The Complainant is Sony Kabushiki Kaisha aka Sony Corporation, Tokyo, Japan, represented by Kenyon & Kenyon, United States of America.
The Respondent is Sony Holland, San Francisco, California, United States of America, represented by Levin Simes Kaiser & Gornick LLP, United States of America.
The disputed domain name <sonyholland.com> (the “Domain Name”) is registered with Tucows.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 8, 2008. On July 8, 2008, the Center transmitted by email to Tucows a request for registrar verification in connection with the Domain Name. On July 8, 2008, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on July 18, 2008. 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 July 24, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was August 13, 2008. The Response was filed with the Center August 13, 2008.
The Center appointed Warwick Smith, Sandra A. Sellers, and William R. Towns as panelists in this matter on September 18, 2008. The Panel finds that it was properly constituted. Each member of 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.
On August 18, 2008, the Complainant submitted a supplemental filing. The Respondent then filed a brief reply on August 19, 2008. Neither supplemental filing had been requested by the Panel. The Center advised the parties that it would be for the Panel in its discretion to determine whether to admit the supplemental filings.
The Complainant is a well-known manufacturer of audio, video, communication and information technology products for personal and professional use. Its business activities cover the music and entertainment sectors.
The Complainant has the trade mark SONY registered in most countries around the world. The Complainant says that its SONY mark has become famous because of its longstanding and extensive use of the mark in connection with its goods and services. The SONY trade mark is distinctive, because it is a fanciful word that does not have any meaning other than to denote the Complainant's goods and services.
The Complainant's registrations of the SONY mark, include United States trade mark registration No. 1,622,127, covering use in connection with “radios, tape recorders audio tapes featuring music recital and educational programs, wired and wireless microphones, pre-recorded cassette tapes featuring musical performances”. The Complainant's rights in its SONY mark in the United States of America, date from the late 1960s.
The Complainant operates a website at “www.sony.com”, and it operates websites at various country code domain names in countries in which it markets and sells its goods and services. One such website is the website for the Netherlands, at “www.sony.nl”.
The Complainant provides online services that allow Internet users to purchase music at Sony Music USA, through the website at “www.sonymusic.com”
The Complainant also operates in partnership with the Bertelsmann Music Group (“BMG”), under the name Sony BMG Music Entertainment. Sony BMG Music Entertainment owns and distributes music under a number of well-known labels, and it operates in a number of countries, including the Netherlands (where it operates as “Sony BMG Music Entertainment (Netherlands)”, and formerly operated as “Sony Music Entertainment (Holland)”). The late Johnnie Cash had a “Greatest Hits” compilation album released under a “Sony Holland” label in 2003, and another popular band, Toto, notes on its official web page that “Sony Holland has released a 3-CD digipack featuring Toto's Greatest Hits on 2 CDs and a bonus CD”. Sony BMG's website at “www.sonybmg.com” features large pictures of various recording artists, including Michael Jackson, Neil Diamond, and Alicia Keys.
The Domain Name was registered on August 31, 2002. The Whois particulars for the Domain Name show the registrant as the Respondent, Sony Holland.
The website at the Domain Name (“the Respondent's website”) is used for the promotion of the Respondent's music career, and prominently features the Respondent's image. The Respondent's website also contains links to other web pages, including a contact information page, and a page dealing with the sale of CDs.
The Respondent says in her Response that, although her full legal name is “Sonia Holland”, she has for years been known to family, friends, and devotees of her jazz music, by her shortened nickname, “Sony”.
According to the Response, the Respondent was born “Sonia Einerson”, and took the legal name “Sonia Peterson” at the time of her first marriage. The Respondent has produced (annex 8 to the Response), a receipt from a Marriott Hotel dated February 10, 1998, showing the Respondent's name as “Peterson/Sony”.
On May 9, 1998, the Respondent married Gerald Holland, taking his surname. A copy of the marriage certificate was produced as an annexure to the Response.
The Respondent says that she had been singing under the name Sony Holland for some years before she first received notice of any dispute with the Complainant. In support of that contention, the Respondent produced copies of Articles from “Jazz Review” and several other publications, all dated between January 2002 and July 2005, referring to the Respondent's music performances or products under the name “Sony Holland”.
