii) and an attempt to attract users for commercial gain under Policy paragraph 4(b)(iv). 

As previously noted, the Respondent’s website prominently displays the Complainant’s Trademark (as such and on various products / merchandise). The Panel finds that Respondent’s use of the disputed domain names disrupts Complainant’s business by misleading consumers and falsely suggesting an affiliation with the Complainants. This conduct serves to redirect Internet users to the Respondent’s website, thereby exploiting the Complainant’s goodwill. 

In its Response, the Respondent is not asserting anything to the contrary and is not rejecting any of the Complainant's specific arguments made in this regard.

In light of the above, the Panel finds that the Complainant has satisfied paragraph 4(a)(iii) and that the disputed domain names have been registered and used in bad faith.