NL- I have never heard of this administrative board before. Is this a legitimate binding decision?
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canon U.S.A., Inc. v. donnylong.com
Case No. D2010-0245
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.
Respondent is donnylong.com of Woodland Hills, California, United States of America.
2. The Domain Name and Registrar
The disputed domain name <canonallinone.com> is registered with GoDaddy.com, Inc.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2010. On February 18, 2010, the Center transmitted by email to GoDaddy.com, Inc. a request for registrar verification in connection with the disputed domain name. On February 19, 2010, 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. 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 Respondent of the Complaint, and the proceedings commenced on February 23, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was March 15, 2010. Respondent failed to file a formal response. However, Respondent transmitted to the Center emails dated February 23, 2010, March 5, 2010 and March 17, 2010 informally replying to the Complaint.
The Center appointed Frederick M. Abbott as the sole panelist in this matter on March 19, 2010. 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, Canon U.S.A., Inc., is authorized by its corporate parent, Canon Inc., to use the CANON trademark at issue in this proceeding and to obtain such relief as may be directed by the Panel. Complainant and its corporate parent are hereinafter referred to as “Complainant”. Complainant has registered the word trademark CANON on the Principal Register of the United States Patent and Trademark Office (USPTO), including among others, registration number 975904, dated January 1, 1974, in international class (IC) 9, covering “electrophotographic copying machines and parts thereof”, and registration number 1315232, dated January 22, 1985, in IC 1, 7, 9, and 16 (cancelled) covering, inter alia, printers, telefax equipment and photocopiers. Complainant has filed declarations of incontestability for both the aforesaid registrations pursuant to Section 15 of the Lanham Act, and both such registrations are deemed incontestable within the meaning of the Act.
Complainant has for over 50 years used the CANON trademark throughout the United States and worldwide to advertise its products and services, it has expended significant financial resources on advertisement and promotion under the trademark, and it has sold billions of products under the trademark.
Complainant has registered the domain name <canon.com> and operates a commercial Internet website at URL “www.canon.com”. Among the products manufactured, marketed, offered for sale and sold by Complainant are “all-in-one inkjet printers”, which are devices that perform multiple functions, including printing documents, scanning documents, and transmitting documents by telefax.
According to the Registrar’s verification report, Respondent is registrant of the disputed domain name. According to that verification report, the record of registration of the disputed domain name was created on August 27, 2008.
As of January 20, 2010, the disputed domain name was used to direct Internet users to a website with the banner heading “Canon All In One”, followed by the terms “Info Specs Price Contact”. This was followed by the line, “This site will be info on where you can find many Canon All In Ones for a cheap price on the web. For now while the site is being built check out”. This statement is followed by additional information including “SITE IS OWNED BY WELL KNOWN PORN STAR DONNY LONG”. Links on the website include “Swingers Watching” and “XXXFILMJOBS.COM, THE ADULT INDUSTRIES SECRET PLACE”. The functional links on the website are an email address, and the aforesaid connections to “www.swingerswatching.com” and “www.xxxfilmjobs.com”. The linked websites exhibit graphic pornographic material. The website home page for “www.xxxfilmjobs.com” states “This site is owned and run by real Porn Star/Director Donny Long. His WIKI Page and his IAFD Page”.
Complainant has submitted a declaration from a legal administrator in its legal administration division stating that on January 6, 2010, she received a telephone call from a person identifying himself as “Don” who indicated that he bought and sold Internet domain names, knew how much the <canonallinone.com> domain was worth, and offered to sell it to Complainant. According to the declaration, the caller also “threatened to take damaging actions against Canon U.S.A., Inc. if he were to receive no response to his offer within a short period of time.” Complainant has asserted that the telephone number from which the call from “Don” originated is identical to a telephone number listed on the web page at address “www.donnylongstudios.com/prices.html”.
As of February 23, 2010, the disputed domain name directed Internet users to a webpage headed with “Canon All in One”, and stating in large font “THIS SITE IS STRICTLY A GRIPE SITE.”
The Registration Agreement in effect between Respondent and GoDaddy.com subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory administrative proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5. Parties’ Contentions
Complainant alleges that it has rights in the trademark CANON based on long use in commerce in the United States and as evidenced by registration at the USPTO.
Complainant argues that the disputed domain name is confusingly similar to its CANON trademark.
Complainant asserts that its CANON trademark is well-known in the United States and other countries.
Complainant alleges that Respondent lacks rights or legitimate interests in the disputed domain name. Complainant argues that Respondent did not make a bona fide offering of goods or services under the disputed domain name prior to notice of the dispute; that Respondent has not been previously known by the disputed domain name; that Respondent is not making legitimate noncommercial or fair use of the disputed domain name without intent (1) for commercial gain to divert consumers misleadingly or (2) to tarnish Complainant’s trademark. Complainant also argues that Respondent has acted in a manner that breaches its registration agreement for the disputed domain name because that agreement required Respondent to warrant that it did not intend to use the disputed domain name to directly or indirectly infringe legal rights of a third party.
Complainant argues that Respondent registered and used the disputed domain name in bad faith, including by making an unsolicited offer to sell the disputed domain name to Complainant in a manner that implied that a payment would be required for more than Respondent’s out of pocket expenses associated with the disputed domain name.
Complainant further contends that, even without evidence of offering to sell the disputed domain name, Respondent’s registration and use in bad faith is evidenced by use of the disputed domain name incorporating Complainant’s well-known trademark to direct Internet users to a website with links to other websites containing pornographic material associated with Respondent. Complainant argues that such action by Respondent is intended for commercial gain, and tarnishes the reputation and goodwill of Complainant associated with its mark.
Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to Complainant.
