Canon Kabushiki Kaisha v. North Sound Names et al.
Claim Number: FA1507001628473
Complainant: Canon Kabushiki Kaisha of Tokyo, Japan.
Complainant Representative: William J Seiter of Santa Monica, California, United States of America.
Respondent: North Sound Names of Grand Cayman, Cayman Islands.
Complainant Representative: John Berryhill of Ridley Park, Pennsylvania, United States of America.
North Sound Names of Grand Cayman, GC, International, KY.
Complainant Representative: John Berryhill of Ridley Park, Pennsylvania, USA.
REGISTRIES and REGISTRARS
Registries: Uniregistry, Corp.
Registrars: Uniregistrar Corp
The undersigned certify that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Examiners in this proceeding.
The Hon Neil Anthony Brown QC, Mr Héctor Ariel Manoff and Mr Sebastian Matthew White Hughes (Presiding) as Examiners (“the Panel”) constituting the Appeal Panel.
Complainant submitted: July 13, 2015
Commencement: July 13, 2015
Response Date: July 27, 2015
Having reviewed the communications records, the Panel finds that the Forum has 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 extraneous domain names require dismissal.
Findings of Fact by the Panel
After de novo review, the Panel finds by clear and convincing evidence that:
1. Complainant owns the United States Trademark Registration Number 1,497,499 EOS (word), first used in commerce January 12, 1987, registered on July 26, 1988, covering “cameras and camera cases” in Intl Class 9; and
2. Complainant established use of the trademark in respect of Complainant’s cameras and camera cases by declaration of use submitted with the Complaint.
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.
Complainant established rights in its valid trademark in current use based on United States Trademark Registration Number 1,497,499 EOS (word).
Respondent concedes Complainant’s trademark rights but contends Respondent does not use or offer the disputed domain name for the goods in respect of which Complainant’s trademark has been registered and used.
The Panel finds that Respondent’s contentions regarding the use of the disputed domain name are not relevant to the determination of the first element under the URS.
The Panel finds by clear and convincing evidence that the disputed domain name is identical to Complainant’s EOS trademark. Accordingly, Complainant has satisfied the requirements of 1.2.6.1 of the URS Procedure.
The Panel finds that Complainant did not authorize Respondent to register the disputed domain name containing its registered trademark, EOS; Respondent is not commonly known by the EOS trademark; and Respondent has no legitimate right or interest to the disputed domain name that uses Complainant’s trademark in its entirety without permission.
Respondent concedes Complainant’s trademark rights, but relies on URS 5.8.1 (which is relevant, not to the second element under the URS, but to the third element). URS 5.8 and 5.8.1 provide as follows:
5.8 The Registrant may also assert Defenses to the Complaint to demonstrate that the Registrant’s use of the domain name is not in bad faith by showing, for example, one of the following:
5.8.1 The domain name is generic or descriptive and the Registrant is making fair use of it…
Respondent argues the three-letter sequence "EOS" is not exclusive to Complainant; that Respondent is not using this non-exclusive term in any manner associated with photographic products or services; and that such non-infringing use of non-exclusive terms is fair use under URS 5.8.1.
Respondent’s business model consists of registering a large portfolio of three-letter domains (“3LD(s)”) primarily for sale on the secondary market to persons seeking short monogrammatic or acronymic domain names. Respondent contends that such domain names are known on the secondary market as "premium names"; have particular appeal to persons seeking a short domain name; and have independent value apart from any trademark claim.
Respondent contends that the "lander" associated with the disputed domain name includes categorical suggestions to visitors such as an Edward Oliver Smith or an Ellen Olivia Simpson who may be curious to know if an "EOS" were
available as a domain name, which resonate with their reason for typing it in, and suggest uses to which such a visitor may put the domain name, to motivate them to inquire about purchase. These subjects tie the concept of a 3LD to the relevant utility of the domain name itself and suggest uses to which the domain name may be productively put, while also providing a top link to inquire about obtaining the domain name, and a bottom banner affiliate registrar link in the event a visitor curious about the domain name may seek others.
