WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
NIKON CORPORATION v. Rene Garcia
Case No. D2017-0317
1. The Parties
The Complainant is NIKON CORPORATION of Tokyo, Japan, represented by Smart & Biggar, Canada.
The Respondent is Rene Garcia of Miami, Florida, United States of America (“United States”).
2. The Domain Names and Registrar
The disputed domain names <keymission.net> and <nikonkeymission.com> (the “Domain Names”) are registered with GoDaddy.com, LLC (the “Registrar”).
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 16, 2017. On February 17, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Names. On February 20, 2017, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the Respondent’s contact details.
The Complainant filed amendments to the Complaint on March 7, 2017 and March 9, 2017.
The Center verified that the Complaint, together with the amendments to 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 10, 2017. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on March 31, 2017.
The Center appointed Nicholas Smith as the sole panelist in this matter on April 6, 2017. 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
The Complainant is a multinational corporation specializing in optics and imaging products, whose predecessor in title was established in Japan in 1917. The Complainant sells NIKON brand digital cameras and has recently launched a line of digital cameras to serve the action camera market under the KEYMISSION brand, including the Nikon KeyMission 360. A press release announcing the launch of the NIKON KEYMISSION 360 was issued on January 5, 2016.
The Complainant is the owner of trade marks in various countries, including Australia, Canada and the United States, for the word “nikon” (the “NIKON Mark”) filed as early as 1951 in the United States. The Complainant is also the owner of trade marks in various countries, including Australia, Japan and the United States, for the term “keymission” (the “KEYMISSION Mark”), filed on (or having a priority date of) December 28, 2015 in each of those countries. The Complainant is also the owner of a number of domain names that feature the words “nikon” and “keymission”, including <nikon.com> and <keymission.com>.
The Domain Names were registered on January 6, 2016. The Domain Names do not redirect to an active website, rather they redirect to parking pages operated by the Registrar.
5. Parties’ Contentions
The Complainant makes the following contentions:
(i) that the Domain Names are confusingly similar to the Complainant’s NIKON and KEYMISSION Marks;
(ii) that the Respondent has no rights or legitimate interests in respect of the Domain Names; and
(iii) that the Domain Names have been registered and are being used in bad faith.
The Complainant is the owner of the NIKON and KEYMISSION Marks, being the owner of trade marks registered in various international jurisdictions for the NIKON and KEYMISSION Marks. The Complainant has also registered domain names that incorporate the NIKON and KEYMISSION Marks, including <nikon.com> and <keymission.com>.
The Domain Names are identical to and/or incorporate the NIKON and/or KEYMISSION Marks in their entirety and hence are identical or confusingly similar to the NIKON and/or KEYMISSION Marks.
The Respondent is not commonly known by the Domain Names nor does it have any trade marks that correspond to the Domain Names. The Complainant has not authorized or licensed the Respondent to use the NIKON or KEYMISSION Marks or any confusingly similar variations thereof. The Respondent has not made demonstrable preparations to use the Domain Names for a bona fide offering of goods and services or made a legitimate noncommercial or fair use of the Domain Names as the Domain Names have no content whatsoever.
The Respondent has registered and uses the Domain Names in bad faith. The NIKON Mark is a well-known mark and the combination of the NIKON and KEYMISSION Marks suggests that the Respondent must have known of the Complainant at the time the Domain Names were registered. Furthermore the registration of the Domain Names one day after the launch of the Nikon KeyMission 360 action camera is a highly suspicious circumstance. There is no plausible circumstance under which the Respondent could use the Domain Names other than in bad faith. The Respondent’s passive holding of the Domain Names amounts to use of the Domain Names in bad faith.
The Respondent did not reply to the Complainant’s contentions.
6. Discussion and Findings
A. Identical or Confusingly Similar
To prove this element the Complainant must have trade or service mark rights and the Domain Names must be identical or confusingly similar to the Complainant’s trade or service mark.