The Respondent says that the first she knew of a dispute with the Complainant, was when she received a letter from the Complainant's representatives dated July 1, 2005. That letter asserted the Complainant's rights in the mark SONY, and noted that the Complainant had recently learned that, at least since 2003, the Respondent had released and performed music using the name Sony Holland, and that the Respondent had been operating the Respondent's website. The letter requested that the Respondent transfer her rights in the Domain Name to the Complainant.
The Respondent's representative replied by letter dated September 6, 2005. He noted that there was no disagreement on the basic facts set out in the Complainant's representative's letter dated July 1, 2005. He acknowledged the Complainant's ownership of a SONY trade mark, and acknowledged the Complainant's reputation for quality and innovation in the electronics industry. The Respondent's representative explained that the Respondent had been performing professionally using her name (by then, Sony Holland) since the year 2000. He said that the Respondent had made countless appearances, as well as recording and marketing three albums, under her “Sony Holland” name. The Respondent's representative contended that the Respondent's jazz music differs significantly from, say, a Sony Walkman, so that there would be no risk of confusion in the market between the Complainant's products and the Respondent's performances and CDs. The Respondent denied liability, and declined to transfer the Domain Name to the Complainant.
Further correspondence followed between the parties' representatives through until February 2006. In one letter (dated November 30, 2005), the Respondent's representative referred to what was said to be substantial goodwill the Respondent had built up in the expression “Sony Holland”. The Respondent's representative referred to articles about the Respondent published in widely read newspapers such as the San Francisco Chronicle, the San Francisco Examiner, and a number of others. These articles always referred readers to “www.sonyholland.com”. Also, when well-respected websites had published reviews of the Respondent's CDs, the articles were said to have always referred readers to the Respondent's website for more information. The letter dated November 30, 2005 went on to refer to the Respondent having performed for large crowds at a number of music festivals, with all related listings, mailings, and Internet and print advertising for those events referring readers to the Respondent's website. The Respondent's three albums were said to have been sold to fans spread out across the United States, France, Spain, Thailand, Australia, Japan and Hong Kong, SAR of China, and each CD album was said to have specifically directed the public to the Respondent's website for the purchase of additional albums, and for information concerning the Respondent's upcoming performance schedule. The letter noted that, over the last several years, the Respondent had sent out countless elaborate promotional packets to agents, publishers, promoters, festival directors, referring readers to the Respondent's website for her most current contact information. In summary, the name “Sony Holland” was claimed to be an asset that the Respondent had developed through years of hard work, promotion, and referrals, and in which she had invested heavily.
The parties' representatives repeated and enlarged upon their respective arguments in correspondence which appears to have ended in February 2006. No agreement was reached.
The Complainant contends:
1. The Domain Name is confusingly similar to the Complainant's SONY mark. The incorporation of a trade mark in its entirety in the Disputed Domain name is sufficient to establish that the disputed Domain Name is identical or confusingly similar to the Complainant's registered mark. “Sony” is a made-up word, with no meaning other than as a reference to the Complainant's trade mark. Because of the Complainant's extensive presence in Holland and because Sony BMG Music Entertainment and Sony Music Entertainment in The Netherlands have been referred to as “Sony Holland”, the inclusion of “Holland” not only does not point away from the goods offered by the Complainant, but increases the likelihood that consumers will associate the Domain Name with the Complainant.
2. The Respondent has no rights or legitimate interests in respect of the Domain Name, for the following reasons:
(i) The Respondent is not affiliated with, licensed by, or in privity with the Complainant, and has not been given permission by the Complainant to use its SONY mark.
(ii) Placement of a trade mark on the principal register maintained by the United States Patent and Trademark Office gave the Respondent constructive notice of the Complainant's rights in the SONY mark. In any event, it is inconceivable that the Respondent was unaware of the Complainant's well-known mark when she registered the Domain Name.
(iii) The Respondent cannot rely on the defence that she claims that the Domain Name is her nickname. The Respondent did not adopt the nickname “Sony Holland” until after she married her husband Jerry Holland. Thus, the Respondent adopted the nickname Sony Holland at least three decades after the Complainant began using its SONY mark in the United States, and well after the SONY mark became famous. The Respondent is not affiliated with, licensed by, or in privity with the Complainant, and has not been given permission by the Complainant to use its SONY mark.
