World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canon U.S.A., Inc. v. Client Domain Administrator and www.eos1.net

Case No. D2012-0703

1. The Parties

Complainant is Canon U.S.A., Inc. of Lake Success, New York, United States of America, represented by Dorsey & Whitney, LLP, United States of America.

Respondents are Client Domain Administrator of Los Angeles, California, United States and www.eos1.net of Los Angeles, California, United States of America.

2. The Domain Names and Registrar

The disputed domain names <canoncard.com>, <canoncircle.com>, <canoneos-1.com>, <canoneos1.com>, <canoneos1ds.com>, <canonlens.com>, <canonmagazine.com>, <canonmag.com>, <canononline.com>, <canonphotos.com>, <canonpicture.com>, <canonpictures.com>, <canonsalon.com>, <canonservices.com>, <canonshopping.com>, <canonstower.com>, <canontower.com>, <canonuniverse.com>, <canon1.com>, <gotocanon.com>, <onlinecanon.com>, <planetcanon.com>, <shopcanon.com>, and <teamcanon.com> (collectively, the “Disputed Domain Names”) are registered with Wild West Domains, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 3, 2012. On April 4, 2012, the Center transmitted by email to Wild West Domains, LLC a request for registrar verification in connection with the disputed domain names. On April 7, 2012, Wild West Domains, LLC transmitted by email to the Center its verification response confirming Respondent www.eos1.net as registrant of <canon1.com> and Respondent Client Domain Administrator as the registrant of the remainder of the Disputed Domain Names and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondents of the Complaint, and the proceedings commenced on April 12, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was May 2, 2012. An informal communication was filed by Respondent with the Center on April 12, 2012.

The Center appointed Lorelei Ritchie as the sole panelist in this matter on May 9, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant, together with its parent corporation, is a major international manufacturer of electronics including cameras, printers, copy machines, fax machines, camcorders, and related products and services. Complainant is the owner of several marks for CANON, including United States Registration No. 603299 (1955) and United States Registration No. 1,315,232 (1985). Due to extensive use, advertising, and revenue associated with its CANON mark, Complainant enjoys a high degree of renown associated with its mark. The magazine “Businessweek” ranked Complainant, with the CANON name and mark, the number 36 most valuable brand in the world for the year 2008, with an estimated brand value of $10,876,000,000.

Complainant also owns registrations for the EOS mark for its cameras and lenses, including United States Registration No. 1,497,499 (1988) and United States Registration No. 2,379,305 (2000). Complainant markets its EOS cameras and lenses alongside its CANON mark.

Complainant owns the registration for the domain name <canon.com>. Complainant operates a website at the associated URL. Complainant uses the website to market its products and services to consumers.

The Disputed Domain Names were registered between December 28, 2002 and November 10, 2003, except that <canon1.com> was registered by Respondent www.eos1.net on November 1, 2011.

Almost all of the Disputed Domain Names redirect to Respondents’ home page (“www.eos1.net”), which contains links to competitors’ websites. Complainant has not authorized any activities by Respondents, nor any use of its trademarks thereby. Respondents have no affiliation with Complainant.

5. Parties’ Contentions

A. Complainant

Complainant contends that the Disputed Domain Names are identical or confusingly similar to Complainant’s trademarks; (ii) Respondents have no rights or legitimate interests in the Disputed Domain Names; and (iii) Respondents registered and are using the Disputed Domain Names in bad faith.

B. Respondent

A response was received via email message sent to the Center on April 12, 2012. The message stated as follows:

“I was keeping Canon domains for you and I could transfer to you right away if you could ask me . .

Canon for all my life.

As I’m close to Canon Inc. and Canon Marketing Japan Inc., I worked for my master of photography Yoshihiro Tatsuki and I’m a member of CPS USA and Japan since 1992, you could ask me before filing them. .I thought you noticed my U.S. trademark EOS1.COM and 4 others.

As I said, “Canon for all my life” I didn’t have any plans with Canon domains I really kept paid registrations fees for them for Canon.

I will contact Canon Inc. and Canon Marketing Japan Inc. this Friday or Monday(JST).

