Elliot Silver wrote an article about “newbies” in the domain industry risking to lose a lot of money, and this is a textbook example.
Sony Corporation is a titan in electronics, and audio-visual technology. If you never heard of the world famous “SONY” trademark, then you need to have you head checked pronto!
In a UDRP decision over at the National Arbitration Forum, the domain name sonyswag.com was given to the Complainant, Sony Corporation.
But that’s not the fun part of this slam dunk case, as is reading the Respondent’s ridiculous assertions that it’s ok to squat on famous marks, and expecting to get $10,000 dollars from Sony Corporation:
“Respondent in her response has stated that the domain name industry involves generating, buying and selling of web domain names. It can be very lucrative as reported on the internet. While citing an example, Respondent has stated that author Daniel Scocco has reported on the internet (www.dailyblogtips.com) that the domain name sex.com sold for a huge amount: $14 million dollars. Respondent further stated that she had recently stumbled upon the domain name business. She opted to enter the domain name industry as according to her it is cheap to get into; and one just need a dictionary, thesaurus, and some imagination to enter this industry. Accordingly Respondent came up with six domain names via her own unique thought process; these six domain names are creations of her own mind. Of these six domain names that Respondent came up with, all were duly purchased from several different online domain companies – Network Solutions, Register.com, etc. According to respondent, disputed domain name <sonyswag.com> is just one of the six domain names that Respondent came up with.”
According to our research, the former owner of sonyswag.com owns 76 domain names, one of which is yet another trademark violation: facebookalive.net.
The Respondent attempted to reference Marc Ostrofsky’s book as the basis for the legitimacy of her domain “investment”:
“Respondent submits that the word “swag” does not mean “promotional items” as stated in Complainant’s Complaint, rather it is short for “swagger” and it refers to one’s own style, finesse, or one’s inner cool factor. Respondent contends that it simply thought that the word itself is cute and that she (Respondent) could get a quick sell from the Sony Corporation; and if not from them, then certainly from someone else. Respondent claims that the flipping of domain names is a legitimate business as stated in the book – Get Rich Click by Marc Ostrofsky.”
The Respondent further appears defiant in her ignorance about trademark law, in her opening statement’s closure:
“Respondent submits that she is new to this business. She is aware that mistakes can be made. She believes she has done nothing wrong, and is willing to transfer the domain name to the Sony Corporation, but not for free. Respondent states that she is a great fan of Sony and has over the years provided much support for the Corporation, buying many of its varied electronic products over the years. Respondent claims that she simply viewed this matter as a great business opportunity. Respondent contends that it is a fact that Complainant did not come up with the name, “Sonyswag”, Respondent did; it is her intellectual property and it belongs to her. Respondent claims that as stated in her Dec. letter to Complainant, she owns the disputed domain name: <sonyswag.com> which she claims she has legally purchased from Register.com (Exhibit-4). Respondent claims that there is nothing illegal or inappropriate in the manner in which Respondent had approached Sony.”
The comedic and clueless tirade by the Respondent – who did not involve the services of an IP attorney for obvious reasons – ends thus:
“Respondent contends that its domain name is not identical to Complainant’s. Complainant’s corporate name is one word with two syllables. Respondent’s domain name although one word, three syllables. The name Sony by itself is associated with electronics and electronic products; it has nothing to do with style or finesse or “coolness”; Respondent put that spin on her domain name. Respondent contends that the general public would not be confused by her eight letter domain name as against Complainant’s four letter company name. Complainant’s mark “SONY” and Respondent’s domain name <sonyswag.com> may be similar, but there is nothing confusing about the two. People are able to tell the difference. Respondent submits that Panel should deny the remedy of transfer of the domain name, requested by the Complainant.”
We often rant and rave about unfair claims over aged or otherwise established domain names, and celebrate when a case of Reverse Domain Name Hijacking is delivered for the Respondent. As in this case, we need to point out the opposite side, when obvious trademark violations attempt to capitalize on the intellectual property of others.
Read about the full decision about sonyswag.com here.
This post is 100% true!
Respondent is very very lucky she didn’t lose more than just the domain name.
Scott – Well said. What is remarkable is the complexity of the respondent’s ramblings, she’s good at Googling “stuff” apparently. I don’t buy the “newbie” card 100%.
I’ll bet Marc Ostrofsky is happy with the publicity he received……………..
Alan – 😀 Now that’s an idea: register an obvious tm, catch the attention of the tm holders, and use your sure-to-fail UDRP response as a method of advertising a book. Brilliant! 😀
…I wasn’t being serious…………………………….Rather i would be pretty upset with the respondent.
Thats hilarious. It reminds me of me when I registered my very first domain for investment in 2007. I registered a hyphenated name of a video game, owned by a top producer, and tried to sell it by contacting the company for a small fee of $100,000. Suffice to say I learned what WIPO was very quickly. It cost me a reg fee. They offered me promo merchandise for transferring the domain over to them, I asked them if they can embroider it with the phrase, “I registered ******.com and all i got was this hat.” They found it humorous obviously because I’m hilarious 😉 Since then no WIPO cases, an occasional cease and desist, but since I know the law now lawyers never follow through.
Holy clueless. You would think she would figure out her mistake when Sony sent the UDRP, but she still has no idea…