The search suggestions at the page are chosen to appeal to what motivated the visitor to type in the name, and to suggest they should obtain it for such reasons. These lander pages are identical across the entire collection of 3LD names registered by Respondent.
Respondent contends that its suite of 3LDs, including the disputed domain name consisting, in the present case, of the letters EOS, were registered for their appeal to persons seeking a short domain name.
The Panel considers that such a business model may give rise to a legitimate right or interest to a domain name, provided the domain name in question is not confusingly similar or identical to a third party trademark, and provided the domain name in question has not been registered and used in a manner which will lead to a likelihood of confusion on the part of Internet users.
The Panel considers that whether such domain names may have independent value apart from any trademark claim does not assist Respondent in the circumstances of this proceeding.
In circumstances where:
1. Complainant has established by clear and convincing evidence the registration and use of its EOS trademark in numerous jurisdictions worldwide since as early as 1987;
2. Respondent concedes it had express notice of Respondent’s rights in its EOS trademark by virtue of Complainant’s registration of the EOS trademark with the Trademark Clearinghouse;
3. The top-level domain <.blackfriday> is a direct reference to what has become traditionally the biggest annual shopping day in the United States, where retail goods are offered at significant discounts;
4. Two of the sponsored links on Respondent’s website, namely
“custom gifts” and “personalized gifts” encompass Complainant’s goods offered under the EOS trademark; and where, whether those expressions cover Complainant’s goods or not, they nevertheless are goods promoted by Respondent’s unauthorized use of Complainant’s trademark;
5. On Respondent’s own case, Respondent’s website “lander” has been designed to include categorical suggestions which resonate with the user’s reason for typing in <eos.blackfriday>, which demonstrates that users interested in purchasing Complainant’s EOS goods at a discount on Black Friday would be provided with sponsored links relating to such goods,
the Panel concurs with the finding of the Examiner below that Respondent has no legitimate right or interest to the disputed domain name.
The Panel agrees with the following findings of the Examiner below:
Blackfriday is the day after Thanksgiving Day in the United States in which stores and manufacturers offer promotional sales. Hence, it is understood as an expression referring to promotions. Taking that into account, <eos.blackfriday> would attract consumers interested in EOS goods. Moreover, Complainant registered its trademark EOS with the Trademark Clearinghouse. Hence, Respondent was aware of the trademark EOS (when it) registered <eos.blackfriday>.
The Panel therefore finds by clear and convincing evidence that Respondent has no legitimate right or interest to the disputed domain name. Accordingly, Complainant has satisfied the requirements of URS 1.2.6.2.
URS 1.2.6.3 provides as follows:
A non-exclusive list of circumstances that demonstrate bad faith registration
and use by the Registrant include:
a. Registrant has registered or 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 documented out-of pocket costs directly related to the domain name; or
b. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
c. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
d. By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s 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 Registrant’s web site or location or of a product or service on that web site or location.
The Examiner concluded as follows:
According to Subparagraph a) of the Paragraph 1.2.6.3., of the URS Procedure, registering a 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, is indicative of bad faith registration and use. Furthermore, in accordance with Paragraph 5.9.2, of the URS Procedure, a domain name redirecting to a website displaying pay-per-click links does not in and of itself constitute bad faith under the URS. Nonetheless, such conduct may be abusive, as in the current circumstances. Blackfriday is the day after Thanksgiving Day in the United States in which stores and manufacturers offer promotional sales. Hence, it is understood as an expression referring to promotions. Taking that into account,<eos.blackfriday> would attract consumers interested in EOS goods. Moreover, Complainant registered its trademark EOS with the Trademark Clearinghouse. Hence, Respondent was aware of the trademark EOS (when it) registered <eos.blackfriday>. Thus, the Examiner concludes that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business.
Respondent concedes Complainant’s trademark rights. Respondent also does not contest Complainant’s screenshot of Respondent’s website, which contains:
1. The prominent banner at the top stating “Click here to buy Eos.blackfriday for your website name!”; and
2. The following sponsored links under the heading “Related Links” – Abbreviations, Acronyms, Custom Gifts, Embroidery, Imprinting, Initials, Monogram, Personalized Gifts, Premium Domain Name.