Sincerely,

[Mr.] Umemura”

6. Discussion and Findings

As a preliminary matter, the Panel notes that there are two named Respondents in this case. Paragraph 3(c) of the Rules specifically provides that a complaint may relate to more than one domain name, provided that they are registered by the same domain name holder. Situations may occasionally arise in which multiple respondents may be considered as one domain name holder for the purpose of this provision. Such a situation arises here.

In this case, the circumstances indicate that Respondents are likely to be related in their actions. The domain name <canon1.com>, which is registered to a different Respondent, lists the same address of record and PO Box as used in the registration of the other Disputed Domain Names. The publicly-available WhoIs for <canon1.com> also states, as do the other Disputed Domain Names, that it is “registered through EOS-1 Network, Inc.” All of the Disputed Domain Names were registered through the same registrar. The Panel finds that the registration details and use of the Disputed Domain Names in this proceeding exhibit sufficient commonality to the Panel for purposes of consolidation under Paragraph 3(c) of the Rules.

Furthermore, the Response received in this case originated from an email address seemingly associated with the registration of the disputed domain name <canon1.com>, referencing the registration of the multiple “Canon domains” of this dispute, further evidencing to the Panel that the Disputed Domain Names are controlled by a single person or entity and that the consolidation of multiple Respondents in this matter is proper. See Speedo Holdings B.V. v. Programmer, Miss Kathy Beckerson, John Smitt, Matthew Simmons, WIPO Case No. D2010-0281.

A. Identical or Confusingly Similar

This Panel must first determine whether each of the Disputed Domain Names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

The Panel finds that they are. Each of the Disputed Domain Names directly incorporates Complainant’s registered trademark CANON. Each of the Disputed Domain Names falls into one of three categories, either 1) adding a descriptive word after the CANON mark; 2) adding a descriptive word before the CANON mark; or 3) adding Complainant’s EOS mark. The first of these groups contains the following Disputed Domain Names: <canoncard.com>, <canoncircle.com>, <canonlens.com>, <canonmagazine.com>, <canonmag.com>, <canononline.com>, <canonphotos.com>, <canonpicture.com>, <canonpictures.com>, <canonsalon.com>, <canonservices.com>, <canonshopping.com>, <canonstower.com>, <canontower.com>, <canonuniverse.com>, and <canon1.com>. Numerous UDRP panels have agreed that supplementing or modifying a trademark with generic or descriptive words does not make a domain name any less “identical or confusingly similar” for purposes of satisfying this first prong of paragraph 4(a)(i) of the Policy. See, for example, Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (transferring <microsofthome.com>); General Electric Company v. Recruiters, WIPO Case No. D2007-0584 (transferring <ge-recruiting.com>); CBS Broadcasting, Inc. v. Y2K Concepts Corp., WIPO Case No. D2000-1065 (transferring <cbsone.com>). In short, consumers might expect to find information associated with Complainant at a website for each of these domain names.

Likewise, in the second category of Disputed Domain Names, each incorporates the CANON mark, preceded by a descriptive word or words: <gotocanon.com>, <onlinecanon.com>, <planetcanon.com>, <shopcanon.com>, and <teamcanon.com>. Finally, the third category actually incorporates not only Complainant’s CANON mark but its EOS mark as well, with some descriptive wording or numbering: <canoneos-1.com>, <canoneos1.com>, <canoneos1ds.com>. Thus consumers would expect a URL associated with these domain names to convey information about Complainant’s CANON EOS cameras and lenses.

This Panel therefore finds that each of the Disputed Domain Names is identical or confusingly similar to a trademark in which Complainant has rights in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Policy provides some guidance to respondents on how to demonstrate rights or legitimate interests in the domain name at issue in a UDRP dispute. For example, paragraph 4(c) of the Policy gives examples that might show rights or legitimate interests in a domain name. These examples include: (i) use of the domain name “in connection with a bona fide offering of goods or services”; (ii) demonstration that Respondent has been “commonly known by the domain name”; or (iii) “legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

In this case, Complainant has provided a sufficient prima facie case of Respondents’ lack of rights and legitimate interests in the Disputed Domain Names. As evidence rebutting Complainant’s showing, the person who replied to the Complaint, Mr. Umemura, in his reply made claim to ownership of a United States trademark, EOS1.COM. However, he presented no evidence to that effect. The reply did not present any evidence of any other basis whereby Respondents could claim a right or license to use Complainant’s CANON mark or rights or legitimate interests in the Disputed Domain Names.

