WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company
Case No. D2000- 0878
1. The Parties
The complainant is Canon Kabushiki Kaisha of 30-2 Shimomaruko 3-Chome, Ohta-ku, Tokyo 146-8501, Japan. The respondent is Price-Less Inkjet Cartridge Company of 3890 Tamiami Trail, Port Charlotte, Florida 33952, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain names in dispute are:-
The registrar is Network Solutions, Inc. of Herndon, Virginia, United States of America.
3. Procedural History
The complaint was received by the Center by email on July 26, 2000 and in hardcopy on July 31, 2000. Receipt was acknowledged on July 28, 2000. On July 31, 2000 registration details were sought from the registrar. On August 3, 2000 registration details were confirmed by the registrar. On August 7, 2000 the Center satisfied itself that the complainant had complied with all formal requirements, including payment of the prescribed fee. On August 8, 2000 the Center formally notified the respondent by post/courier, fax and email of the complaint and of the commencement of this administrative proceeding and sent copies to the complainant, the registrar and ICANN.
The last day for a response was August 27, 2000. On August 26, 2000, the response was filed by email and on August 28, 2000 in hard copy. The Center acknowledged receipt on August 28, 2000 and on September 12, 2000 invited Alan L Limbury to serve as panelist. On September 13, 2000 Mr Limbury accepted the appointment and submitted a Statement of Acceptance and Declaration of Impartiality and Independence. On September 15, 2000 the Center transmitted the case file to the panel and notified the parties of the projected decision date of September 28, 2000.
On August 31, 2000 by email and on 1 September, 2000 in hardcopy, the complainant submitted a reply. Although the Rules make no provision for such a submission, the Center correctly forwarded the reply to the panel, which considers below whether or not to have regard to it.
The language of the proceeding was English.
The panel is satisfied that the complaint was filed in accordance with the requirements of the Rules and Supplemental Rules; payment was properly made; the panel agrees with the Center�s assessment concerning the complaint�s compliance with the formal requirements; the complaint was properly notified to the respondent in accordance with paragraph 2(a) of the Rules; the response was filed within time and the administrative panel was properly constituted.
4. Factual Background
The complainant began operations in Japan more than 60 years ago as a camera maker and has evolved into a global company engaged in the manufacture, distribution, advertising, promotion and sale of a wide array of products including computer peripherals such as printers, photocopiers, facsimile machines and other related products. The complainant invented in the early 1980s inkjet computer printing technology, and has long been selling throughout the world and in the United States its CANON® brand BUBBLEJET inkjet printers as well as parts and consumable products for these printers, including replacement inkjet cartridges.
These products are advertised and sold throughout the world in association with the CANON® mark, which the complainant uses both in block letters and in a stylized format. During the year 1999 alone, products bearing the CANON® mark generated more than U.S.$ 25.7 billion in worldwide sales and the complainant spent over U.S.$ 600 million for worldwide advertising and promotion of goods sold in association with the CANON® mark.
The complainant owns numerous worldwide trademark registrations for the trademark CANON® as both a non stylized word mark and in the stylized form. The complainant�s U.S. registration of the mark CANON® for goods which include computer printers (No. 1,315,232) was obtained in 1985.
The complainant also owns the domain name which it registered in 1990.
There is a market for the supply to consumers of replacement ink cartridges for inkjet printers in which original equipment manufacturers such as the complainant compete with suppliers of compatible replacement cartridges and cartridge recyclers.
The respondent is a small company, active in this market, whose owners work very long and difficult hours to help consumers understand and have a knowledgeable choice when it comes to supplies for their printers. In May 1999 the respondent registered the domain name in response to customer requests for an express shopping site. Consumers visiting that site at www. can select from original Canon products, compatible replacements or the alternative of recycling certain imaging supplies.
In June 1999, the respondent also registered the domain names , and .
The domain names and are not currently in use. The five names registered were not all intended to be used. The domain name is currently used by the respondent to experiment with certain new features and page layouts which became available.
The domain name was registered by the respondent on September 30, 2000 following letters of demand from the complainant�s attorneys in relation to the domain name . When accessed, links to the web site www..
The web pages hosted at the respondent�s active web sites www., www., and www. promote the sale of replacement ink cartridges for ink jet printers, including Canon printers.
5. Parties� Contentions
A. Complainant
The domain name is identical or confusingly similar to the trade mark CANON® in which the complainant has rights; the respondent has no rights or legitimate interests in respect of the domain name and the domain name was registered and is being used in bad faith.
B. Respondent
The Respondent does not admit the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; denies that it has no rights or legitimate interests in respect of the domain name and denies that the domain name was registered and is being used in bad faith.
6. Discussion and Findings
Procedural issues
As to the complainant�s reply, except where sought by the panel under Rule 12, no provision is made in the Policy, the Rules or the Supplementary Rules for further submissions after the response. For the reasons given in Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S&S Enterprises Ltd. (Case No. D2000-0802) this panel does not interpret Rule 12 as precluding acceptance of additional uninvited submissions under the panel�s general powers conferred by Rule 10, particularly having regard to the panel�s duty under Rule 10(b) to ensure each party is given a fair opportunity to present its case.
In this case the panel does not admit the reply because it carries the complainant�s case no further than the complaint and fairness to the parties does not warrant its admission.
Substantive issues
To qualify for cancellation or transfer, a complainant must prove each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Identity or confusing similarity
The disputed domain names all incorporate as their dominant feature the complainant�s trademark CANON®. Because the complainant is recognized as offering inkjet printers and, indeed, as having invented the technology of inkjet printing, the use of the word inkjet in three of the disputed domain names and the word ink alone in two of them would be likely to cause confusion in the mind of Internet users as to whether each of the disputed domain names are associated with the complainant: see The Stanley Works and Stanley Logistics, Inc v. Cam Creek. Co., Inc, (Case D2000-0113) and Nokia Corporation v. N (Case D2000-0102), holding disputed domain names confusingly similar to the trademark of the complainant, despite the addition of generic words.