Respondent submits (as noted above in the commentary regarding the second element) that the sponsored links on Respondent’s website will change depending on the user’s reason for typing in <eos.blackfriday>. It is contended in Respondent’s appeal submissions that the Examiner’s conclusion that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business:
…is not supported by knowledge of a trademark registered for photographic equipment, as the Respondent had no intention of using the domain name, and did not use the domain name, for any purpose relating to photographic equipment. The Trademark Clearinghouse provides notice of trademarks, and the goods and services claimed under the marks. If it had been the purpose of the Trademark Clearinghouse to bar the registration of domain names having
substantial non-infringing use, that would have been a simple implementation. However, the advisory function of the Trademark Clearinghouse is to provide notice of goods and services for which a domain name cannot be used, and to
eliminate an ignorance defense if the domain name is then used for purposes implicating the mark. Here, however, the domain name is not used for a purpose relating to photographic products, and the Complainant's mark is not otherwise
famous, as demonstrated by its broad third party use. This is not a mark such as "IBM" or "BMW" which, while having three letters, are immediately and necessarily associated with one party. The offer of sale of a three-letter domain name to any other party who may desire them for some other purpose does not "disrupt the Complainant's business”…
The Panel has carefully considered all of the submissions and the evidence adduced in their support and, first, is not able to conclude, within the meaning of URS 1.2.6 and paraphrasing that provision, that the Respondent registered the domain name to prevent the trademark holder from reflecting the mark in a corresponding domain name, (URS 1.2.6.b) or to disrupt the business of a competitor (URS 1.2.6.c).
With respect to URS 1.2.6.a, the panel finds that, in all probability, Respondent registered the domain name to induce Complainant to buy it, so as to avoid there being in active use a domain name using Complainant’s trademark and promoting the notion that goods protected by that trademark were available for sale through that domain name.
More significantly, the Panel concludes on the same basis that Respondent, within the meaning of URS 1.2.6.d, attempted to attract for commercial gain, Internet users to the Registrant’s web site by creating confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Registrant’s web site or location or of a product or service on that web site or location and that accordingly it did so in bad faith.
Moreover, as URS 1.2.6 sets out a non-exclusive list of circumstances that demonstrate bad faith and not an exhaustive list of all such circumstances, the Panel finds that Respondent registered and used the domain name in bad faith within the generally accepted meaning of that expression.
The reasons for the Panel’s conclusions on those separate issues are as follows.
The Panel agrees, as submitted on behalf of the Respondent, that the EOS trademark is not as famous a mark in the sense of trademarks and household brands such as “IBM” and “BMW”. However, the Panel finds on the evidence that the EOS trademark is and has been for several years well-known amongst the photographic community, that it has achieved a degree of prominence and notoriety in the photographic field and related goods and services, and that it had considerable market penetration at the time Respondent registered the domain name on September 23, 2014. In support of that conclusion, Complainant’s evidence demonstrates that, in 2010, Complainant’s EOS cameras commanded 44.5% of the market share for digital SLR (single-lens reflex) cameras and that by 2013 they had contributed substantially to Complainant’s sales. The Panel also notes that, in any event, it is not a requirement under the URS for Complainant to establish that its relevant trademark is famous or well-known.
Moreover, in view of the same evidence, the Panel draws the inference that the EOS trademark is, in all probability, also known in the wider community and beyond the photographic community itself, for its association with photographic equipment and related goods and services and that the Respondent was probably aware of that association when it registered the domain name and subsequently used it to resolve to its own website.
Accordingly, the Panel finds that the notoriety of Complainant’s EOS trademark amongst the photographic community, and the knowledge of the trademark in the wider community beyond the photographic community itself, coupled with the top-level domain <.blackfriday>, give rise to confusion on the part of Internet users for the purpose of URS 1.2.6.3.d. That is so because Internet users in all probability would read the domain name as invoking the Complainant’s trademark and the products with which it is associated, suggesting that the domain name and any website to which it leads are related to the Complainant’s products and proposing that those products may be bought through the Respondent’s website at reduced prices on Black Friday.
