WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canon U.S.A., Inc. v. Miniatures Town
Case No. D2014-0948
1. The Parties
Complainant is Canon U.S.A., Inc. of Melville, New York, United States of America (the “USA”), represented by Kestenberg Siegal Lipkus LLP, Canada.
Respondent is Miniatures Town of Seattle, Washington, USA.
2. The Domain Name and Registrar
The disputed domain name <canonmug.com> is registered with GoDaddy.com, LLC (“Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (“Center”) on June 4, 2014. On June 5, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 5, 2014, the Registrar transmitted by email to the Center its response confirming that Respondent is listed as the registrant and providing contact information and other details of the registration.
The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (“Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (“Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (“Supplemental Rules”).
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 12, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was July 2, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on July 3, 2014.
The Center appointed Debra J. Stanek as the sole panelist in this matter on July 14, 2014. 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’s parent company owns United States federal trademark registrations for the mark CANON, as a word mark and in a stylized form, for cameras and other imaging and optical products, as well a registration for cups. Complainant is authorized by its parent company to use the CANON marks. The earliest of the registrations was issued in 1955 and the registration for cups was issued in 1984. Complainant’s parent company has also registered the domain name <canon.com>, which is used by Complainant.
According to the Registrar, the disputed domain name <canonmug.com> was created in March 2010 and registered to Respondent on February 26, 2012. Respondent apparently offers on its site coffee mugs that resemble various CANON camera zoom lenses.
5. Parties’ Contentions
1. Identical or Confusingly Similar
Complainant (or its parent) has been engaged in the manufacture and distribution of imaging and optical products, including camera accessories such as camera lenses and cups, using the CANON mark in the United States since 1948. Complainant’s parent company1 owns numerous United States federal trademark registrations for CANON marks for imaging and optical products and accessoriees, as well as for other products such as cups. In addition, Complainant’s parent owns a number of domain name registrations that incorporate the CANON marks, including <canon.com>.
Complainant has used the CANON mark continuously since 1948 in the United States and elsewhere. 2
Respondent’s domain name, <canonmug.com>, incorporates Complainant’s CANON trademark in its entirety. The fact that the disputed domain name is used with a website that offers goods bearing “Complainant’s intellectual properties which are copied from legitimate Canon-branded zoom lenses” adds to any confusion. The addition of the term “mug” does not distinguish the disputed domain name from the CANON mark.
2. Rights or Legitimate Interests
Complainant’s numerous federal registrations and common law use predate Respondent’s domain name registration. Because Respondent is charged with constructive knowledge of Complainant’s CANON trademark registration, Respondent has no proprietary rights, or legitimate interests, in the disputed domain name.
Further, Respondent was previously subject to a proceeding under the Policy involving the following domains: <canoncups.com>; <canonlenscup.com>; <canonlenscups.com>; <canonlensmug.com>; <canonlensmugs.com>; and <canonmugs.com>, see Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2011-1777. Despite the fact that those domain names were transferred to Complainant, Respondent has egregiously continued to operate its website at the disputed domain name.
Complainant’s CANON mark is well-known and famous and has been for many years. Respondent registration of a domain name wholly incorporating a famous mark is not supported by legitimate interests.
Respondent is not using or preparing to use the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent is using the domain name in connection with a website that prominently displays the CANON trademark and that offers counterfeit merchandise and other products bearing the Complainant’s mark.
Neither Complainant nor its parent have authorized or licensed Respondent to manufacture, sell or offer for sale such merchandise, through the disputed domain name. The use of the disputed domain name to sell counterfeit products does not constitute a bona fide offering of goods.
Respondent is not commonly known by the names “canon mug com” or “canonmug.com.” The WhoIs record identifies the registration as “Miniatures Town.”
In the alternative, even if the goods advertised on Respondent’s site are genuine CANON products, Respondent is not an authorized reseller.
