The Complainant is Canon U.S.A., Inc of Melville, New York, United States of America, represented by Dorsey & Whitney, LLP, United States of America.
The Respondent is shen chaoyon of "Shishi", "Yanshi", China. 2. The Domain Name and Registrar
The disputed domain name is registered with Xin Net Technology Corp. (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 12, 2015. On May 12, 2015, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On May 13, 2015 the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.
On May 11, 2015, the Center transmitted an email to the parties in English and Chinese regarding the language of the proceeding. On May 14, 2015, the Complainant submitted its request that Chinese be the language of the proceeding. The Respondent did not submit any comments within the specified due date.
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").
On June 4, 2015, the Complainant submitted the unsolicited filing by email to the Center.
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint in English and Chinese, and the proceedings commenced on May 20, 2015. In accordance with the Rules, paragraph 5(a), the due date for Response was June 9, 2015. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on June 10, 2015.
On June 4, 2015, the Complainant submitted a supplemental filing to the Center. The panel notes Complainant's request to update its contact details in accordance with paragraph 2(e) of the Rules, however has decided not to admit the substantive part of the claims therein, in accordance with paragraph 10 of the Rules.
The Center appointed Jonathan Agmon as the sole panelist in this matter on June 23, 2015. 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, Canon U.S.A., Inc., is a United States company which has been operating for more than 80 years. Canon is one of the world's leading company that involves researchers, developers and manufacturers of a wide range of high-technology products, including cameras, copying machines, facsimile machines and printers.
The Complainant is the owner of several trademark registrations for the trademark CANON worldwide. Among others, the Complainant is the owner of United States Registration No. 603,299, dated March 15, 1955; and United States Registration No. 1,315,232, dated January 22, 1985.
The Complainant has also registered the trademark CANON as a domain name under numerous generic Top-Level Domains (gTLDs) and country code Top-Level Domains (ccTLDs) worldwide, among these: and more.
The disputed domain name was registered on March 2, 2015 long after the Complainant has registered the trademark CANON worldwide and in the same day the Complainant issued a press release announcing the establishment of Canon BioMedical, Inc. 5. Parties' Contentions A. Complainant
The Complainant argues that the disputed domain name is confusingly similar to the CANON trademark, in which the Complainant has rights, seeing that it incorporates the CANON trademark as a whole, with the additional descriptive words "bio" and "medical".
The Complainant further argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name, that it had not licensed or otherwise permitted the Respondent to use its CANON trademark and is not affiliated or otherwise connected to the Respondent.
The Complainant further argues that the Respondent is not generally known by the disputed domain name, or has acquired trademark rights in the name Canon".
The Complainant further argues that the Respondent is not using the disputed domain name to provide a bona fide offering of goods or services as allowed under the Policy.
The Complainant contends that the Respondent has registered and is using the disputed domain name in bad faith.
The Complainant further argues that the Respondent registered the disputed domain name on the same day the Complainant issued a press release announcing the establishment of Canon BioMedical, Inc.
The Complainant further argues that the disputed domain name is likely to mislead or confuse the public as to its source or origin.
The Complainant further argues that the Respondent has persisted in bad faith registrations of other domain names that feature well-known third party trademarks.
The Complainant contends that many UDRP panels have found bad faith use even where a registrant merely passively holds the domain name, as the Respondent is doing with the disputed domain name.
For all of the above reasons, the Complainant requests the transfer of the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings 6.1 Language of the proceeding
Paragraph 11(a) of the Rules provides that:
"Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding."
The language of the Registration Agreement for the disputed domain name is Chinese.
The Complainant requested that the language of the proceeding should be English.
The Panel cites the following with approval:
"Thus, the general rule is that the parties may agree on the language of the administrative proceeding. In the absence of this agreement, the language of the Registration Agreement shall dictate the language of the proceeding. However, the Panel has the discretion to decide otherwise having regard to the circumstances of the case. The Panel's discretion must be exercised judicially in the spirit of fairness and justice to both parties taking into consideration matters such as command of the language, time and costs. It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her abilities to articulate the arguments for the case." (Groupe Auchan v. xmxz l,WIPO Case No. DCC2006-0004).
The Panel finds that in the present case, the following should be taken into consideration upon deciding on the language of the proceeding:
a) The language of the Registration Agreement for the disputed domain name is Chinese.
b) The disputed domain name consists of Latin-script letters, rather than Chinese characters;
c) The disputed domain name includes the Complainant's mark, as well as the English names: "bio" and "medical";
d) The Respondent did not submit any comments within the specified due date.
Upon considering the above, the Panel concludes, according to the Rules, paragraph 11(a), that there is no prejudice or unfairness to the Respondent for this proceeding to be conducted in English and for its decision to be rendered in English. Accordingly, the Panel determines that the language of this administrative proceeding should be English. 6.2 Substantive Elements of the Policy A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires the Complainant to show that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.
A registered trademark provides a clear indication that the rights in the mark shown on the trademark certificate belong to its respective owner. The Complainant is the owner of multiple trademark registrations for the mark CANON around the world. For example: United States Registration No. 603,299, dated March 15, 1955; and United States Registration No. 1,315,232, dated January 22, 1985.
The disputed domain name differs from the registered CANON trademark by the additional descriptive words "bio" and "medical".
