WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canon Information Systems Research Australia Pty Limited v. Michael Marriner
Case No. D2011-0622
1. The Parties
Complainant is Canon Information Systems Research Australia Pty Limited of North Ryde, Australia, represented by Banki Haddock Fiora, Australia.
Respondent is Michael Marriner of London, the United Kingdom of Great Britain and Northern Ireland.
2. The Domain Name and Registrar
The disputed domain name is <savecisra.com> which is registered with Tucows Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 8, 2011. On April 8, 2011, the Center transmitted by email to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On the same day, Tucows Inc. transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on April 12, 2011 providing the registrant and contact information disclosed by Tucows Inc., and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on April 15, 2011.
The Center verified that the Complaint, as amended, 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 Respondent of the Complaint, and the proceedings commenced on April 18, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was May 8, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on May 9, 2011.
The Center appointed Gerardo Saavedra as the sole panelist in this matter on May 16, 2011. This Panel finds that it was properly constituted. This 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 is Canon Information Systems Research Australia Pty Limited, an Australian company.
Complainant is a wholly owned subsidiary of Canon Inc.
Complainant has rights over the CISRA trademark, registration No. 949359 with the Australian Trade Mark Office (ATMOSS), registered in 2003, under classes 2, 9, 16 and 42.
The disputed domain name was created on December 14, 2010.
5. Parties’ Contentions
Established in 1990, Complainant is the Australian research and development centre for Canon Inc. (Canon), which has established a worldwide reputation in professional business and consumer imagining equipment and information systems. Canon’s extensive product line and digital solutions enable businesses and consumers worldwide to capture, store and distribute information.
Complainant researches and develops innovative imaging technologies that strengthen and diversify Canon’s worldwide business. Employing approximately 250 staff, Complainant is one of the Canon’s largest R&D centers outside of Japan and is a key part of Canon’s future product development. For example, Complainant has developed software applications for bundling with Canon and other cameras, known as “PhotoRecord”, of which over 70 million copies have been licensed by Complainant worldwide.
Complainant is the registrant of the domain names <cisra.com> and <cisra.com.au> and also uses the domain name <cisra.canon.com.au>.
The disputed domain name is confusingly similar to the trademark over which Complainant has rights.
Complainant has rights over the trademark CISRA. Complainant’s trademark is an acronym of its own name and is clearly an invented word, having no other meaning in the English language or any other language.
The only difference between the disputed domain name and Complainant’s trademark CISRA is the addition of the generic term “save”. It has been established by many past Panels that a domain name incorporating a trademark in its entirety with the addition of a non-distinctive prefix or suffix is generally not distinguishable from the trademark in question.
Complainant further says that it is legitimate for the Panel to take into account the appearance of the website under the disputed domain name in order to determine the issue of confusingly similarity. The website associated to the disputed domain name displayed the graphic CISRA which is identical to the representation of Complainant’s trademark as used on its own website, and further is evidence that Respondent is fully aware of Complainant and its reputation.
Respondent has no rights or legitimate interest in the disputed domain name.
No agreement, authorization or license has been granted to Respondent to use Complainant’s trademark.
The use of the disputed domain name containing Complainant’s entire mark makes it difficult to infer a legitimate use of the disputed domain name by Respondent.
A search of Respondent would indicate that neither has ever been known by the disputed domain name nor has either acquired any trademark rights and, since registration of the disputed domain name, neither Respondent has ever made any bona fide use of the disputed domain name.
It is plain from a comparison of Respondent’s website and Complainant’s website that Respondent is fully aware of Complainant and its trademark.
It is submitted from the foregoing that Respondent has registered and is using the disputed domain name to misrepresent a relationship between Respondent and Complainant in order to mislead consumers and tarnish the reputation and business of Complainant by suggesting that Complainant is in some kind of trouble, financial or otherwise, and in need of assistance because of that trouble. The representation of Complainant as being in some kind of difficulty is entirely false. This does not display a legitimate interest in the disputed domain name.
The website under the disputed domain name shows no legitimate noncommercial use of the disputed domain name in the nature of a “sux” site because the website contains no legitimate criticism or comment. For example, the empty “Forums”. Attempts to register on the website lead only to generic Word Press “Profile” then “Dashboard” sites. Attempts to email the website on the email address provided “email@example.com”, have not been responded to.
Such conduct does not amount to a legitimate noncommercial or fair use of the disputed domain name and is tarnishing the trademark of Complainant as prohibited by paragraph 4(c)(iii) of the Policy.
Respondent registered and is using the disputed domain name in bath faith.
A comparison of Respondent’s website and Complainant’s website shows that Respondent was aware of the trademark rights of Complainant at the time Respondent registered the disputed domain name and, having no legitimate rights or purposes in doing so, this in itself evidences that Respondent registered the disputed domain name in bad faith.