3. Registered and Used in Bad Faith
Respondent registered and is using the disputed domain name in bad faith based on the following facts:
Respondent is diverting Complainant’s customers or potential customers seeking information about Complainant to the website which Respondent’s domain name resolves, where Respondent presumably obtains commercial benefits through the sale of counterfeit products bearing Complainant’s marks.
Respondent is actively using, and has at all times used, the website intentionally misdirect and attract for commercial gain Internet users searching for Complainant’s authorized goods and services by creating a likelihood of confusion with Complainant’s mark to the source, sponsorship, affiliation or endorsement of Respondent’s website or location.
Given the fame of Complainant’s CANON mark and the fact that Respondent is using the disputed domain name to sell counterfeit merchandise bearing the Complainant’s mark, it is clear that the Respondent had knowledge of the CANON mark when it registered the domain name.
Respondent did not reply to Complainant’s contentions.
6. Discussion and Findings
In order to prevail, a complainant must prove, as to the disputed domain name, that:
(i) it is identical or confusingly similar to a mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in respect to it;
(iii) it has been registered and is being used in bad faith.
Policy, paragraph 4(a). The Policy sets out examples of circumstances that may evidence a respondent’s rights or legitimate interests in a domain name, see Policy, paragraph 4(c), as well as circumstances that may evidence a respondent’s bad faith registration and use, see Policy, paragraph 4(b).
Although Respondent has not answered the Complaint, a default does not automatically result in a finding for Complainant. Rather, Complainant continues to have the burden of establishing the required elements. The Panel may, however, draw such inferences from Respondent’s default as it considers appropriate. See Rules, paragraph 14(b).
A. Identical or Confusingly Similar
The Panel shares the consensus view that a related company, such as a subsidiary or parent to the owner of a trademark, may be considered to have rights in the trademark for purposes of a UDRP proceeding. See WIPO Overview 2.0, paragraph 1.8. Accordingly, the Panel finds that Complainant has established its rights in the mark CANON by virtue of the evidence of the U.S. federal trademark registrations owned by its parent company.
The disputed domain name is not identical to Complainant’s mark. Instead, it consists of the mark CANON followed by the term “mug,” followed by the generic top-level domain.
The Panel is of the view that, as a general matter, a domain name is likely to be confusingly similar to a mark if it incorporates the mark or a variation of the mark. Here, the disputed domain name incorporates the mark in its entirety. The addition of the term “mug” serves a generic or descriptive function that, in the Panel’s view, does nothing to distinguish the disputed domain name from Complainant’s CANON mark. Indeed, in the Panel’s view, the term reinforces the term “canon” as the dominant part of the disputed domain name and seems to emphasize its function as a trademark.
The Panel finds that the disputed domain name is confusingly similar to a mark in which Complainant has rights.
B. Rights or Legitimate Interests
The Panel, consistent with the consensus view, finds that a complainant may establish that a respondent has no rights or legitimate interests in respect of a domain name by making a prima facie showing that a respondent lacks rights or legitimate interests. See WIPO Overview 2.0, paragraph 2.1(after complainant makes prima facie case, burden of showing rights or legitimate interests in the domain name shifts to respondent).
Paragraph 4(c) of the Policy sets out the following examples:
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a 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.
As noted above, a complainant must establish each of the three elements outlined in paragraph 4(a) of the Policy in order to prevail. The Panel concludes that Complainant has made a prima facie showing that none of the three examples set forth in paragraph 4(c) of the Policy are applicable here.
It does not appear that Respondent is commonly known by the disputed domain name – the WhoIs record identifies the registrant as “Miniatures Town.” Nor does it appear that use of the disputed domain name is noncommercial or otherwise a fair use – the website to which the disputed domain name resolve offers for sale products bearing the CANON mark.
Although Complaint alleges that the mugs offered for sale at Respondent’s website are “counterfeit,” it provides no evidence or explanation on this point. This Panel agrees with the panelist in Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2011-1777:
“A counterfeit item normally is a newly-produced item illegally made to look like an imitation or “knock off” (often trademarked) product. A counterfeit item typically bears the brand or trademark of another item and is manufactured to look like the branded original.