In Microsoft Corporation v. M aka Tarek Ahmed (Case D2000-0548) contributing factors to the likelihood of confusion were held to be the visual similarity between the domain name and the complainant�s mark and the mark being strong and immediately recognizable. Here the domain names are not as closely similar to the trade mark as in that case but confusing similarity is present here for the same reasons.
The complainant has proved the disputed domain names are all confusingly similar to its CANON® mark.
Illegitimacy
There is no explanation as to why the respondent registered the names and other than that the respondent did not intend to use all five disputed domain names.
In State Farm Mutual Automobile Insurance Company v. Rocky E. Faw (Case FA94971) the respondent was found to have no legitimate interests in respect of the domain name where he had not used nor developed the domain name for a legitimate noncommercial or fair purpose and was not using the domain name in connection with a bona fide offering of goods or services. See also Leland Stanford Junior University v. Zedlar Transcription & Translation (Case FA94970).
With respect to the abovementioned two names, which the respondent has not used and did not intend to use, the panel finds the respondent to have no rights or legitimate interests in the names.
As to the domain name , the respondent�s reason for registering the name was to create an express shopping site for the products it offers, which include not only CANON® replacement inkjet cartridges and other products but also compatible replacement cartridges supplied by others. The panel finds that this domain name would initially lead potential customers of the complainant to believe they were contacting the complainant, and subsequently, as used in relation to the website www., (where the "headline" is CANON Express shopping Original Canon and compatible Cartridges for Inkjet Printers) would not disabuse them of the impression they were dealing with the complainant. This would be so despite the fine print disclaimer which was amended after the complainant�s attorneys made demands. Because the respondent must have known of the complainant�s trademark before registering this disputed domain name, the panel concludes that its use was intended misleadingly to divert consumers from the complainant to the respondent.
As to the domain name , (where the website states: " CANON ink for everyone welcome to webstore CanonI CANON OEM and Replacement Ink Cartridges for more than 60 CANON printer models" the same considerations apply and the panel makes the same findings.
The site www. links to the www. web site and the same findings apply, buttressed by the fact that the name was registered after the complainant�s attorneys had voiced the complainant�s concerns about the name .
Accordingly, although the offering of replacement inkjet cartridges is a lawful and legitimate business, the use of these three disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy.
The respondent has not been commonly known by any of the disputed domain names.
The respondent�s use of those of the domain names which it has used (, and ) has been commercial use.
The panel finds that the respondent has no rights or legitimate interest in any of the disputed domain names. The complainant has proved this element.
Bad faith registration and use
In SportSoft Golf, Inc. v. Hale Irwin�s Golfers� Passport (Case FA94956) a finding of bad faith was made where the respondent "knew or should have known" of the registration and use of the trade mark prior to registering the domain name. Likewise Marriott International, Inc. v. John Marriot (Case FA94737); Canada Inc. v. Sandro Ursino (Case AF-0211) and Centeon L.L.C./Aventis Behring L.L.C. v. E (Case FA95037).
In Guerlain S.A. v. HI Investments (Case D2000-0494) bad faith registration was found where the respondent, knowing of the complainant�s trade mark GUERLAIN, registered the domain name . The panel respectfully adopts the reasoning in that case of panelist Glas:
"While Respondent could have chosen a million of other names for his company and his online store, he precisely chose a domain name incorporating Complainant�s name so as to be identical or at least extremely confusingly similar to Complainant�s trademark."
The panel finds that each of the disputed domain names was registered in bad faith.
Although the respondent has not used the disputed domain names and in the usual sense, the "use" of a domain name in bad faith does not necessarily mean use on the Internet: Bayshore Vinyl Compounds Inc. v. Michael Ross (Case AF-0187). The �use� requirement has been found not to require positive action, inaction being within the concept: Telstra Corporation Limited v. Nuclear Marshmallows, (Case D2000-0003); Barney�s, Inc. v. BNY Bulletin Board (Case D2000-0059); CBS Broadcasting, Inc. v. Dennis Toeppen (Case D2000-0400); Video Networks Limited v. Larry Joe King (Case D2000-0487); Recordati S.P.A. v. Domain Name Clearing Company (Case D2000-0194) and Revlon Consumer Products Corporation v. Yoram Yosef aka Joe Goldman (Case D2000-0468).
In light of the respondent�s choice of these two domain names with knowledge (as the panel has found) of the complainant�s mark and reputation in connection with inkjet printing and the respondent�s statement that it did not intend to use all five of the disputed domain names it registered, the panel finds the respondent is using these two domain names in bad faith.
As to the disputed domain names , and , in each case the panel finds the respondent has used the names intentionally in an attempt to attract, for commercial gain, Internet users to its web sites by creating the likelihood of confusion with the complainant�s mark as to the source, sponsorship, affiliation and endorsement of its web sites and of the products and services on those sites. Such circumstances constitute evidence of both bad faith registration and use: Policy paragraph 4 (b)(iv). See Shirmax Retail Ltd./D¢ etaillants Shirmax Lt¢ ee v. CES Marketing Group Inc.(Case AF-0104) as elaborated in Passion Group Inc.v. Usearch, Inc. (Case AF-0250).
The complainant has proved bad faith registration and use.
7. Decision
Pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the panel directs that the following domain names be transferred to the complainant:
Alan L. Limbury
Presiding panelist
Date: September 21, 2000
Full & Egal Universal Law Academy