In that regard, the Panel adds that it does not accept Respondent’s submissions that a respondent with notice of a complainant’s trademark rights via the Trademark Clearinghouse can escape a finding of bad faith registration and use under the third element of the URS procedure by choosing not to use the relevant domain name in relation to the goods or services (or similar goods or services) in respect of which the complainant’s mark has been registered. There are no such restrictions under the URS; and there are no such restrictions under the Claims Notification Service provided under the Trademark Clearinghouse.
The Panel also notes that it is not a prerequisite to a finding of bad faith registration and use that the relevant disputed domain name has been used in relation to the same or similar goods or services in respect of which the relevant complainant’s trademark has been registered and used.
The Panel therefore finds that Respondent has, with full notice of Complainant’s rights in the EOS trademark, registered and used the disputed domain name in order intentionally to attract Internet users to Respondent’s website for commercial gain by creating a likelihood of confusion with Complainant’s mark, irrespective of the particular links featured on Respondent’s website at any given time.
The Panel also finds that, in all the circumstances and given the uncontested evidence that Respondent was aware of Complainant’s trademark rights prior to registration of the disputed domain name by virtue of the Trademark Clearinghouse, bad faith registration and use has been made out under URS 1.2.6.3.a, and, accordingly, upholds the decision of the Examiner below in this regard.
In reaching its decision, the Panel has taken particular notice of URS 5.9.1 and URS 5.9.2 which provide as follows:
5.9.1 Trading in domain names for profit, and holding a large portfolio of domain
names, are of themselves not indicia of bad faith under the URS. Such conduct,
however, may be abusive in a given case depending on the circumstances of the
dispute. The Examiner must review each case on its merits.
5.9.2 Sale of traffic (i.e. connecting domain names to parking pages and earning
click-per-view revenue) does not in and of itself constitute bad faith under
the URS. Such conduct, however, may be abusive in a given case depending
on the circumstances of the dispute. The Examiner will take into account:
5.9.2.1. the nature of the domain name;
5.9.2.2. the nature of the advertising links on any parking page associated with
the domain name; and
5.9.2.3. that the use of the domain name is ultimately the Registrant’s
Responsibility.
In reaching its findings on bad faith, the Panel has considered all the circumstances shown by the evidence, including in particular the nature of the disputed domain name (including the meaning and significance of the top-level domain <.blackfriday> used in conjunction with Complainant’s EOS trademark), and the nature of the advertising links on Respondent’s website, even absent any use of the disputed domain name specifically in relation to cameras or similar goods or services.
The Panel therefore finds by clear and convincing evidence that bad faith registration and use have been made out under both URS 1.2.6.3.a and URS 1.2.6.3.d. Accordingly, Complainant has satisfied the requirements of URS 1.2.6.3.
As has also been noted, a complainant may show bad faith, not only if the facts come squarely within any of the criteria set out in URS 1.2.6.3, but also where any other considerations show bad faith registration and use, within the generally accepted meaning of bad faith. In the present case, Respondent took Complainant’s trademark without permission and used it in its domain name, used the domain name to promote the notion that goods and services related to the trademark were available at the website to which the domain name resolved and underlined that notion by the further reference to the prominent sales that take place on Black Friday. Those considerations constitute bad faith in the registration of the domain name and its use.
Finally, the Panel, as already noted, respectfully disagrees with the finding of the Examiner below that Respondent registered the disputed domain name for the purpose of disrupting Complainant’s business. The Panel finds that bad faith grounds under 1.2.6.3.c have not been made out, as Respondent is not a competitor of Complainant.
Respondent did not make any allegations that the Complaint was brought in an abuse of this proceeding or that it contained material falsehoods. The Panel finds no such abuse or material falsehood by Complainant.
After reviewing the parties’ submissions, the Panel determines that Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Panel hereby Orders the following domain names be SUSPENDED for the duration of the registration:
<eos.blackfriday>
Mr. Sebastian Matthew White Hughes, Examiner (Presiding)
Dated: September 11, 2015
Mr Héctor Ariel Manoff, Examiner
Dated: September 11, 2015
The Hon Neil Anthony Brown QC, Examiner
Dated: September 11, 2015
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