The Panel further notes that even if Mr. Umemura is the owner of a trademark for EOS1.COM, the Disputed Domain Names at issue that contain the EOS term also contain the CANON mark. Furthermore, Mr. Umemura is not listed as the registrant of the Disputed Domain Names. Accordingly, if a trademark is registered in his name, it is not clear how that would inur to the benefit of the named Respondents.

Moreover, even assuming Respondents would have established that they owned a registered trademark in EOS1.COM, such registration may but would not necessarily establish rights or legitimate interests in the Disputed Domain Names which contain that mark for purposes of these Policy proceedings. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 2.7. Although paragraph 4(c)(ii) of the Policy indicates that a party may demonstrate rights or legitimate interests in a domain name as a consequence of having been commonly known by the domain name, and that it is reasonable to presume that a party owning rights in a trademark has been known by the trademark, previous UDRP decisions have held that a respondent does not have rights or legitimate interests in a domain name in circumstances indicating that the registrant was seeking to take unfair advantage of the owner of previously existing trademark rights. See Chemical Works of Gedeon Richter Plc v. Covex Farma S.L., WIPO Case No. D2008-1379.

Even if Respondents had established rights in EOS1.COM, under the circumstances of this case, the Panel doubts that such registration would have per se given rise to rights or legitimate interests in the Disputed Domain Names which also incorporate Complainant’s longstanding CANON mark, in the absence of a very convincing explanation from Respondents as to how the seemingly very particular combination in the Disputed Domain Name of Complainant’s CANON mark with the EOS1.COM mark would have been for some legitimate purpose, rather than to take advantage of the fame and notoriety of the Complainant’s mark and reputation. This is especially so given the Complainant’s own registration and widespread use of the trademark EOS. In any event, the Panel finds that the Respondents have failed to demonstrate rights or legitimate interests in the Disputed Domain Names in this proceeding.

The Panel therefore finds that, on the balance, Complainant has provided a sufficient showing of Respondents’ lack of rights or legitimate interests.

C. Registered and Used in Bad Faith

There are several ways that a complainant can demonstrate that a domain name was registered and used in bad faith. For example, paragraph 4(b)(iv) of the Policy states that bad faith can be shown where “by using the domain name [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] website or location or of a product or service on [the] web site or location.” As noted in Section 4 of this Panel’s decision, Respondents have set up a website at the URL associated with most of the Disputed Domain Names, which provide links to competitors of Complainant. Hence, Respondents are trading on the goodwill of Complainant’s trademarks to attract Internet users, presumably for Respondents’ own commercial gain.

Furthermore, Complainant has included a list of domain names registered to Respondents that include other famous or well-known marks, such as <fujiphoto.com>, <nikebikini.com>, <nikiswimsuit.com>, and <nissangt-r.com>, among others. The Panel finds that this suggests a pattern of registering domain names which incorporate well-known trademarks, and is further indication of bad faith.

Finally, considering the high degree of renown of Complainant’s CANONfact that the Mr. Umemura’s reply of April 12, 2012 refers to “Canon for all my life,” this Panel would be hard-pressed to find a possibility that Respondents were unaware of Complainant’s rights marks, and the in Complainant’s marks when registering them. Accordingly, this too, evidences bad faith by Respondents.

Therefore, this Panel finds that Respondents registered and used the Disputed Domain Names in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Names <canoncard.com>, <canoncircle.com>, <canoneos-1.com>, <canoneos1.com>, <canoneos1ds.com>, <canonlens.com>, <canonmagazine.com>, <canonmag.com>, <canononline.com>, <canonphotos.com>, <canonpicture.com>, <canonpictures.com>, <canonsalon.com>, <canonservices.com>, <canonshopping.com>, <canonstower.com>, <canontower.com>, <canonuniverse.com>, <canon1.com>, <gotocanon.com>, <onlinecanon.com>, <planetcanon.com>, <shopcanon.com>, and <teamcanon.com> be transferred to Complainant.

Lorelei Ritchie
Sole Panelist
Dated: May 18, 2012

 

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