In the case of Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, Case No. D2008-1025 (WIPO October 2, 2008) a three member panel was faced with an decision regarding the disputed domain www.sonyholland.com. In this case Sony, the well known manufacturer of audio video and technology products, which operates a website at www.sony.com, objected to the use of the disputed website contending that it violated its trademark rights and the policies set forth in the UDRP. The facts of this case are interesting though, as the Respondent claims to be known by the name “Sony Holland.” The Respondent’s full legal name is “Sonia Holland”, although she claims to be known by “Sony”. The decision noted that the disputed domain 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 three member Panel immediately acknowledged that the first prong of UDRP decisions, namely whether the disputed domain is identical or confusingly similar to the Complainant’s mark. The crux of the opinion centered on whether or not the Respondent had any rights or legitimate interests in the domain. The Panel observed:
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.”
The Panel went further to explain:
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.
Ultimately the Panel found that the respondent did have rights or a legitimate interest in the domain. Regardless, the Panel still analyzed the third and final prong, bad faith. The Panel explained:
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.
As a result of these findings, this three member Panel DENIED the Complainant’s request for transfer.