(iv) The Respondent's sole motive in adopting “Sony” as a nickname and registering the Domain Name, was to divert customers seeking the Complainant's legitimate website, and to deceive such customers into mistakenly believing that the Respondent's website is sponsored by or affiliated with the Complainant.
(v) If the Respondent were permitted to avoid a transfer of the Domain Name on the basis of her claim that it is her nickname, a terrible precedent would be created, whereby every cybersquatter could avoid the protections intended by the Policy simply by using a misappropriated trade mark as a nickname. In this case, the Respondent did not adopt the nickname “Sony” or “Sony Holland” in good faith before the Complainant owned a valid SONY trade mark. It would be an injustice and create an inequitable loophole, contrary to the intent of the Policy, if the Respondent were permitted to retain the Domain Name.
(vi) The Respondent is not making a legitimate noncommercial or fair use of the Domain Name, without intent to misleadingly divert consumers or tarnish the SONY mark. The Respondent is using the Domain Name for commercial purposes, to direct consumers to the Respondent's website through the use (in the Domain Name) of the SONY mark. Both the Complainant and the Respondent are in the business of promoting artists and selling music, and the Respondent is infringing the SONY trade mark in an attempt to cause confusion and free-ride off the fame of the SONY mark. The Respondent therefore can have no right or legitimate non-commercial or fair use interest in the Domain Name. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy.
6. The Domain Name was registered and is being used in bad faith:
(i) The Complainant's SONY mark is a distinctive and famous trade mark. Since the Domain Name incorporates that famous mark, it is therefore established that the Respondent has registered and is using the Domain Name in bad faith (citing Pavillion Agency, Inc., Cliff Greenhouse and Keith Greenhouse v. Greenhouse Agency Ltd., and Glenn Greenhouse, WIPO Case No. D2000-1221).
(ii) The Respondent is using the Domain Name to confuse consumers and draw Internet users to the Respondent's website. The usurpation of the Complainant's trade mark, coupled with its use in the same industry, indicates that the Respondent has taken affirmative steps to create a false connection between the Complainant and herself, such that individuals would believe that her business is somehow approved or sponsored by the Complainant.
(iii) Additionally, the Complainant has sought to resolve the matter directly with the Respondent over the last three years. While the Complainant initially offered to provide compensation in the amount of USD 1,000, together with a phase-out period to compensate the Respondent for whatever expenses she might incur in connection with the transfer of the Domain Name, the Respondent demanded USD 50,000. The demand for such an excessive amount is further evidence of bad faith.
The Respondent contends:
1. The Respondent does not dispute that, prior to the Respondent's registration of the Domain Name, the Complainant had rights in the mark SONY. The only issue under paragraph 4(a)(i) of the Policy, is whether the Domain Name looks like the SONY trade mark. Though it may be arguable, the Respondent concedes the point.
2. The Respondent has a right or legitimate interest in respect of the Domain Name, having regard to the following:
(i) The Complainant's analysis of what it has to prove under paragraph 4(a)(ii) of the Policy is misleading. It is not sufficient for the Complainant to prove that the Respondent had notice of the Complainant's SONY mark before she registered the Domain Name. The Complainant fails to correctly apply paragraph 4(c)(i) of the Policy, which provides that a respondent may establish rights or legitimate interests in a disputed domain name by demonstrating use of the disputed domain name in connection with a bona fide offering of goods or services prior to the respondent's receipt of any notice of the dispute. Even assuming that the Respondent in this case had actual notice of the Complainant's mark prior to registering the Domain Name, the Respondent's awareness of that mark, standing alone, does not constitute notice to the Respondent of a dispute for the purposes of paragraph 4(c)(i).
(ii) The Complainant's reliance on the decision in Oakley Inc. v. Kenneth Watson, WIPO Case No. D2000-1658, in support of its construction of paragraph 4(c)(i) of the Policy, is misplaced. In that case, the panel found that the respondent had never used the disputed domain name in connection with an offering of goods or services, and that the respondent had registered the disputed domain name in bad faith. In this case, the Respondent's first notice of the dispute came in the form of the letter from the Complainant's representative dated July 1, 2005.