The Panel assumes that Complainant meant to indicate that the lens parts used to make the mugs sold on Respondent’s websites are themselves counterfeit. This could take the form of the mugs and products: (1) not being made from recycled lens parts at all but instead being manufactured to look like lens parts and then receiving Complainant’s brand; or (2) the mugs being made from actual lens parts that themselves are counterfeit.”
While Complainant did not establish that the products offered by Respondent are counterfeit, it has established that the products bearing the CANON marks are not authorized by Complainaint.
Had Respondent submitted a response to the Complaint, it might have been able to submit evidence that the CANON-branded products offered at <canonmug.com> were made from genuine CANON products and advanced an argument casting it as a “reseller” or “distributor.” The Panel shares the consensus view that there are circumstances where a reseller or distributor may make a bona fide offering of goods and services and thus acquire a legitimate interest in the domain name. See WIPO Overview 2.0, Question 2.3. Those circumstances generally include: (1) actually offering the goods and services at issue, (2) using the site to sell only the trademarked goods, and (3) the site’s accurately disclosing or disclaiming the registrant’s relationship with the trademark owner. Here, however, it does not appear that Respondent offered only CANON-branded products or that any disclosure or disclaimer was used.
The Panel concludes that Complainant has established that Respondent lacks any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
A complainant must establish that the domain name was registered and is being used in bad faith. The Policy sets out four non-exclusive circumstances, evidence of which may establish bad faith (see Policy, paragraph 4(b)(i)-(iv)):
(i) Registering the domain name primarily to sell it for more than documented out-of-pocket costs (see Policy, paragraph 4(b)(i)).
(ii) Registering the domain name to prevent the owner of the trademark from reflecting the mark in a domain name, where there is a pattern of such conduct (see Policy, paragraph 4(b)(ii)).
(iii) Registering the domain name primarily to disrupt the business of a competitor (see Policy, paragraph 4(b)(iii)).
(iv) Using the domain name to intentionally attempt to attract, for commercial gain, Internet users to [respondent’s] web site or other on-line location, by creating a likelihood of confusion with complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location or a product or service on [the respondent’s] web site or location, (see Policy, paragraph 4(b)(iv)).
Complainant’s rights in the CANON marks long predate the registration of the disputed domain name. The nature of the products offered on the website associated with the disputed domain name make clear that Respondent knew of Complainant and its marks. The Panel concludes that Respondent registered and is using the domain name to attract visitors to its website, for commercial gain, by creating a likelihood of confusion with Complainant’s CANON mark. This conclusion is supported by the findings in the previous decision invoving Complainant and Respondent, Canon U.S.A., Inc. v. Miniatures Town, WIPO Case No. D2011-1777.
Under the facts and circumstances presented here, the Panel concludes that Respondent registered and is using the domain names in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <canonmug.com> be transferred to the Complainant.
Debra J. Stanek
Date: July 28, 2014
1 The declaration of Complainant’s outside counsel appears to confuse the “Complainant” with its parent and to incorrectly declare that “Complainant”—defined for purposes of the declaration as only Canon U.S.A., Inc. —owns various trademark and domain name registrations. Instead, as the Complaint alleges, and the trademark registrations annexed to the Complaint establish, the United States trademark registrations are owned by Complainant’s parent. The Panel reviewed the “WhoIs” record for the <canon.com> domain name; it too is registered to Complainant’s parent company. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”), paragraph 4.5 (“A panel may undertake limited factual research into matters of public record if it deems this necessary to reach the right decision.”)
2 The Panel gives little weight to much of Complainant’s declaration, which includes factual assertions that do not seem to be within the knowledge of outside legal counsel and various hearsay (e.g., “I am advised by [Complainant’s in-house counsel] and believe …”).