WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Canon Kabushiki Kaisha, also trading as Canon Inc. v. Canon.Net

Case No. D2001-0735

 

1. Parties

The Complainant in this administrative proceeding is Canon Kabushiki Kaisha, also trading as Canon, Inc. a Japanese corporation with its principal place of business at 30-2 Shimomaruko 3-chome, Ohta-ku, Tokyo 146-8501, Japan. The Respondent is Canon.Net, with a place of business at 2748 North Frederick Avenue, Milwaukee, Wisconsin 53211, United States of America.

 

2. The Domain Name and Registrar

The domain name is <canon.net>. The domain name was registered by Respondent with BulkRegister.com., Inc., 10 East Baltimore Street, Suite 1500, Baltimore MD 21202, United States of America on May 15, 2000.

 

3. Procedural History

On June 1, 2001, the WIPO Arbitration and Mediation Center received from the Complainant by e-mail a complaint for a decision in accordance with the Uniform Policy for Domain Name Dispute Resolution. The Center received a hard copy of the Complaint on June 5, 2001. On June 7, 2001, the Center forwarded an Acknowledgement of Complaint to the Complainant. On June 8, 2001, the Center forwarded a Request for Registrarís Verification to Bulkregister.com, Inc. On June 12, 2001, BulkRegister.com, Inc. confirmed that the domain name canon.net is registered under BulkRegister.com, Inc. and was acquired by Canon.Net on May 15, 2000. The current status of the domain name is "Registrar LOCK". BulkRegister.com, Inc. advised that the Administrative Contact for the domain name canon.net is Robert Williams, Domain for Sale, 2748 North Frederick Ave, Milwaukee, WI 53211, United States of America. The Center completed its Administrative Compliance Check on June 13, 2001, and ascertained that the Complaint was filed in compliance with the requirements of the Policy, Rules and the Supplemental Rules and that payment had been properly made to the Center.

On June 13, 2001, the Center forwarded a Notification of Complaint to the Respondent by e-mail (without enclosures) and courier (with enclosures). The Center advised the Respondent that the Administrative Proceeding was commenced on June 13, 2001, and that a response was due by July 2, 2001. The Complainant in this proceeding elected for an Administrative Panel consisting of a single panelist.

A Response was not received by the deadline of July 2, 2001, and a Notification of Respondent Default was sent by e-mail to the Respondent on July 3, 2001. The Respondent was advised that the Administrative Panel will decide whether to consider a Response (if submitted later) in deciding the case.

Mr. Ross Carson was appointed as the sole Panelist. The case file was transmitted to Mr. Carson on July 19, 2001, and the date of August 2, 2001, was set as the due date for the decision.

Upon review of the case file the Administrative Panel noticed that the hard copy of the Complaint with Enclosures was sent by Federal Express on June 13, 2001, to the Respondent Canon.net at 2738 North Frederick Ave., Milwaukee, WI 53211 U.S.A. The package was returned to Federal Express on 20 June 2001. The Federal Express tracking sheet contained the remarks "06/15/2001 09.35 Ė Incorrect address" and "06/20/01 12:40 Ė Pkg returned". Having regard to the fact that there was a discrepancy between the address on the tracking sheet and the Bulkregister.com, Inc. address of the Respondent which was given as 2748 North Frederick Ave, Milwaukee, the Administrative Panel issued a Procedural Order instructing the Center to arrange for the Respondent to be served with the hard copy of the Complaint and Annexes at the address provided by Bulkregister.com, Inc. On August 3, 2001, the Center transmitted to the Respondent an e-mail attaching Procedural Order No. 1, the Notification of Complaint document, originally sent on June 13, 2001, and the electronic version of the Complaint document. Hardcopies of the Notification Complaint document, the Complaint with Annexes and a copy of Procedural Order No. 1 were also sent to the Respondent on August 3, 2001, by courier to Respondentís address at 2748 North Frederick Ave, Milwaukee, WI 53211, U.S. The Respondent was advised that the time periods established by the Rules were extended to permit the Respondent to file a Reply and that the last day for sending the Response to the Complainant and to the Center was August 22, 2001.