Therefore, Complainant submits that Respondent registered the disputed domain name with actual knowledge of Complainant’s widespread use and reputation in the name “cisra” because Complainant is part of the Canon group of companies, being the world’s leading imaging company. The use of the CISRA mark on almost every page of Respondent’s website supports this. Registration of a domain name with such knowledge of Complainant’s widespread use and reputation in the name “cisra” is registration in bad faith.
Complainant submits that the website is evidence that the disputed domain name is being used in bad faith by misleading consumers to believe it is a site devoted to the purpose of helping “our much loved company […] in its hour of need”. This falsely represents a relationship with and imputed some kind of financial or other difficulties to Complainant, in order to tarnish the business and reputation of Complainant.
To further the misrepresentation, the website uses a replica of Complainant’s trademark on each page.
The website asks users to register to or email the website “(f)or access to the site and to find out what you can do to help save our much loved company”. However, while it holds itself out to be a site offering assistance to Complainant in crisis, this is not the real purpose of the website. The material downloaded from the website discloses that upon registration by an Internet user, the user is diverted to generic Word Press “Profile” then “Dashboards” sites, which feature no comments, posts or text about Complainant. It is not a genuine forum.
To an unregistered user of the site, each page appears to be the same, and the user cannot progress past the same text as that on that homepage. For example, the “Welcome” link directs users to a page featuring the same text as that which appears on the homepage. The “Archives March 2011” link also directs users to a page featuring the same text as that which appears on the homepage. The same result occurs when clicking on the “Uncategorized” link. Attempts to navigate through the website essentially lead nowhere.
The website invites users to email “firstname.lastname@example.org”. A copy of an email to this address, to which no response has been received, is presented by Complainant as Annex 8. This further demonstrates that the disputed domain name was registered and is being used in bad faith.
For the reasons above, Complainant also submits that the disputed domain name is not being used for a legitimate “sux” site, and notes that it offers no comment or criticism of Complainant. On the contrary, it falsely purports to be helping or saving Complainant from financial woes or downfall.
In addition, the addition of the generic term “save” creates a false impression, confusion or belief that Complainant is associated with the disputed domain name. It imputes that the purpose of the website is to help Complainant, which is in some kind of trouble, financial or otherwise.
This intention is made plain by the website which uses the CISRA trademark and states that the website as being one operated by the “company” and expresses the wishes of the “MD” of “CISRA” (the managing director of Complainant has not authorized, and has nothing to do with, the disputed domain name or the website). There is no other company name or mark evidence on the website, apart from Complainant’s.
Complainant observes that the operation of the disputed domain name has now been altered so that it is not visible without entry of a password. Complainant submits that this change has been brought about because Respondent has been made aware of the objections of Complainant to the disputed domain name and the website and is using the disputed domain name for the sole purpose of gaining from Complainant some advantage, which further evidences that Respondent is using the disputed domain name itself in bad faith.
Complainant requests that the disputed domain name be transferred to Complainant.
Respondent did not reply to Complainant’s contentions.
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 and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.
The lack of a proper response from Respondent does not automatically result in a favorable decision for Complainant1. The burden for Complainant, under paragraph 4(a) of the Policy, is to show: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; (ii) that Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) the disputed domain name has been registered and is being used in bad faith.
A. Determination of Proper Respondent
The Complaint filed with the Center on April 8, 2011 named Contactprivacy.com as respondent, although it clarified that it was “privacy protected”. A printout of the corresponding WhoIs database provided by Complainant confirmed the above. At the Center’s request, the Registrar sent its registrar verification on April 8, 2011, disclosing Michael Marriner as registrant of the disputed domain name. In response to an email from the Center, on April 15, 2011, Complainant filed an amended Complaint in which it added Michael Marriner as additional Respondent.
Pursuant to the paragraph 1 of the Rules “Respondent means the holder of a domain-name registration against which a complaint is initiated”. Since the name of the real holder of the disputed domain name registration has been identified, in this case, this Panel decides to have Michael Marriner as the proper Respondent and thus further references to Respondent herein should be understood to Michael Marriner2.
B. Identical or Confusingly Similar
It is undisputed that Complainant has rights over the CISRA trademark.
The disputed domain name entirely incorporates the CISRA trademark, which Complainant contends is an acronym of its name and an invented word, having no other meaning in the English language or any other language.
The only difference between Complainant’s CISRA trademark and the disputed domain name is the addition of the prefix “save”. The addition of such word is not enough to avoid similarity, nor does it add anything to avoid confusion. Prior UDRP panel decisions support this Panel’s view (Aventis Pharma SA., Aventis Pharma Deutschland GmbH v. Jonathan Valicenti, WIPO Case No. D2005-0037, Philip Morris USA Inc. v. n/a, WIPO Case No. D2004-0462, Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409).