Respondent’s email replies in response to the Complaint state in total:
Please let me know what it is you will be needing from me. I really
don’t have time for this so please also let me know what will happen if I just ignore this. Canon has ripped me off big time and I guess they are trying to do this again. This might just be making very large adult press headlines for them trying to rip me off “a well known adult movie star”. All they had to do was exchange my camera and printer. (Email from Donny Long of February 23, 2010)
I dont have time for this and as you can see on the site its a gripe site and that’s my response. Cannon ripped me off on a camera and a printer and if they want to play this game we can make this public fine by me. (Email from Donny Long of March 5, 2010)
I have already replied. Canon has ripped me off twice and
canonallinone.com is a grip site. (Email from Donny Long of March 17, 2010)
6. Discussion and Findings
The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this administrative proceeding.
It is essential to Policy proceedings that fundamental due process requirements be met. Such requirements include that a respondent have notice of proceedings that may substantially affect its rights. The Policy and the Rules establish procedures intended to ensure that respondents are given adequate notice of proceedings commenced against them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).
The Center notified Respondent of the Complaint and commencement of the preceding, and Respondent indicated through email messages to the Center that such transmissions were received. The Panel is satisfied that Respondent received adequate notice of these proceedings and a reasonable opportunity to respond.
Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:
(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) respondent has no rights or legitimate interests in respect of the domain name; and
(iii) respondent’s domain name has been registered and is being used in bad faith.
Each of the aforesaid three elements must be proved by a complainant to warrant relief.
A. Identical or Confusingly Similar
Complainant has provided evidence of use in commerce of the CANON trademark in the United States and registration of the CANON trademark on the Principal Register of the USPTO (see Factual Background supra). The Panel determines that Complainant has rights in the CANON trademark in the United States.
Complainant has provided evidence sufficient to establish that its CANON trademark is well-known in the United States in the field of home and business office equipment, including use to identify photocopiers, printers and telefax devices.
The disputed domain name directly incorporates Complainant’s well-known CANON trademark, and combines that mark with the term “all-in-one” to form <canonallinone.com>. The term “all-in-one” is commonly used by Complainant and other manufacturers in the United States to identify a type of home and business office equipment that performs multiple functions, including copying, printing and transmitting documents by telefax. Internet users seeing the disputed domain name combining Complainant’s well-known CANON trademark and the term “all-in-one” are likely to associate the disputed domain name with Complainant and its products. The Panel finds that the disputed domain name is confusingly similar to Complainant’s CANON trademark.1
The Panel finds that Complainant has rights in a trademark and that the disputed domain name is confusingly similar to that trademark.
B. Rights or Legitimate Interests
The second element of a claim of abusive domain name registration and use is that respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:
“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 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.” (Policy, paragraph 4(c))
Complainant has stated a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name.
Respondent has asserted rights or legitimate interests in the disputed domain name (incorporating Complainant’s well-known trademark) based on characterizing the website directly addressed by the disputed domain name as a “gripe site”. This assertion of rights or legitimate interests by Respondent does not explain why the disputed domain name was used by Respondent prior to Complainant’s initiation of this dispute to link Internet users to pornographic websites owned and operated by Respondent. Moreover, Respondent’s belatedly modified version of its website merely asserts “this site is strictly a gripe site”. The latter statement is an attempted legal characterization of content, but lacks content beyond the self-characterization.
Respondent’s use of the disputed domain name to link Internet users to websites including graphic pornographic content does not constitute a bona fide offering of goods or services prior to notice of the dispute, and is not legitimate noncommercial or fair use of the disputed domain name. Respondent must have been aware of Complainant’s well-known trademark when it registered the disputed domain name, and that Complainant would object to Respondent’s use of Complainant’s trademark to direct Internet users to pornographic websites. Respondent’s use of the disputed domain name is plainly commercial in nature. This does not represent “noncommercial” use. Respondent’s use of Complainant’s trademark (ordinarily associated with home and business office equipment) to direct Internet users to links to pornographic content does not fall within the scope of “fair use” (e.g., comparative advertisement or nominative identification) in U.S. trademark law.
Complainant has succeeded in establishing that Respondent lacks rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of the registration and use of a domain name in bad faith. These include (i) “circumstances indicating that [a 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 [a respondent’s] documented out-of-pocket costs directly related to the domain name”; or (iv) “by using the domain name, [respondent has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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] web site or location or of a product or service on [respondent’s] web site or location”.
Respondent has registered and used Complainant’s well-known CANON trademark in the disputed domain name to intentionally for commercial gain attract Internet users to a website from which Respondent links to other websites operated by Respondent. The linked websites contain graphic pornographic content. Respondent is using the disputed domain name to create Internet user confusion as to Complainant acting as a source, sponsor, affiliate or endorser of Respondent’s websites and content. Respondent’s actions are not justified by its belated assertion that the website directly associated with the disputed domain name is a “gripe site”. The Panel determines that Respondent registered and has used the disputed domain name in bad faith within the meaning of paragraph 4(b)(iv) of the Policy.
Complainant has presented evidence to suggest that Respondent registered the disputed domain name for purposes of selling it to Complainant for an amount in excess of Respondent’s out-of-pocket expenses associated with the disputed domain name. Although the Panel has no reason to doubt the evidence presented by Complainant regarding Respondent’s alleged offer for sale, because the Panel has already determined that Respondent acted in bad faith, the Panel need not make a finding on this additional ground.
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 name, <canonallinone.com> be transferred to Complainant.
Frederick M. Abbott
Dated: March 28, 2010
1 Addition of the generic top-level domain (gTLD) “.com” is not relevant to the confusing similarity analysis in the circumstances of this proceeding.