On August 27, 2001, the Center advised the Administrative Panel that as of August 27, 2001, the Center had not received a Response. The Center advised that according to FedExís tracking number, the package sent to 2748 North Frederick Ave, Milwaukee, WI 53211, US was "returned to shipper".

As no Response was received by the extended deadline and every effort was made to ensure that the Complainant received the hard copy of the Complaint and related documents, the Administrative Panel will base its decision on the facts provided in the Complaint.

 

4. Factual Background

Complainant is a Japanese corporation. The Complainantís business was founded in Japan in 1933 by its predecessor. The CANON trademark was first used and registered in 1935 and has become a well-known trademark. Canon was adopted as the Complainantís trade name in 1947. The Complainant operates a worldwide business, primarily in cameras, optical products, office imaging products, peripherals, bubble jet products, and chemical products. It employs around 80,000 people and has many subsidiaries and related companies around the world which use the name Canon in their trade names, under the control of the Complainant The total sales for the Canon Group in 1999 exceeded 25 billion dollars. Exhibit C to the Complaint.

Complainantís trademark CANON is registered in many countries of the world. Complainant owns over 35 U.S. trademark registrations of or including the word CANON some of which were registered as early as 1955. Copies of several U.S. registrations are attached as Exhibit D to the Complaint.

Complainant has registered and uses the domain names <canon.com>, <canon.co.jp> and other "canon" domain names for websites.

The Respondent registered the domain name <canon.net> on May 15, 2000, subsequent to (a) the first use of the trademark and trade name CANON by the Complainant; (b) the dates of registration of CANON as, or as part of, a trademark by the Complainant in the U.S.A. and in many other countries, and (c) the registration date of the Complainantís active domain names <canon.co.jp> and <canon.com>.

 

5. Partiesí Contentions

A. Complainant submits that

(a) The disputed domain name <canon.net> is identical or confusingly similar to a trademark in which Complainant has rights.

The domain name <canon.net> is identical to the Complainantís trademark CANON because the .net portion of the domain name must be disregarded when comparing a domain name with a trademark to determine their confusing similarity. The subject domain name encompasses the Complainantís trademark in its entirety.

(b) Respondent does not have rights or a legitimate interests in the domain name <canon.net>.

Respondent has never used "CANON" as, or as part of, a trademark, trade name or other trade symbol, or in a descriptive or informative manner to describe the Respondentís goods or services. "Canon" is not the personal name of the Respondent. Respondent never made preparations to use the domain name <canon.net> or a name corresponding to said domain name in connection with a bona fide offering of goods or services before notice of the dispute. Respondent is not known by the designation "CANON" and owns no Federal or state or international trademark or service mark registrations for CANON or any similar term.

(c) The domain name was registered and is being used in bad faith.

The Respondent and/or its predecessor registered the domain name <canon.net> without the consent, license or authorization of the Complainant. Complainant has never acquiesced in the use or registration of the domain name <canon.net> by Respondent and/or by its predecessor.

Complainant submits that Respondent registered the domain name <canon.net> with constructive notice of Complainantís U.S. trademark registration of CANON. It is highly unlikely that Respondent had no actual knowledge of Complainantís trademark and trade name CANON in view of Complainantís extensive use and promotion of its trademark and trade name for many years. Respondent and/or its predecessor held the domain name <canon.net> for over two years without making any commercial or non-commercial use of it. Respondent is not making any kind of legitimate commercial, noncommercial or fair use of the domain name <canon.net>. Complainant avers that Respondent has interfered with the Complainantís use of its trademark and trade name as a domain name in the ".net" area. Respondent currently has a home page for <canon.net> which displays an "under construction" notice and as of May 30, 2001, banner advertisements for <bixhosting.com> and <freeservers.com>. Complainant avers that Respondent appears to be making money by drawing web traffic to its site through the use of Complainantís famous trademark "CANON" and by selling advertising space on its website to advertisers who wish to display their advertising to people who visit <canon.net> in the belief that it has some connection with the Complainant and Complainantís products.

Complainant avers that by registering <canon.net>, the Respondent probably intended to prevent Complainant from registering said domain name, to disrupt the business of Complainant and/or to pressure Complainant into buying back the domain name from the Respondent for a substantial amount of money. Complainantís agent sent an inquiry about the price of the domain name to the e-mail address of the administrative contact for "canon.net" and was advised that the domain name could be purchased for $4,000 U.S. (Annex F to the Complaint). Complainant submits that this is evidence of Respondentís bad faith use of the domain name.