(iii) The letter dated July 1, 2005 contains perhaps the best evidence that the Respondent was engaged in a bona fide commercial endeavor through the Respondent's website. The letter included the following sentence: “Sony has recently learned that at least since 2003, you have released and performed music using the name SONY HOLLAND and currently maintain a website at [the Respondent's website].”
(iv) The articles in “Jazz Review” and other publications between January 2002 and July 2005, provide further evidence of the Respondent's use of the name “Sony Holland” prior to her receiving notice of the present dispute.
(v) The fact that the Complainant's trade mark filing preceded registration of the Domain Name is of no consequence. The Respondent was engaged in bona fide commercial activities under the name Sony Holland, at least 3 years prior to notice of any dispute.
(vi) The Respondent has been and is commonly known by the Domain Name. Where a respondent is “commonly known” by a disputed domain name, not even a grossly overbroad assertion of trade mark rights will entitle a complainant to a transfer of the disputed domain name (citing Alliance Bernstein L.P. v. Alliance Investment Management Ltd., WIPO Case No. D2007-0589).
(vii) The Complainant has provided no evidence that the Respondent's nickname is “based on Complainant's mark”. None of the evidence before the Panel suggests that the nickname “Sony” is anything other than what the Respondent says it is: short for “Sonia”.
(viii) There is precedent in previous panel decisions under the Policy, that a nickname may satisfy the requirements of paragraph 4(c)(ii) of the Policy – see Fendi Adele S.r.l v. Manfred Fandl, WIPO Case No. D2007-1432, Penguin Books Limited v. The Katz Family and Anhtony Katz, WIPO Case No. D2000-0204, Vanguard Medica Limited v. Theo McCormick, WIPO Case No. D2000-0067, and SAP AG v. Chris Pranzini, WIPO Case No. D2006-1525. The Respondent is entitled to sing under her nickname, married name, or whatever name by which she is commonly known, and she is entitled to retain the Domain Name.
(ix) The Respondent acknowledges that the Respondent's website is used in a commercial endeavor, namely the promotion of the Respondent's singing career.
3. The Domain Name was not registered, and has not been used, in bad faith:
(i) It is not enough for a finding of bad faith, that the Domain Name incorporates the SONY mark. The Complainant has not provided any evidence of bad faith, because there is none.
(ii) None of the examples of bad faith registration and use set out at paragraph 4(b) of the Policy apply. Paragraph 4(b)(i) does not apply – it was the Complainant who approached the Respondent, first with threats, then with offers. The Respondent thought carefully about her investment in the Respondent's website, and responded in good faith.
(iii) The Domain Name was not registered to prevent the Complainant from reflecting its SONY mark in a corresponding domain name, and the Respondent has not engaged in a pattern of such conduct. The Respondent simply registered the Domain Name to promote her singing.
(iv) The Complainant and the Respondent are not competitors, therefore paragraph 4(b)(iii) of the Policy could not apply. At the website at “www.sony.nl”, the Complainant sells electronics. At the website at “www.sony.bmg.com”, the Complainant's focus is on recorded-music operations. The Complainant's focus is described on the website at that domain name, as “developing music talent, finding new repertoire, helping established artists branch out in new areas, and exploring new avenues to promote and market music”. By contrast, the Respondent simply registered the Domain Name to promote her singing.
(v) Paragraph 4(b)(iv) does not apply either. There is no likelihood of confusion between the Respondent's website and the Complainant's websites. Anyone visiting the Respondent's website, looking for the Complainant, would realize very quickly that he or she was in the wrong place. Moreover, the Respondent offered to include a statement of non-affiliation, if the Complainant felt it would resolve the dispute.
4. The Complainant has been guilty of reverse domain name hijacking in bringing this Complaint. In the initial letter, the Complainant's representative admitted that the Respondent was engaged in a legitimate commercial endeavor, under a name by which she was commonly known. Those facts alone made the Complaint untenable, and an abuse of process. In an attempt to obfuscate those facts, the Complainant's counsel knowingly and in bad faith presented to the Panel misstatements and omissions of the applicable precedent.
