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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Sony Ericsson Mobile Communications AB, Telefonaktiebolaget LM Ericsson, Sony Corporation v. Gerald Foley

Case No. D2008-1723

1. The Parties

The Complainants are Sony Ericsson Mobile Communications AB of Lund, Sweden (the “First Complainant”), Telefonaktiebolaget LM Ericsson AB, of Sweden (the “Second Complainant”) and Sony Corporation, of Japan (the “Third Complainant”); all represented by Göhmann Rechtsanwälte Abogados Advokat Steuerberater Partnerschaft of Hannover, Germany.

The Respondent is Gerald Foley of Brussels, Belgium.

2. The Domain Name and Registrar

The disputed domain name (the “Domain Name”) <sonyericssonbrussels.com> is registered with Dotster, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) by email on November 10, 2008, and in hardcopy on November 17, 2008.

The Center transmitted its request for registrar verification by email to the Registrar by email on November 10, 2008. The Registrar replied by email the same day confirming that the Domain Name was registered with it; that the Respondent was the current registrant; that the Uniform Domain Name Dispute Resolution Policy (the “UDRP” or “Policy”) applied to the registration; that the Domain Name was locked and would expire on May 5, 2009; and that the registration agreement was in English and contained a submission to the jurisdiction of the courts at its location and at the registrant’s domicile. The Registrar also provided the contact details in respect of the Domain Name on its WhoIs database and stated that it had not received a copy of the Complaint.

The Center verified that the Complaint satisfied the formal requirements of 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 paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on November 19, 2008. The notification appears to have been delivered successfully by courier to the addresses for the administrative and technical contacts on the Registrar’s WhoIs database and a further address of the Respondent provided in the Complaint. In accordance with paragraph 5(a) of the Rules, the due date for Response was December 9, 2008. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on December 10, 2008.

The Center appointed Jonathan Turner as the sole panelist in this matter on December 19, 2008. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. Having reviewed the file, the Panel is satisfied that the Complaint complied with applicable formal requirements, was duly notified to the Respondent and has been submitted to a properly constituted Panel in accordance with the Policy, the Rules and the Supplemental Rules.

4. Factual Background

The Second Complainant is the owner of the trademark ERICSSON registered at the Office for Harmonisation in the Internal Market of the European Union (“OHIM”). The Third Complainant is the owner of the trademark SONY registered at OHIM. The First Complainant is a joint venture of the Second and Third Complainants established in October 2001 and has been licensed by the Second and Third Complainants respectively to use the trademarks ERICSSON and SONY. The First Complainant has used the name SONY ERICSSON extensively in connection with mobile telephones, which it sells, and has a website at “www.sonyericsson.com”.

The Domain Name was registered on May 5, 2004 and currently resolves to a website which has the appearance of an e-commerce website, but is incomplete and non-operational.

5. Parties’ Contentions

A. Complainants

The Complainants note that the first part of the Domain Name is identical to the famous mark of the Third Complainant, the second part is identical to the famous mark of the Second Complainant, and both these parts are identical to the mark used by the First Complainant. They submit that the final part, brussels, is not distinctive and that the public will get the impression that the Domain Name is connected with their marks.

The Complainants state the Respondent has not been authorised by them to use their trademarks, that he has not made any use or demonstrable preparations to use the Domain Name or any corresponding name in connexion with a bona fide offering of goods or services, that he has never been commonly known by the Domain Name or acquired trade or service mark rights in the Domain Name, and that he is not making any legitimate noncommercial or fair use of the Domain Name. The Complainants infer that the only reason why the Respondent is holding the Domain Name is to gain money to the detriment of the First Complainant.

The Complainants allege that the Respondent’s use of the Domain Name has to be considered in bad faith because the deliberate use of another party’s trademark cannot be regarded as fair use. They maintain that there is potential for damage in that the Complainants’ reputation and goodwill is out of their control. They state that they have tried to contact the Respondent several times and sent him cease and desist letters. They say that the Respondent has pointed out that the Domain Name was registered on behalf of his former employer, a company unrelated to the Complainant, but he has not been co-operative with respect to the transfer of the Domain Name, despite promising to do so. Unfortunately, this correspondence has not been exhibited to the Complaint.