Respondent identified itself as Canon.Net of Milwaukee. However, there is no telephone directory listing for Canon.Net in Milwaukee, nor is there a telephone listing for the administrative contact, Robert Williams at Domain for Sale at the Milwaukee address. The telephone number given for Robert Williams has a Long Island area code. Complainant suggests that the Respondent has given incorrect contact information to the domain name registrar or is attempting to avoid contact with the public. Respondent does not appear to be conducting any open or legitimate business under the name "CANON.NET" or "CANON".

B. Respondent

The Respondent did not file a Response.

 

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel to:

"decide a complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable".

The burden for the Complainant, under paragraph 4(a) of the ICANN Policy, is to show:

- That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

- That the Respondent has no rights or legitimate interests in respect of the domain name; and

- The domain name has been registered and used in bad faith.

(a) Identical or confusingly similar

It is clear that the Complainant has substantial trademark rights in the mark CANON and that the domain name in dispute is confusingly similar to the Complainantís marks. The domain name in dispute, <canon.net>, is comprised of the Complainantís trademark and trade name CANON followed by the word .net which identifies a generic top level domain name. The domain name in dispute <canon.net> is confusingly similar to the Complainantís well-known trademark and trade name CANON.

(b) No legitimate rights or interests

The evidence of the Complainant is that the Respondent has never used "CANON" alone or as part of a trademark, trade name or other trade symbol, or in a descriptive or informative manner to describe the Respondentís goods or services. The Respondent never made any preparations to use the domain name <canon.net> in connection with a bona fide offering of goods or services before notice of the dispute. The Respondent is not known by the designation "Canon". The Respondent did not file any evidence to demonstrate any rights or legitimate interest in the domain name in dispute as the Respondent is entitled to do pursuant to Paragraph 4.c of the Uniform Domain Name Dispute Resolution Policy. The Complainant has shown that the Respondent has no legitimate rights or interests in the domain name <canon.net>.

(c) Registered and used in bad faith

The Complainantís trademarks and trade name are well known and the balance of probabilities is that the Respondent knew of the Complainantís trademarks and trade name at the date of registration.

Respondentís agent made an offer to sell the domain name <canon.net> for $4,000 U.S. in response to an inquiry by Complainantís agent which was sent to the e-mail address of the administrative contact for <canon.net> (Exhibit F to the Complaint). The Panel finds that the Complainant has established that the Respondent registered the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name to the Complainant for valuable consideration in excess of Respondentís documented out-of-pocket costs directly related to the domain name (Paragraph 4.b.(i) of the Uniform Domain Name Dispute Resolution Policy).

The Respondent held the domain name in dispute for over two years without making any kind of legitimate commercial, noncommercial or fair use of the subject domain name. (Paragraph 21-24 of the Complaint). Respondentís home page for <canon.net> displays an "under construction" notice and banner advertisements for <bizhosting.com> and <freeservers.com>. The Respondent is using the domain name in dispute to attract Internet users to its website for commercial gain. (Paragraph 4.b.(iv) of the Uniform Domain Name Dispute Resolution Policy).

The Respondent provided false information to the Registrar. Respondent identified itself as CANON.NET of 2748 North Frederick Avenue, Milwaukee, Wisconsin 53211. The administrative contact for the Respondent is Robert Williams, of Domain for Sale in Milwaukee. According to the Complainant (paras. 25 and 26 of the Complaint) there is no telephone listing for Domain for Sale in Milwaukee. The telephone number given for Robert Williams cannot be a Milwaukee listing because the prefix 516 is an area code for Long Island, New York. An attempt to deliver the Complaint by courier at the address provided by the Respondent to the Registrar was unsuccessful and the package was returned marked "return to shipper".

The Panel determines the domain name <canon.net> was registered and is being used in bad faith.

 

7. Decision

In view of the above, the Panel grants the Complainantís request for transfer to it of the domain name <canon.net>.

 


 

Ross Carson
Sole Panelist

Date: August 28, 2001