There is no provision in the Rules permitting the parties to file supplemental statements. The Policy prescribes a summary process, under which each party has one opportunity to present its case. However, the Panel may in its discretion request such statements in appropriate circumstances.
Generally, panels deciding cases under the Policy have been reluctant to admit further statements, except in a limited range of circumstances where justice or procedural fairness requires that a party should be entitled to make a further filing. Examples of such circumstances include cases where a respondent produces material evidence or argument in his or her response which the complainant could not reasonably have anticipated at the time of filing of the Complaint, and situations where it appears to the panel that a respondent's allegation of reverse domain name hijacking, which the complainant could not have foreseen, might have some merit. In such cases, procedural fairness may require that a party should have the opportunity to file a supplemental submission.
None of those circumstances apply in this case. The supplementary filings appear to consist primarily of re-statements or refinements of the arguments presented in the Complaint and the Response, and, for the reasons set out in Section 6F of this decision, procedural fairness does not require that the Complainant be permitted to file a reply to the allegations of reverse domain name hijacking.
For the foregoing reasons, the Panel declines to admit either of the supplemental filings.
Under Paragraph 4(a) of the Policy, a complainant has the burden of proving the following:
(i) That the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) That the respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) That the disputed domain name has been registered and is being used in bad faith.
Paragraph 15(a) of the Rules requires the panel to:
“decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any Rules and principles of law that it deems applicable.”
The Respondent acknowledges the Complainant's rights in its SONY mark, and acknowledges that that mark is confusingly similar to the Domain Name. The Panel considers that those concessions were properly made.
The Complainant therefore succeeds on this part of the Policy.
Paragraph 4(c) of the Policy sets out a number of circumstances which, without limitation, may be effective for a respondent to demonstrate that it has rights to, or legitimate interests in, a disputed domain name, for the purposes of Paragraph 4(a)(ii) of the Policy. Those circumstances are:
(i) Before any notice to [the respondent] of the dispute, use by [the respondent] of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
(ii) Where [the respondent] (as an individual, business, or other organization) [has] been commonly known by the disputed domain name, even if [the respondent has] acquired no trade mark or service mark rights; or
(iii) Where [the respondent is] making a legitimate noncommercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade mark or service mark at issue.
If the circumstances are sufficient to constitute a prima facie showing by the Complainant of absence of rights or legitimate interests on the part of the Respondent, the evidentiary burden shifts to the Respondent to show, by plausible, concrete evidence, that he or she does have a right or a legitimate interest in the Domain Name.
That approach is summarized in the Center's online document “WIPO Overview of WIPO Panel Views on Selected UDRP Questions”, as follows:
“A Complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP.”
In this case, the Panel considers that the Complainant has made out a sufficient prima facie case. The Domain Name is confusingly similar to the Complainant's SONY mark, and the Complainant has not authorized the Respondent to use its mark, whether in a domain name or otherwise. The Complainant and its mark are well-known in numerous countries around the world, and one of those countries is Holland. In combination, the factors just mentioned are sufficient to establish a prima facie case, and move the evidentiary onus under paragraph 4(a)(ii) of the Policy, to the Respondent.
The Respondent claims that she has rights or legitimate interests in the Domain Name, under both subparagraphs (i) and (ii) of paragraph 4 (c) of the Policy. First, she claims that, before she received any notice of the dispute, she had been using the Domain Name in connection with a bona fide offering of goods or services (the subparagraph 4 (c)(i) defence). Secondly, she claims that she has been “commonly known by” (i) the name “Sony” (an abbreviation of her given name “Sonia”, by which she has been known since her early childhood), and (ii) by ”Sony Holland” (since she married Mr. Holland in May of 1998) – the subparagraph 4(c)(ii) defense.
Turning first to the Respondent's claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy , there is no evidence of the Respondent being given notice of the present dispute before she received the first communication from the Complainant's representative in July of 2005. The evidence (in the form of extracts from “Jazz Review”, and the other publications produced by the Respondent) shows that, by that date, the Respondent had been singing professionally under the name “Sony Holland” for at least three years. She had also been using the Respondent's website to promote her singing career. The Respondent was and is a professional singer, so there can be no doubt that she had been using the Domain Name in connection with an “offering of services” (within the meaning of paragraph 4(c)(i) of the Policy), before she received notice of the present dispute from the Complainant's representative in July 2005. The only remaining question under Paragraph 4(c)(i), is whether she was acting bona fide in so doing.
