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and Mediation Center
ADMINISTRATIVE PANEL DECISION
Sony Ericsson Mobile Communications AB v. Viacerta AB
Case No. DNU2006-0002
1. The Parties
The Complainant is Sony Ericsson Mobile Communications AB, of Lund, Sweden, represented by Bevan Brittan LLP, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Viacerta AB, of Sweden.
2. The Domain Name and Registrar
The disputed domain name <sonyericson.nu> is registered with .NU Domain
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on September 8, 2006. On September 12, 2006, the Center transmitted by email to .NU Domain Ltd. a request for registrar verification in connection with the domain name at issue. On September 13, 2006, .NU Domain Ltd. 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. The Center verified that 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 September 15, 2006. In accordance with the Rules, paragraph 5(a), the due date for Response was October 5, 2006. The Response was filed with the Center on October 5, 2006.
With reference to the Response (see further below under “Respondent”), the Complainant requested suspension of the proceedings on October 13, 2006, as it seemed that the dispute could be settled without a formal UDRP Proceeding. The Center, on October 13, 2006, confirmed that the administrative proceeding was suspended until November 16, 2006.
Upon request from the Complainant, the proceedings were reinstituted on November 16, 2006.
The Center appointed Petter Rindforth as the sole panelist in this matter on December 7, 2006. 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.
The Administrative Panel shall issue its decision based on the Complaint, the
Response, the Respondent’s e-mail message of November 17, 2006, the Policy,
the Rules, and the Supplemental Rules. The case before the Panel was conducted
in the English language.
4. Factual Background
The Complainant is a joint venture between Telefonaktiebolaget LM Ericsson of Sweden and the Sony Corporation of Japan. By virtue of this joint venture in October 2001, the Complainant is entitled to use the combination of the trademarks SONY and ERICSSON for mobile telephones and accessories. The Complainant owns the intellectual property of the joint venture including all of its worldwide trademark applications and registrations and domain name registrations. The vast majority of these domain names incorporate the mark SONY ERICSSON.
The Complainant employs approximately 5,000 people around the world with a customer base in excess of 6 million in Japan alone. The Complainant’s website at <sonyericsson.com> currently attracts more than 5 million unique visitors per month and generates on average millions of hits per day. The Swedish specific website can be found at <sonyericsson.se>. The latest statistics available indicate that the Swedish website attracted nearly 750,000 visitors during August 2006. The Complainant has spent a considerable amount of money promoting its brand worldwide, both inside and outside of the mobile telecommunications field.
The two parts of the Complainant’s name are protected individually by
Telefonaktiebolaget LM Ericsson and the Sony Corporation of Japan. Both the
SONY trademark and the ERICSSON trademark have been registered worldwide including
but not limited to the European Union. A Copy of the Certificate of Registration
for the Community Trademark registration No. 001459130 is provided as Annex
5 of the Complaint.
5. Parties’ Contentions
The Complainant claims that the SONY ERICSSON trademark is well known in Europe and internationally in the field of telecommunication service, through extensive use and advertising. The Complainant refers to a number of successful previous comparable domain name disputes, such as <sonyeriksson.com>, <sonyerisson.com>, <sonyericson.com>, <sonyerricsson.com>, and others.
The Complainant argues that the disputed domain name is confusingly similar to the well known SONY ERICSSON trademark, with the only difference that one letter “s” is missing in the domain name and concludes that <sonyericson.nu> may falsely lead the public to believe that the Respondent and the website to which the said domain name directs is sponsored by or affiliated to or associated with the Complainant.
The Complainant states that the Respondent’s registration of the domain name is a clear case of typo-squatting, with the intention to take advantage of the Complainant’s reputation.
The Complainant further states that the Respondent has no rights or legitimate interests in the disputed domain name.
The Complainant submits that the domain name was registered, has been used and continues to be used in bad faith, as:
(i) the Complainant has not consented to the Respondent’s use of the trademark SONY ERICSON;
(ii) the Respondent must have been aware of the SONY ERICSSON mark prior to its registration of the domain name;
(iii) registration and use of the domain name is made for the purpose of defrauding the public; and
(iv) registration and use of the domain name is a deliberate attempt by the Respondent to attract, for commercial gain, internet users to another online location by creating a likelihood of confusion with the Complainant’s SONY ERICSSON.
The Complainant requests the Administrative Panel to issue a decision that the disputed domain name be transferred to the Complainant.
The Respondent is in the consulting business, employing medical doctors on short term contracts “where ever they are needed”.
The Respondent claims to have forgotten its domain name registration from 2004. The Respondent agrees that the disputed domain name is confusingly similar to SONY ERICSSON, and confirms that the Respondent has no interests in the Complainant’s trademark.
The Respondent strongly denies that <sonyericson.nu> was registered in bad faith, and states that it is not in the Respondent’s interest to be in disagreement with any actor on the market.
C. Additional communication
The Respondent sent an e-mail to the Complainant on
November 17, 2006, stating that the Respondent had tried to transfer the disputed
domain name to the Complainant during the suspension of the proceedings. According
to the Respondent, the transfer failed due to the Respondent’s lack of
“computer and Internet skills”. A copy of the e-mail has been provided
the Panel by the Center as part of communications related to the suspension.
6. Discussion and Findings
According to Paragraph 15(a) of the Rules “a Panel shall 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.”
In this case, the Respondent does not contest the Complainant’s request that the disputed domain name be transferred from the Respondent to the Complainant. In fact, the Respondent agrees with the Complainant that <sonyericson.nu> is confusingly similar to the Complainant’s trademark and that it has no interest therein. Further, the Respondent claims to have (unsuccessfully) tried to transfer the domain name to the Complainant.
Considering the special circumstances, this Panel
decides to forego the traditional UDRP analysis, and to order the immediate
transfer of the disputed domain name. In Williams-Sonoma, Inc. v. EZ-Port,
WIPO Case No. D2000-0207, the
panel held, inter alia:
“Because Respondent has consented to the relief requested by Complainant, it is not necessary to review the facts supporting the claim. I am left to decide the appropriate procedure to conclude the case in a situation not directly addressed by the Rules. Several provisions provide guidance. Rule 10(a) gives the panel the discretion to conduct the proceeding in such manner as it deems appropriate under the Policy and the Rules. Rule 10(c) requires the Panel to “ensure that the proceeding takes place with due expedition.” Rule 12 permits the Panel to require further statements from the parties. Rule 17 requires the Panel to terminate the proceeding when the parties have agreed to a settlement.
Here, although Respondent has consented to the requested
relief, the parties have not agreed to a formal settlement and terminating the
proceeding would not effect the parties intent. Under Rules 10 and 12, the Panel
appears to have authority to delay the decision and permit the parties time
to submit confirmation that they have agreed to a settlement. That procedure,
however, would delay this proceeding and impose unnecessary cost on both the
parties and WIPO. Under the circumstances, I believe the better course is to
enter an order granting the relief requested by the Complainant so that the
transfer may occur without further delay.”
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, <sonyericson.nu> be transferred to the Complainant.
P-E H Petter Rindforth
Dated: December 21, 2006