The disputed domain name integrates the Complainant's trademark CANON in its entirety, as a dominant element, with additional descriptive words "bio" and "medical" which do not serve sufficiently to distinguish or differentiate the disputed domain name from the Complainant's well-known CANON trademark and refer to the Complainant's subsidiary Canon BioMedical Inc., under the mark.
Previous UDRP panels have ruled that the mere addition of a non-significant element does not sufficiently differ the domain name from the registered trademark: "The incorporation of a trademark in its entirety is sufficient to establish that a domain name is identical or confusingly similar to the Complainant's registered mark" (Britannia Building Society v. Britannia Fraud Prevention,WIPO Case No. D2001-0505).
Also, the addition of the gTLD ".com" to the disputed domain name does not avoid confusing similarity. See, F. Hoffmann-La Roche AG v. Macalve e-dominios S.A.,WIPO Case No. D2006-0451 and Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003. Thus, the gTLD ".com" is without legal significance since use of a gTLD is technically required to operate the domain name and it does not serve to identify the source of the goods or services provided by the registrant of the disputed domain name.
Consequently, the Panel finds that the Complainant has shown that the disputed domain name is confusingly similar to the trademarks in which the Complainant has rights. B. Rights or Legitimate Interests
Once the complainant establishes a prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name, the burden of production shifts to the respondent to show that it has rights or legitimate interests in respect to the disputed domain name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0"), paragraph 2.1.
In the present case, the Complainant has demonstrated to the Panel that the Respondent lacks rights or legitimate interests in respect of the disputed domain name and the Respondent had failed to assert any such rights or legitimate interests.
The Panel finds that the Complainant has established a prima facie case in this regard, inter alia, due to the fact that the Complainant has not licensed or otherwise permitted the Respondent to use the CANON trademark, or a variation thereof.
The Respondent has not submitted a response and did not provide any evidence to show any rights or legitimate interests in the disputed domain name that is sufficient to rebut the Complainant's prima facie case.
Accordingly, the Panel finds that the Complainant has shown that the Respondent has no rights or legitimate interests in respect of the disputed domain name. C. Registered and Used in Bad Faith
The Complainant must show that the Respondent registered and is using the disputed domain name in bad faith (Policy, paragraph 4(a)(iii)). Paragraph 4(b) of the Policy provides circumstances that may prove bad faith under paragraph 4(a)(iii).
The Complainant submitted evidence, which shows that the Respondent registered the disputed domain name long after the Complainant started to use the name and trademark CANON and long after the Complainant registered its trademark. According to the evidence filed by the Complainant and the trademark search performed by the Panel, the Complainant has owned a registration for the CANON trademark since the year 1955. It is suggestive of the Respondent's bad faith in these particular circumstances where the trademark, owned by the Complainant, was registered long before the registration of the disputed domain name (Sanofi-Aventis v. Abigail Wallace,WIPO Case No. D2009-0735).
From the evidence provided by the Complainant, it appears that the disputed domain name does not resolve to an active website. The Respondent's passive holding of the disputed domain name indicates, in the specific circumstances of this case, bad faith registration and use of the disputed domain name: "The concept of a domain name being used in bad faith is not limited to positive action: inaction is within the concept." (See Cho Yong Pil v. Kee Dooseok,WIPO Case No. D2000-0754). See also: "The significance of the distinction is that the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept. That is to say, it is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in bad faith." (Telstra Corporation Limited v. Nuclear Marshmallow, supra).
Another indication for the Respondent's bad faith is raised from the incorporation of the Complainant's well-known trademark into the disputed domain name by the Respondent who has no plausible explanation for doing so (Intel Corporation v. The Pentium Group,WIPO Case No. D2009-0273).
Further indication of the Respondent's bad faith is the fact that the disputed domain name was registered by the Respondent at the same day the Complainant issued a press release announcing the establishment of Canon BioMedical, Inc. See Educational Testing Service v. Jong-Cheol Seo,WIPO Case No. D2006-0056 and America Online, Inc. v. Anson Chan,WIPO Case No. D2001-0004 (finding of bad faith appropriate where Respondent was aware or should have been aware of Complainant's trademark prior to registration). Therefore, the Respondent registered the disputed domain name in bad faith.
Additional indication for the Respondent's bad faith is the fact that the Respondent has been the subject of prior UDRP transfer cases where it was the owner of other domain names that featured third parties' well-known trademarks and even demanding money in order to transfer them to the respective complainants. See Société des Produits Nestlé S.A. v. Shen Chaoyong,WIPO Case No. DCH2014-0013 (demanding USD 5,800).
Based on the evidence presented to the Panel, including the registration of the disputed domain name long after the registration of the Complainant's marks, the Respondent's registration of the disputed domain name with no conceivable explanation for doing so, the Respondent's passive holding of the disputed domain name, the Respondent's use of the CANON trademark in the disputed domain name and the Respondent's lack of Response to the Complaint Cease and Desist letter, the Panel draws the inference that the disputed domain name was registered and is being used in bad faith.
Accordingly, having regard to the circumstances of this particular case, the Panel finds that the Complainant has met its burden under paragraph 4(a)(iii) 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 disputed domain name be transferred to the Complainant.
Jonathan Agmon
Sole Panelist
Date: June 30, 2015
Full & Egal Universal Law Academy