Whether the Respondent acted bona fide, involves essentially the same considerations as the Panel is required to address under paragraph 4(a)(iii) of the Policy, under which the onus is on the Complainant to prove that the Respondent registered and has used the Domain Name in bad faith. In the view of the case to which the Panel has come, the Complainant has failed to discharge its burden of proof under paragraph 4(a)(iii) of the Policy, so the Complaint must fail on that account alone. The Panel is also of the view that the Respondent has produced (just) sufficient evidence to establish a right or legitimate interest on the “commonly known by” grounds. For those reasons, it is not necessary for the Panel to express any view on whether the Respondent has discharged her onus of proof under paragraph 4(c)(i) of the Policy, and the Panel elects not to do so.
The Panel must approach the claim to a right or legitimate interest on the “commonly known by” ground, with considerable caution. Such claims are very easily made, and of course if they are upheld, that is sufficient on its own to defeat a complaint under the Policy. The Panel agrees with, and respectfully adopts, the approach followed by the panel in Banco Espirito Santo S.A. v. Bancovic, WIPO Case No. D2004-0890, where the panel said:
“Since a ‘legitimate interest' is sufficient in order to defeat a Complaint under the Policy, a Panel must be careful when considering whether or not a claim by the Respondent that he or she has been “commonly known by” the domain name is legitimate. It is not sufficient for the Respondent to merely assert that he or she has been commonly known by the domain name in order to show a legitimate interest. The Respondent must produce evidence in order to show that he or she has been “commonly known” by the domain name. See e.g., Red Bull GmbH v Harold Gutch, WIPO Case No. D2000-0766, where the Panel rejected the claim that Respondent was known by the nickname “Red Bull” since childhood because Respondent did not provide any evidence to support the contention. See also, e.g., DIMC Inc., & The Sherwin-Williams Company v. Quang Phan, WIPO Case No. D2000-1519, where the Panel rejected claim that Respondent was known by the nickname “Krylon” due to absence of evidence when alleged nickname was adopted and how it was used.”
That passage from the decision in Banco Espirito Santo S.A., was later adopted and applied by the panel in Sanderling Pty Ltd, trading as Thimblelady v. Roxanne International, WIPO Case No. D2007-0385.
The cases referred to in the passage from the Banco Espirito Santo S.A. case quoted above, illustrate that the “commonly known by” defense can, where a respondent presents satisfactory evidence of the same, be invoked in respect of a nickname. That position has been accepted in other panel decisions, including Fendi Adele S.r.l. v. Manfred Fandl, WIPO Case No. D2007-1432, Penguin Books Limited v. The Katz Family and Anthony Katz, WIPO Case No. D2000-0204, Vanguard Medica Limited v. Theo McCormick, WIPO Case No. D2000-0067, and SAP AG v. Chris Pranzini, WIPO Case No. D2006-1525.
In this case, the Panel is satisfied that the Respondent has gone beyond “mere assertions” in her attempt to establish the “paragraph 4(c)(ii) right or legitimate interest”. While she has not produced much in the way of contemporaneous documents showing that she has been commonly known by the name “Sony” (and she has produced nothing at all from her childhood), the February 1998 receipt from the Marriott Hotel, in the name of “Peterson/Sony”, cannot be ignored. The marriage certificate issued a few months later sufficiently proves that the Respondent's surname in early 1998 was “Peterson”, so there is evidence to support the Respondent's claim that, by early 1998 at least, she was commonly known by the forename, or given name, “Sony”. After her marriage to Mr. Holland in May of 1998, the Respondent's claim that she took on the name “Sony Holland” is clearly plausible – women around the world take on their husband's surname when they get married.
