Canon Kabushiki Kaisha v. Domains By Proxy, LLC et al.
Claim Number: FA1408001577119
Complainant: Canon Kabushiki Kaisha of Tokyo, Japan.
Complainant Representative: William J Seiter of Santa Monica, California, United States of America.
Respondent: Domains By Proxy, LLC of Scottsdale, Arizona, US.
none of England, United Kingdom.
Simon Coupe of London, England, International, United States of America.
REGISTRIES and REGISTRARS
Registries: XYZ.COM LLC
Registrars: GoDaddy.com, LLC
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Examiner in this proceeding. Honorable Carolyn M. Johnson (Ret.), sits as Examiner.
Complainant submitted: August 27, 2014
Commencement: August 27, 2014
Response Date: August 27, 2014
Having reviewed the communications records, the Examiner finds that the National Arbitration Forum discharged its responsibility under URS Procedure Paragraphs 3 and 4 and Rule 4 of the Rules for the Uniform Rapid Suspension System (the "Rules").
Complainant requests that the domain name be suspended for the life of the registration.
Clear and convincing evidence.
No multiple Complainants or Respondents and no multiple disputed domain names require dismissal.
Respondent alleged abuse and material falsehood; but the Examiner finds NO ABUSE or MATERIAL FALSEHOOD by Complainant.
Findings of Fact
URS Procedure 1.2.6, requires Complainant to prove, by clear and convincing evidence, each of the following three elements to obtain an order that a domain name should be suspended.
IDENTICAL TO OR CONFUSINGLY SIMILAR
Complainant met the standard set out in 1.2.6.1 of the URS Procedure since the Complainant proved its right to the EOS mark by virtue of valid U.S. trademark registrations No.2,379,305 and No. 1,497,499, first used in commerce January 12, 1987, and registered July 26, 1988, covering cameras and camera cases, and subsequently digital cameras and parts therefor, along with some 175 other registrations, a trademark that is in current use. Complainant reported sales in excess of $3,731 billion in its single lens reflex camera business.
The relevant part of the disputed domain name is <EOS>; the added top-level domain being a required element of every domain name and irrelevant for assessing whether or not a mark is identical or confusingly similar to a protected mark. The addition in this case does nothing to distinguish the disputed domain name from the Complainant’s trademark.
The Examiner finds that the disputed domain name is identical to Complainant’s protected EOS mark; Complainant satisfied the elements of URS Procedure 1.2.6.1.
NO RIGHTS OR LEGITIMATE INTERESTS
Complainant met the standard set out in 1.2.6.2 of the URS Procedure since Complainant established that it has not authorized Respondent to register a domain name containing its protected trademark and Respondent is not affiliated with Complainant in any way. Respondent also is not commonly known by the mark or the disputed domain name.
Complainant further asserts that Respondent acquired no legitimate interests in Complainant’s protected mark by purchasing this domain name along with a batch of others under the “xyz” main domain; and Respondent has not shown either a plan or expenditures for development that might suggest that Respondent has developed legitimate interests in the disputed domain name.
Respondent claims instead that “EOS” is a generic and common term, meaning “the goddess of dawn,” which is why Respondent says it bought it; that Respondent bought it in a large group, and that Respondent intends to sell, rent, or lease it. Respondent, in fact, laments Complainant’s lack of interest in not offering Respondent money by this late date and wants to be paid for the inconvenience of this lack of offer and this proceeding. Respondent reports that it found 152,000,000 references to EOS on the Internet and that very few of them referred to Complainant.
Respondent contends that Complainant abuses the proceeding with this filing and that it made statements that are material falsehoods, although the Examiner found that not to be the case.
The Examiner finds that Respondent has shown no rights to or legitimate interests in the disputed domain name containing the protected mark of another; Complainant satisfied the elements of URS Procedure 1.2.6.2.
BAD FAITH REGISTRATION AND USE
Complainant satisfied the requirements of URS Procedure 1.2.6.3.
As noted above, Complainant established trademark rights as early as 1987. The record shows that Respondent acquired the disputed domain name August 27, 2014, some thirty-seven years after Complainant established rights in the mark.
Complainant accused Respondent of opportunistic bad faith in efforts to sell the disputed domain name. After setting out the fact that no relationship exists between the two—an allegation that Respondent does not challenge in any way—Complainant noted that Respondent’s site shows that Respondent’s intended use of the domain name is to sell it. Respondent’s site shows an invitation: “…click here to buy …”. The domain name also links to at least two “pay per click” invitations. Moreover, Respondent admits that it wants to sell the domain name to Complainant and laments the fact that Complainant not only has not contacted Respondent in that regard but wrongfully brought this proceeding.
An analysis pursuant to the Policy would find several of the facts set out above sufficient to support findings of bad faith registration and use, and/or passive holding by Respondent.
The Examiner finds that Respondent registered and used or passively held the disputed domain name in bad faith; Complainant satisfied the elements of URS Procedure 1.2.6.3.
After reviewing the parties’ submissions, the Examiner determines that
Complainant demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name be SUSPENDED for the duration of the registration.
<eos.xyz>
Honorable Carolyn M. Johnson (Ret.), Examiner
Dated: September 3, 2014
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