The Complainant is the owner of the NIKON and KEYMISSION Marks, having registrations for the NIKON and KEYMISSION Marks as trade marks in various countries around the world.
The Domain Name <keymission.net> consists of the KEYMISSION Mark and the generic Top-Level Domain (“gTLD”) “.net” and, discounting the necessary gTLD element, is identical to the KEYMISSION Mark. The Domain Name <nikonkeymission.com> consists of the NIKON and KEYMISSION Marks in their entirety with no other distinguishing elements. The fact that the Domain Name <nikonkeymission.com> consists of two related marks does not prevent a finding of confusing similarity with respect to either of those marks individually. The Panel finds that the Domain Name <nikonkeymission.com> is confusingly similar to both the Complainant’s NIKON and KEYMISSION Marks. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied.
B. Rights or Legitimate Interests
To succeed on this element, a complainant may make out a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. If such a prima facie case is made out, the respondent then has the burden of demonstrating rights or legitimate interests in the domain name.
Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name:
“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):
(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 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.”
The Respondent is not affiliated with the Complainant in any way. It has not been authorized by the Complainant to register or use the Domain Names or to seek the registration of any domain name incorporating the NIKON and KEYMISSION Marks or a mark similar to the NIKON and KEYMISSION Marks. There is no evidence that the Respondent is commonly known by the Domain Names or any similar name.
There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Names in connection with a bona fide offering of goods or services or for a legitimate noncommercial use. In fact there is no evidence of any demonstrable preparations to use the Domain Names at all.
The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or interests in the Domain Names. The Respondent has chosen not to respond to the Complaint and thus has failed to provide any evidence of rights and legitimate interests in the Domain Names. The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Names under paragraph 4(a)(ii) of the Policy.
C. Registered and Used in Bad Faith
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of the Domain Names in bad faith:
(i) circumstances indicating that the Respondent has registered or has acquired the Domain Names primarily for the purpose of selling, renting, or otherwise transferring the Domain Name registrations to the Complainant who is the owner of the trade mark or service mark or to a competitor of the Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Names; or
(ii) the Respondent has registered the Domain Names in order to prevent the owner of the trade mark 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 Names primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the Domain Names, 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 the Respondent’s website or location or of a product or service on the Respondent’s website or location.
The Panel finds that the Respondent must have been aware of the Complainant and its reputation in the NIKON and KEYMISSION Marks at the time the Respondent registered the Domain Names. The Respondent is based in the United States and “nikon” is not an ordinary English word. The Domain Names were registered one day after the Complainant announced the launch of its Nikon KeyMission 360 camera. There is no obvious reason, nor has the Respondent offered an explanation, for the Respondent to register two domain names both incorporating the KEYMISSION Mark (one of which also incorporates the NIKON Mark) unless there was an intention to create a likelihood of confusion between the Domain Names and the Complainant and the NIKON and KEYMISSION Marks.
The Domain Names are currently inactive. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 established that a UDRP panel must examine all the circumstances of the case to determine whether a respondent is acting in bad faith in circumstances where the domain names are unused.
The Panel is prepared to infer, based on the conduct of the Respondent, including the timing of the registration of the Domain Names, the passive holding of the Domain Names and the failure by the Respondent to participate in this proceeding or otherwise provide any explanation of its conduct in registering domain names that are identical to/consist entirely of trade marks owned by the Complainant, that the Domain Names are most likely being held pending use as website that, without the license of the Complainant, will offer or make reference to the Complainant’s KEYMISSION products using the NIKON and/or KEYMISSION Marks. As such Panel finds that the passive holding of Domain Names amounts to use in bad faith.
Accordingly, the Panel finds that the Respondent has registered and is using the Domain Names in bad faith under paragraph 4(a)(iii) of the Policy.
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 <keymission.net> and <nikonkeymission.com> be transferred to the Complainant.
Date: April 10, 2017