The Panel does have some concern that the Respondent did not produce any evidence showing that she was commonly known as “Sony” before February 1998, or that she was commonly known by the name “Sony Holland” in the period between May 1998 when she married Mr. Holland, and June 2002, being the date of the first of the extracts from publications showing the Respondent using the name “Sony Holland” in her career as a professional singer. However the Respondent's representative did say in his letter dated September 6, 2005, that [the Respondent] “has performed professionally using her name since the year 2000”, and it seems improbable that an attorney would make an assertion like that (it appears to be one which could easily have been checked) in correspondence with an adverse party, if it was not correct. Also, the Panel is conscious of the fact that documentary proof that one is commonly known by a particular nickname might not always be easy to find, especially going back to childhood times. Formal documents retained from childhood are perhaps unlikely to show nicknames.
In the end, the Panel is of the view that the Respondent has produced just sufficient evidence in support of her “commonly known by” claim, to meet the requirements of the Banco Espirito Santo S.A. test referred to above. Her claims are not implausible, and in an administrative proceeding such as this, where there is no discovery of documents and the Panel does not have the benefit of seeing the parties' cross-examined, the Panel has little basis for rejecting them.
Before leaving this part of the decision, it is appropriate to refer to certain of the Complainant's submissions. First, the Complainant submits that the Respondent did not adopt the nickname “Sony”, in good faith, before the Complainant owned a valid SONY trade mark. In the Panel's view, it is not necessary (for the “commonly known by” defense to succeed) that the Respondent should have adopted the nickname before the Complainant acquired its trade mark rights. A respondent, living in a country distant from a complainant trade mark owner, might have become commonly known by a disputed domain name without ever having heard of the complainant. In such a case, the Panel considers that there would be no doubt that the respondent would be entitled to the safe harbor protection of paragraph 4(c)(ii) of the Policy. The Complainant's real argument would seem to be that a respondent who adopts a nickname which is confusingly similar to a well-known trade mark, for the express purpose of later registering the nickname as a domain name (in order to trade off the trade mark owner's goodwill in its mark), should not be entitled to invoke the paragraph 4(c)(ii) defense in answer to a complaint by the trade mark owner under the Policy. The question of whether the “commonly known by” defense might be limited to circumstances where the respondent shows that he or she has not acted in bad faith, is certainly an interesting one, but it is a question for another case on another day – for the reasons set out in this part of this decision, and under the bad faith heading below, the Panel is not persuaded on the balance of probabilities that the Respondent adopted the “Sony Holland” name with a view to trading off the Complainant's goodwill in its mark.
Secondly, the Complainant submits that, because of the similarity between the goods sold by the parties (presumably a reference to the sale of CDs), the Panel should infer that the Respondent's sole motivation in adopting “Sony” as a nickname and registering the Domain Name, was to divert to the Respondent's website consumers looking for the Complainant's website. The difficulty with that submission, is that it is not supported by the evidence. The certified Response asserts that the Respondent has been known by the nickname “Sony” since her childhood, and there is independent evidence (the Marriott receipt) that she was known by the nickname “Sony” some two years before she embarked on her professional singing career (assuming that to have occurred in the year 2000), and some four and a half years before she registered the Domain Name. It may be doubted that the Complainant would have complained at all if the Respondent had remained Ms. Peterson (which appears to have been her married name under an earlier marriage), and registered the domain name <sonypeterson.com> – the real problem for the Complainant appears to be that the person the Respondent married, and whose name she took, happened to have a surname that is also the name of a country in which the Complainant does business. That may be an unfortunate circumstance for the Complainant, but on the evidence which has been produced it does not provide a basis for the Panel to infer that the Respondent's motivation was to divert the Complainant's customers (or would-be customers) to the Respondent's website.
Thirdly, the Complainant submits that it would be a “huge injustice and it would create an inequitable loophole contrary to the intent of the UDRP to allow Respondent to retain the Disputed Domain Name under these facts.” Again, the argument fails on the facts as proved (or more accurately, as not proved). The Respondent asserts that she has been known as “Sony” since she was a child, and there is apparently reliable, independent evidence that the she was known as “Sony” in early 1998. There is even more reliable evidence that the Respondent became Mrs. Holland in that year, and it is entirely plausible that she would have become known as “Sony Holland” at that point. If the Respondent has been or is in the future guilty of trade mark infringement, or other infringement of the Complainant's legal rights, the Complainant is free to issue infringement proceedings in an appropriate court. But in this administrative proceeding, the Panel is obliged to do no more than apply the Policy to the facts, and that includes applying Paragraph 4(c)(ii) where a respondent has produced sufficient evidence to justify a finding of right or legitimate interest under that paragraph.