Therefore, this Panel finds that the disputed domain name is confusingly similar to Complainant’s CISRA trademark.
C. Rights or Legitimate Interests
Complainant has alleged and Respondent has failed to deny that Respondent has no rights or legitimate interests in respect of the disputed domain name.
Complainant asserts that no agreement, authorization or license has been granted to Respondent to use Complainant’s trademark and that Respondent has never been known by the CISRA trademark.
According to the evidence in the file, the website associated to the disputed domain name clearly shows Complainant’s trademark with the design used by Complainant in its own website and the legend “Our company and the MD urgently needs the help of past and current employees […] For access to the site and find out what you can do to help save our much loved company, please register or email us at email@example.com […]”.
It is clear that Respondent is using the website associated with the disputed domain name to misrepresent a relationship between Respondent and Complainant. Complainant contends that the website associated with the disputed domain name suggests that Complainant is in some kind of trouble and in need of assistance when in fact Complainant is not in trouble, whether financial or otherwise. Such use demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain name.
Further, it cannot be considered as a criticism site because there is no evidence that might suggest that the disputed domain name is used as a genuine noncommercial free speech website3.
In the file there is no evidence of circumstances of the type specified in paragraph 4(c) of the Policy, or of any other circumstances, giving rise to a possible right to or legitimate interest in the disputed domain name by Respondent. In the absence of any explanation from Respondent as to why it might consider it has a right or legitimate interest in using a domain name which entirely incorporates Complainant’s trademark, this Panel considers that Complainant has established prima facie that Respondent has no rights or legitimate interests in the disputed domain name4.
Based on the aforesaid, this Panel concludes that Respondent has no rights or legitimate interests in the disputed domain name.
D. Registered and Used in Bad Faith
Complainant contends that Respondent’s registration and use of the disputed domain name is in bad faith.
From a plain comparison of Respondent’s website and Complainant’s website, it is clear that Respondent should have been fully aware of the existence of Complainant and its CISRA trademark at the time it obtained the registration of the disputed domain name as it clearly shows Complainant’s trademark with the same design used by Complainant on its own website5. This Panel considers that in using the disputed domain name in such way, Respondent has sought to create a likelihood of confusion with Complainant and its CISRA trademark as to the sponsorship or source or affiliation of the website associated to the disputed domain name.
This Panel finds that Respondent’s choice of the disputed domain name was deliberate, with prior knowledge of Complainant and with the intention of creating a false impression that Complainant is in some kind of trouble, which by no means may be construed as a fair criticism site. Such use constitutes an improper use of Complainant’s mark6.
In light of the above, it is found that the registration of the disputed domain name was, on the face of it, made in bad faith and it is being used in bad faith.
For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, this Panel orders that the disputed domain name <savecisra.com> be transferred to Complainant.
Dated: May 30, 2011
1 See Berlitz Investment Corp. v. Stefan Tinculescu, WIPO Case No. D2003-0465: “[…]the panel finds that as a result of the default, Respondent has failed to rebut any of the factual assertions that are made and supported by evidence submitted by Complainant. The panel does not, however, draw any inferences from the default other than those that have been established or can fairly be inferred from the facts presented by Complainant and that, as a result of the default, have not been rebutted by any contrary assertions or evidence”.
2 The use of privacy service providers, the disclosure of underlying registrants and the determination of the proper respondent have been dealt with in several panel decisions. For instance, see The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services , WIPO Case No. D2007-1438; and Costco Wholesale Corporation and Costco Wholesale Membership, Inc., v. Yezican Industries and Domains By Proxy, Inc., WIPO Case No. D2007-0638.
4 See Intocast AG v. Lee Daeyoon, WIPO Case No. D2000-1467: “For methodical reasons it is very hard for the Complainant to actually prove that Respondent does not have rights or legitimate interests in respect of the domain name, since there is no strict logical means of verifying that a fact is not given... Many legal systems therefore rely on the principle negativa non sunt probanda. If a rule contains a negative element it is generally understood to be sufficient that the complainant, by asserting that the negative element is not given, provides prima facie evidence for this negative fact. The burden of proof then shifts to the respondent to rebut the complainant’s assertion”.
5 See Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598: “A second factor found to support a finding of bad faith is Respondent’s knowledge of the Complainant’s mark. Respondent registered the "nikesportstravel.com" and "niketravelcom" Domain Names on May 14, 1999, long after Nike registered the NIKE mark. Respondent had substantial constructive notice of the NIKE mark […]”.