WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canon U.S.A. Inc. v. Miniatures Town

Case No. D2011-1777

1. The Parties

Complainant is Canon U.S.A. Inc. of Lake Success, New York, United States of America (“U.S.”), represented by Burns & Levinson LLP, United States of America.

Respondent is Miniatures Town of Seattle, Washington, United States of America.

2. The Domain Names and Registrar

The Disputed Domain Names: <canoncups.com>; <canonlenscup.com>; <canonlenscups.com>; <canonlensmug.com>; <canonlensmugs.com>; and <canonmugs.com> (collectively the “Disputed Domain Names”) are registered with GoDaddy.com, Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 18, 2011. On October 19, 2011, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the Disputed Domain Names. On October 19, 2011, GoDaddy.com, Inc. transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the Disputed Domain Names.

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 the Respondent of the Complaint, and the proceedings commenced on October 25, 2011. In accordance with the Rules, paragraph 5(a), the due date for Response was November 14, 2011. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 15, 2011.

The Center appointed Andrew Mansfield as the sole panelist in this matter on November 28, 2011. 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

Canon Inc., is a multinational corporation that specializes in the manufacture and distribution of imaging and optical products, including most notably cameras and related accessories, including camera lenses and cups. Complainant, Canon U.S.A., Inc., is authorized by its corporate parent, Canon Inc., to use the CANON trademarks at issue in this proceeding and to obtain such relief as may be directed by the Panel. The Panel will herein refer to Complainant and its corporate parent as “Complainant” or “Canon.”

Canon has used the trademark CANON for over fifty years in connection with its goods and services. Canon has obtained numerous federally registered trademarks and service marks (the “CANON Marks”), including the following, for cups, lenses and related goods:

- CANON, U.S. Trademark Registration Number 1283384, Registered June 26, 1984

- CANON, U.S. Trademark Registration Number 1315232, Registered January 22, 1985

- CANON and Design, U.S. Trademark Registration Number 603299, Registered March 15, 1955

5. Parties’ Contentions

A. Complainant

Canon alleges that it has made extensive use of the CANON Marks in connection with its goods and services. Complainant indicates that it invests large sums to promote and develop its marks through television, print media, and the Internet. Through their widespread extensive use the CANON Marks have, allegedly, become uniquely associated with Canon and its goods and services.

Canon states that it has established a website located at “www.canon.com,” which it uses to promote and sell its goods and services, including camera lenses.

Complainant alleges that Respondent is promoting and selling to the public counterfeit “Canon” lens cups and lens mugs that bear false reproductions of the Canon Trademarks through the Disputed Domain Names.

Canon states that it has never authorized or consented in any way to the use of CANON Marks on any of the products offered for sale through the Disputed Domain Names, nor has Canon granted any license to Respondent allowing such use. Complainant alleges Internet users arriving at the websites located at the Disputed Domain Names would likely believe that the sites are hosted by or endorsed or approved by Complainant. Indeed, Respondent’s use and registration of the Disputed Domain Names, Complainant argues, allows Respondent to engage in illegal sales of counterfeit Canon products, unlawfully benefiting from Canon’s good will in the Canon Marks, and disrupting Canon’s business.

Complainant alleges that the Disputed Domain Names are confusingly similar to its CANON Marks. The Disputed Domain Names combine Complainant’s CANON mark with the generic words “mugs”, “lens” and “cup(s)”. The addition of the common words to the distinctive brand CANON does not, Complainant pleads, create a mark that is distinguishable from the CANON Marks.

Complainant tells the Panel that Respondent has no connection or affiliation with Canon and has not received any license or consent, express or implied, to use the CANON Marks in a domain name or in any other manner. Respondent, according to Complainant, has never been known by the Disputed Domain Names or by any name incorporating the term “Canon”.

Respondent’s only use of the Disputed Domain Names has been to offer for sale unauthorized counterfeit lens mugs bearing the CANON Marks. Complainant holds that such a use is not a legitimate interest under the Policy.

Complainant argues that Respondent’s misappropriation of the Disputed Domain Name was not an accident. Where a mark is famous and known to the respondent, as in the instant case, it is “not one traders would legitimately choose unless seeking to create an impression of an association” with Complainant.

Complainant states that Respondent has registered the Disputed Domain Names in bad faith, by doing so with knowledge of Complainant’s rights in the CANON Marks. It is, according to Complainant, inconceivable that Respondent was unaware of Canon’s rights in the CANON Marks when it registered the Disputed Domain Names that incorporate the entirety of Complainant’s famous mark and are used to offer counterfeit products bearing the famous CANON Marks.

Complainant’s rights in the CANON Marks are easily discoverable, states Complainant. United States Patent and Trademark Office (“USPTO”) records are readily accessible online. Complainant argues that Respondent should be deemed to have had, at a minimum, constructive notice of Complainant’s trademark rights by virtue of its federal registrations in the CANON Marks.

For these reasons, Complainant asks that the Disputed Domain Names be transferred to it.

B. Respondent

Respondent did not reply to Complainant’s contentions.

