Game over for Sony in battle for 'ps.com.hk'
In Sony Computer Entertainment Inc v Fortune Success Trading Limited, a Hong Kong International Arbitration Centre panel has dismissed Sony's claim to the 'ps.com.hk' domain name. The panel found that Sony had failed to prove that the registrant, a producer of polymer solutions (often abbreviated as 'ps'), had no legitimate interest in the name or was using it in bad faith.
Sony Computer Entertainment Inc owns various trademarks for its PLAYSTATION video game console. It has registered a number of domain names incorporating either the words 'PlayStation', 'psone' or 'ps2'. Fortune Success Trading Limited registered the domain name 'ps.com.hk' in anticipation of the establishment of a company called Innovative Polymer Solutions Limited. Sony requested the transfer of 'ps.com.hk' on the grounds that (i) its PLAYSTATION products are commonly referred to in the video game industry and by the public in general as PS and PS2, and (ii) the registrant was not using the domain name, which inferred bad faith.
The three-member panel rejected Sony's complaint. First, the panel found that Sony failed to prove that it had acquired trademark or service mark rights in the letters 'ps', under either statute or common law, at the time of registration of the disputed domain name because:
- the letters 'ps' are not inherently distinctive;
- Sony had not endeavoured to register as many generic and country-code top-level domain names with the letters 'ps' as it could have; and
- Fortune registered the domain name three years before Sony applied to register 'ps' as a trademark in Hong Kong.
Second, the panel found that the use by one of Fortune's business partners of the domain name in its email system is a bona fide offering of goods or services. Moreover, the letters 'ps' are the initials of 'polymer solutions', which is part of the name Innovative Polymer Solutions, and an abbreviation for polystyrene, which Innovative Polymer Solutions produces.
Lastly, the panel found that Fortune had not registered and used the disputed domain name in bad faith because:
- Fortune and its business partners are clearly not in the business of selling domain names;
- Fortune is not involved in the same business area as Sony; and
- there was no evidence that Fortune intended to attract internet users for commercial gain by creating a likelihood of confusion with Sony's mark.
Accordingly, the panel dismissed the complaint.
Kenny Wong, Johnson Stokes & Master, Hong Kong
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