The Complainants request a decision that the Domain Name be transferred to the First Complainant.

B. Respondent

As mentioned above, the Respondent did not reply to the Complainants’ contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, in order to succeed in this proceeding, the complainants must prove (i) that the Domain Name is identical or confusingly similar to a mark in which they have rights; (ii) that the respondent has no rights or legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered and is being used in bad faith. Each of these requirements will be considered in turn below.

In accordance with paragraph 14(b) of the Rules the Panel shall draw such inferences from the Respondent’s default as it considers appropriate. This includes the acceptance of plausible contentions of the Complainants which have not been disputed.

A. Identical or Confusingly Similar

The Panel finds that the Complainants have rights in the marks SONY, ERICSSON and SONY ERICSSON. Specifically, the Third Complainant has registered rights in the mark SONY; the Second Complainant has registered rights in the mark ERICSSON; and the First Complainant has rights in all three marks – by licence from the Second and Third Complainants in the case of the marks SONY and ERICSSON, and by virtue of its own goodwill in the case of the mark SONY ERICSSON.

The Domain Name is confusingly similar to each of these marks. It is identical to the mark SONY ERICSSON apart from the descriptive geographical indication brussels and the generic top level domain suffix. It incorporates each of the other two marks which are both highly distinctive marks. Furthermore, it is widely known that Sony and Ericsson formed a joint venture to sell mobile telephones and the two marks together are associated by many members of the public with both the Second and Third Complainants as well as with the First Complainant. Internet users would naturally assume that the Domain Name identifies a website of an office or operation of the First Complainant based in Brussels.

The first requirement of the Policy is satisfied.

B. Rights or Legitimate Interests

The Panel finds that the Respondent has not used or made demonstrable preparations to use the Domain Name or any corresponding name for any bona fide offering of goods or services. Even if the creation of the Respondent’s incomplete website could be regarded as a preparation to use the Domain Name, the Panel is satisfied that the use which would be made of that website would not be a bona fide offering of goods or services. On the contrary, it would be an offering of goods or services using the Domain Name in bad faith to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainants’ marks as to the source, sponsorship, affiliation or endorsement of that website.

From the record, it is clear that the Respondent is not commonly known by the Domain Name. Nor is he making a legitimate noncommercial or fair use of the Domain Name. The Panel can see no other basis on which the Respondent could have rights or legitimate interests in the Domain Name. The second requirement of the Policy is satisfied.

C. Registered and Used in Bad Faith

The Panel does not agree with the Complainants’ proposition that “the use of the Domain Name has to be considered as bad faith because the deliberate use of somebody’s trademark cannot be regarded as fair use”. This proves too much. There are circumstances in which a person may use even a widely known mark in good faith, for example to identify products placed on the market by the owner of that mark.

However, the Panel notes that the Domain Name resolves to a partially completed website which, if completed and operated, would be such as to attract Internet users to the Respondent’s website for commercial gain by creating a likelihood of confusion with the Complainants’ marks. Either the Respondent intended that the Domain Name should be used for this purpose; or he intended to induce the Complainants to buy the Domain Name from him at an elevated price by the threat of such use; or possibly both. Whichever of these possibilities applies, this indicates that the Domain Name was registered in bad faith.

By retaining the partially completed website at the Domain Name and by refusing to transfer the Domain Name to the Complainants despite their requests, the Respondent is continuing to use the Domain Name in bad faith.

In all the circumstances, the Panel finds that the Domain Name was registered and is being used in bad faith. The third requirement of the Policy is satisfied.

7. Decision

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, <sonyericssonbrussels.com> be transferred to the First Complainant, Sony Ericsson Mobile Communications AB.

Jonathan Turner
Sole Panelist

Dated: January 4, 2009