The Respondent having made out her claim to a right or legitimate interest under paragraph 4(c)(ii) of the Policy, the Complaint fails and must be dismissed.
Paragraph 4(b) of the Policy lists a number of circumstances which, without limitation, are deemed to be evidence of the registration and use of a disputed domain name in bad faith. Those circumstances are:
(i) Circumstances indicating that [the respondent has] registered or acquired the disputed 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 trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of [the respondent's] documented out-of-pocket costs directly related to the disputed domain name; or
(ii) Where [the respondent has] registered the disputed domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that [the respondent has] engaged in a pattern of such conduct; or
(iii) Where [the respondent has] registered the disputed domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) Where, by using the disputed domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent's] website 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 [the respondent's] website or location or of a product or service on [the respondent's] website or location.
The onus of proof under this part of the Policy is on the Complainant, and in the Panel's view the Complainant has not discharged that onus.
None of the examples of bad faith registration and use set out above appear to apply. First, there is no evidence that the Respondent registered the Domain Name for the purpose of selling it at a profit to the Complainant (or to a competitor of the Complainant). The Respondent has provided a plausible explanation for her choice of the Domain Name, and she appears to have used the Domain Name legitimately, to promote her singing career. She appears to have used the Domain Name for two or three years before the Complainant approached her in July 2005, and the negotiations which followed do not in the circumstances (consistent prior use of the Domain Name for 2 to 3 years to promote the Respondent's singing career) provide any useful evidence of an intention to sell to the Complainant at the time the Domain Name was registered back in August 2002.
There is no proof of any “pattern of such conduct”, so paragraph 4(b)(ii) of the Policy has no application.
Similarly, there is no evidence that the Respondent registered the Domain Name for the purpose of disrupting the business of a competitor. The Complainant and the Respondent do not appear to be competitors, and the overall impression the Panel has of the evidence, is that the Respondent registered the Domain Name for the purpose of promoting her singing career. There is no proof of circumstances falling within paragraph 4(b)(iii) of the Policy.
Likewise, the Complainant has failed to satisfy the Panel that the Respondent registered the Domain Name for the purpose described at paragraph 4(b)(iv) of the Policy. The Panel accepts the Respondent's submission that an Internet browser arriving at the Respondent's website, looking for a website of the Complainant, would immediately appreciate that he or she was in the wrong place. This is not a case where the disputed domain name resolves to a landing page, where the respondent derives “click-through” revenue from site visitors who arrive at the respondent's website and then “click –through” to sponsored third party sites. In such cases, the respondent clearly benefits from the increased web traffic generated by what is commonly referred to as “initial interest confusion”, arising out of the identity or confusing similarity of the disputed domain name to the complainant's trade mark – a proportion of browsers who mistakenly arrive at such a landing page site will click on the links to third party sites, and thus provide the respondent website operator with additional revenue. There is no suggestion of anything like that in this case.
The Panel does not see any other basis for a finding of bad faith registration and use, so the Complaint also fails on this issue.
Although the Complaint has not succeeded, the Panel does not see this as a case for a finding of reverse domain name hijacking. Paragraph 1 of the Rules defines reverse domain name hijacking as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name.” To prevail on such a claim, a respondent must show that the complainant knew of the respondent's unassailable rights or legitimate interests in the disputed domain name or the clear lack of bad faith registration and use, and nevertheless brought the complaint in bad faith. Sydney Opera House Trust v. Trilynx Pty. Ltd., WIPO Case No. D2000-1224, and Goldline International, Inc. v. Gold Line, WIPO Case No. D2000-1151.
Applying this standard to the facts of this case as set out under the foregoing headings, the Panel concludes that the Respondent's claim of reverse domain name hijacking has not been established. The Panel does not see this as a case that was obviously doomed to failure before it was filed, and which must therefore have been brought in bad faith. The Respondent's allegation of reverse domain name hijacking is dismissed.
For all the foregoing reasons, the Complaint is denied.
Warwick A Smith | |
Sandra A. Sellers | William R. Towns |
Dated: October 2, 2008