6. Discussion and Findings

Complainant has the burden of proof in showing that each element within paragraph 4(a) of the Policy is present. These are as follows:

(i) The Disputed Domain Names are identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(ii) Respondent has no rights or legitimate interests in respect of the Disputed Domain Names; and,

(iii) The Disputed Domain Names were registered and are being used by Respondent in bad faith.

Even when a respondent defaults, as is the case here, the complainant must establish and carry the burden of proof on each of the three elements identified above. See Brooke Bollea, a.k.a Brooke Hogan v. Robert McGowan, WIPO Case No. D2004-0383. Further, under paragraph 14 of the Rules, where a party does not comply with any provision of the Rules, the Panel shall “draw such inferences therefrom as it considers appropriate.”

The Panel in this case has carefully examined and is satisfied that the Center has fulfilled the necessary obligations as prescribed by the UDRP Rules and accordingly, the Panel draws the appropriate inferences from the lack of any response.

The Panel proceeds to each of these elements below.

A. Identical or Confusingly Similar

The Panel finds that each of the Disputed Domain Names is confusingly similar to one of Complainant’s CANON Marks.

Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Complainant alleges that the “lens mugs” available for sale at the Disputed Domain Names are “counterfeit.” 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. Complainant in this case did not provide evidence that it manufactures mugs or thermoses made from recycled CANON lens, nor did Complainant indicate that it produces any such mugs under the CANON trademark. In this case at least the Panel finds it difficult to see how the offered products on the website would qualify as “counterfeits” of Complainant’s products because lenses and mugs serve different purposes.

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. Alternatively, Complainant may have intended to indicate that the mugs are “unauthorized” rather than “counterfeit.”

Fortunately, the Panel need not get to the bottom of whether the mugs are in fact “counterfeit” or made from “counterfeit” lens parts. While the general burden of proof rests with the Complainant, panels have recognized that this could result in the often impossible task of “proving a negative,” requiring information that is frequently available only to Respondent. Therefore the consensus view of UDRP panels is that a Complainant is required to make out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of production shifts to the respondent to come forward with appropriate allegations or evidence demonstrating rights or legitimate interests in the domain name. If the respondent fails to come forward with such appropriate allegations or evidence, a complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP

The Panel in this case is satisfied that Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the Disputed Domain Names. Once such a prima facie case is made, respondents carry the burden of demonstrating rights or legitimate interests in a disputed domain name. By matter of default, Respondent has failed to do so, and Complainant is deemed to have satisfied paragraph 4(a)(ii) of the Policy.

Even if Respondent had provided information that the mugs and products it sells are made from genuine, recycled Canon mugs, to this Panel this information would not necessarily mean that Respondent had rights or legitimate interests in the Disputed Domain Names. Even if Respondent was a reseller or distributor of CANON goods, to have a legitimate interest in a domain name with the CANON mark, it would typically have to use the domain name and website located there to sell only the trademarked goods, and the site would need to accurately and prominently disclose the Respondent’s relationship (or lack there of) with the trademark holder. Respondent in this case, appears, inter alia, to sell other branded mugs (e.g., based on Nikon) through the redirected Disputed Domain Names and Respondent does not indicate whether it sells mugs made from recycled parts. Perhaps had the Complainant’s case been contested by the Respondent, the Panel would have requested further information and evidence from the Parties. In light of the Respondent’s default, the Panel finds this unnecessary in order to reach a conclusion in the present case.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides the following non-exclusive examples of registration and use in bad faith. If found, any one of these elements, though non-exclusive, may be found to be evidence of the registration and use of the domain name in bad faith:

“i. Circumstances indicating that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out of pocket costs directly related to the domain name; or

ii. The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct; or

iii. The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv. By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, internet users to its website or other online 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 Respondent’s website or location.”

In this matter, it is alleged by the Complainant that Respondent is selling counterfeit goods at or through the websites referenced by the Disputed Domain Names. Because of Respondent’s default, the Panel finds it unnecessary to delve further into the observations recorded above. Respondent appears, in the circumstances of this case, to be seeking to attract Internet users to its website or online location by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s websites. The Panel finds that Respondent acted in bad faith at the time of registration and continues to do so through the operation of the websites at the Disputed Domain Names.

Again, the Panel notes that it is unnecessary to decide the issue of whether the lens mugs are made from actual CANON lens parts. It is sufficient to note that the Respondent has not sought to contest any of Complainant’s factual claims and that the Panel accepts that Respondent’s use of the CANON mark in the Disputed Domain Names may create confusion as to whether the mugs are an official product of Complainant or were authorized by Complainant. The Panel finds this is sufficient for present purposes to bring the Respondent’s conduct within the ambit of paragraph 4(b)(iv) of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain names <canoncups.com>; <canonlenscup.com>; <canonlenscups.com>; <canonlensmug.com>; <canonlensmugs.com>; and <canonmugs.com> be transferred to the Complainant.

Andrew Mansfield
Sole Panelist
Dated: December 15, 2011