Decision for dispute CAC-UDRP-106049

The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain name.

• EU word trademark registration no. 003904471 “SONIC THE HEDGEHOG”, registered on November 3, 2005;
• EU word trademark registration no. 003904448 “SONIC”, registered on September 21, 2011;
• EU figurative trademark registration no. 000076653 “SONIC”, registered on April 15, 1998.

FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:

• The Complainant is a multinational video game and entertainment company headquartered in Tokyo, Japan, with several subsidiaries. The company was founded in 1960 and released its internationally known video game Sonic the Hedgehog in 1991.
• Over time, Sonic the Hedgehog series included 25 mainline games and countless spin-offs and collaborations with other game manufacturers, involving various characters from the game. Today, the series consists of nine games. The game has sold over 140 mn units by 2016 and grossed over US$5 bn as of 2014. Series sales and free-to-play mobile game downloads totalled 1.5 bn as of 2022.
• Sonic the Hedgehog has been listed as one of the greatest games of all time by many magazines. For many, Sonic the Hedgehog is a symbol of culture of the 1990s and has become a cultural phenomenon itself. The game’s admirers invest in collections of numerous memorabilia items connected to the game. The largest collection of 3,050 items has been entered in the Guinness World Records in 2022.
• The main trademarks for the Sonic the Hedgehog game series are the word marks SONIC and SONIC THE HEDGEHOG as well as the figurative mark. The marks have been intensively used since their inception not only for the video games but for a wide variety of products and services, including films, books, journals, merchandise, collectibles and foods.
• As of 2023, the Sonic brand as such is valued at over US$5 bn.

A. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights

• The Complainant owns multiple trademark registrations and applications for the word marks SONIC, SONIC THE HEDGEHOG and the figurative mark worldwide. The trademarks cover a broad variety of goods and services, including video game software and computer game programs in class 9. They are protected, inter alia, in the EU, where the Respondent is residing. Furthermore, the Complainant owns many domain names incorporating the Sonic Trademarks, including <sonicthehedgehog.com>.
• The disputed domain name is confusingly similar to the Sonic Trademarks, in which the Complainant has rights. The trademarks SONIC and SONIC THE HEDGEHOG are included in their entirety in the disputed domain name. The only symbol that differs the disputed domain name from the main domain of the Complainant is a dash in the middle of the mark. It is obvious that the use of such similar designation is intended to give potential visitors the impression that the disputed domain name represents the original website for the Complainant’s game Sonic the Hedgehog.
• The addition of the generic Top-Level Domain (“gTLD”) “.org” does not have any impact on the overall impression of the dominant part of the disputed domain name and is therefore irrelevant when determining the confusing similarity between the Sonic Trademarks and the disputed domain name.
• There is a considerable risk that the target public will perceive the disputed domain name either as a domain name owned by the Complainant, or that there exists a business relationship between the Complainant and the Respondent. By using the Sonic Trademarks as the main part of the disputed domain name, the Respondent exploits the goodwill and the image of the Complainant’s trademark, which may result in dilution and other damage to the trademark.

B. The Respondent has no rights or legitimate interest in respect of the disputed domain name

• To the best of Complainant’s knowledge, there is no information indicating that the Respondent is known for, trades under or prepares for use of a name corresponding to the disputed domain name. In fact, the website connected to the disputed domain name refers to the Complainant and its subsidiaries as if it was them who owned and operated the website. The website used the same layout, colours and content compared to the Complainant’s own website. Under such circumstances, the Respondent cannot claim to be commonly known by the disputed domain name or by names corresponding to the disputed domain name.
• The Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services. Instead, the Respondent has intentionally chosen the disputed domain name based on another trademark in order to generate traffic and presumably income through a website displaying a clear copy of the Complainant’s own website, including use of the Complainant’s logotype, name, design and corporate colours. Although the actual purpose of reproducing the Complainant’s original website by the Respondent is unclear, the Complainant submits that the Respondent’s actions resulted in confusing Internet users, who search for the Sonic the Hedgehog game, about the website’s origin and affiliation with the Complainant.
• No license or authorization of any other kind has been given by the Complainant to the Respondent to use the Sonic Trademarks. Furthermore, the Respondent is not an authorized dealer of the Complainant’s products or services and has never had a business relationship with the Complainant. As no evidence has been found indicating that the Respondent is using the name “SONIC THE HEDGEHOG”, or similar, as a company name or that it has any other legal rights in the name, it is quite clear that the Respondent is simply trying to sponge off the Complainant’s trademarks, presumably for its own commercial benefit.  
• Further, the website does not fulfil the test put forward in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 in connection with any allegation that the Respondent is a reseller or distributor and is making a bona fide offering of goods or services. The Complainant argues that the Respondent’s non-existing relationship with the Complainant is not being made clear on the website connected to the disputed domain name. To the contrary, the Respondent has prominently included the Complainant’s logotype and design on the main page in order to create the impression that the disputed domain name is somehow connected to the Complainant. Such use does not give rise to a legitimate interest in the disputed domain name.
• Accordingly, for the foregoing reasons, the Complainant argues that the Respondent has no legitimate interest in the disputed domain name.

C. The disputed domain name was registered and is being used in bad faith

• The Complainant holds registrations of the trademarks SONIC and SONIC THE HEDGEHOG worldwide, including in the EU. The Sonic Trademarks are well known within, but not limited to, the EU.
• The disputed domain name was registered by the Respondent in September 2023. This date is subsequent to when the Complainant obtained registered trademark rights for Sonic Trademarks in the EU and in many other countries. It is evident that it is the fame and value of the Sonic Trademarks that has motivated the Respondent to register the disputed domain name. The fact that the disputed domain name refers to a website copying the Complainant’s own website makes it obvious that the Respondent was fully aware of the Complainant and the Sonic Trademarks at the time of the disputed domain name’s registration. Furthermore, the Complainant recently recovered the domain name <sonic-thehedgehog.com> in another UDRP procedure (dispute CAC-UDRP-105758). This domain name was connected to an identical website and had the same registrar and registrant details. Shortly after the Complainant recovered that domain name, this new disputed domain name was registered by the same individual, namely the Respondent. The Complainant argues that this is a further indication of bad faith in this case.
• As mentioned, the disputed domain name hosts a website that copies the Complainant’s own websites and displayed similar content in an attempt to target and deceive consumers into believing that the disputed domain name is operated by the Complainant. The Complainant can only presume that the Respondent is intentionally creating the false impression of affiliation to or endorsement by the Complainant, thereby disrupting the Complainant’s business. The exact purpose with doing so is unclear, however, the Respondent do include several links on the website and do collect privacy details from visitors searching for the Complainant, presumably in an attempt to obtain money or with any other illicit intent. In any event, it is clear that potential visitors would be highly likely to assume that the disputed domain name is operated by or connected to the Complainant.
• Consequently, it is the Complainant’s view that the Respondent, by using the disputed domain name, has intentionally attempted to attract, for commercial gain, Internet users to its own web site, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s web site.

NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED. 

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name is identical to a trademark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain name (within the meaning of paragraph 4(a)(ii) of the Policy).

The Complainant has, to the satisfaction of the Panel, shown the disputed domain name has been registered and is being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).

The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
2. The respondent has no rights or legitimate interests in respect of the domain name; and
3. The domain name has been registered and is being used in bad faith.

1. the disputed domain name <sonic-thehedgehog.org> is identical to a trademark in which the Complainant has rights;
2. the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
3. the disputed domain name has been registered and is being used in bad faith.

The Complainant has thus established all three elements of paragraph 4(a) of the Policy.