Generic Top Level Domain Name (gTLD) Decisions

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

The Complainants in this administrative proceeding are Canon U.S.A. (Canon USA), a New York corporation with its principal place of business in Lake Success, New York, U.S.A.; Astro Business Solutions, Inc. (Astro), a California corporation with its principal place of business in Gardena, California, U.S.A.; and Canon Information Systems, Inc. (CIS), a California corporation with its principal place of business in Irvine, California, U.S.A. The Respondent is Richard Sims, whose address is 1040 S. Mt. Vernon #G300, Colton, California, U.S.A. 92324.

The domain names in dispute are as follows: usacanon.com; astrocanon.com; canonastro.com; and canoncopymachines.com. The domain names were registered by Respondent with Network Solutions, Inc. (NSI) on April 7, 1999.

On July 19, 2000, the WIPO Arbitration and Mediation Center received from Complainants via e-mail a complaint for decision in accordance with the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation of Assigned Names and Numbers (ICANN) on August 26, 1999 ("Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy, approved by ICANN on October 24, 1999 ("Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules).

The complaint was filed in compliance with the requirements of the Rules and the Supplemental Rules, payment was properly made, the administrative panel was properly constituted, and the panelist submitted the required Statement of Acceptance and Declaration of Impartiality and Independence.

The instant Administrative Proceeding was commenced on August 3, 2000.

Respondent filed a Response, which was received by WIPO via e-mail on August 2, 2000.

The decision of the Panel was due to WIPO on or before October 16, 2000.

According to the complaint, Complainant Canon USA is an industry leader in professional and consumer imaging equipment and information systems. Canon USA's principal business is the distribution of "Canon"- brand office equipment, particularly full color and black-and-white copiers, as well as facsimile machines and imaging systems, through a network of dealers located throughout the U.S. For over forty (40) years, Canon USA, directly or through its subsidiaries, has used the "Canon" mark throughout the U.S. and elsewhere to identify its high technology products and services and as a trade name to identify its businesses.

Complainant Astro is a wholly owned retail subsidiary of Canon USA. Astro's primary business is the sale and service of "Canon"-brand full color and black-and-white copiers. Astro conducts its business, and has done so for many years, under the trade name "Astro Canon."

Complainant CIS is a wholly owned subsidiary of Canon USA that develops software and other technological components for "Canon"-brand products. CIS participated in the development of the global web site for "Canon" products, canon.com, and CIS is the registrant for such site.

The mark "Canon" is the subject of two U.S. trademark registrations (Nos. 975,904 and 1,315,232) for copying machines, telephone facsimile transmitters and receivers, paper feeders, sorters, and related goods. Based on the documentation submitted with the complaint (see Complaint, Exhibit C), the registrations are owned by Canon Kabushiki Kaisha Corp., of Tokyo, Japan.

The evidence establishes that Respondent registered the domain names in dispute as a means to directly access the global web site for Ameritek Business Solutions Inc. Ameritek is engaged in the distribution of new and used full color and black-and-white copiers and other business equipment, including facsimile machines, and, thus, competes directly with Complainants. A copy of excerpts from Respondent's web site is attached to the complaint as Exhibit E. The excerpts show use of the name "Ameritek Business Solutions - Serving Your Company Across The United States" at the top of the home page, followed by a list of names of copier makers, including Ricoh, Xerox, and Canon. The page contains text material indicating that Ameritek sells new, remanufactured and certified lease copiers and specializes in the remanufacturing of copiers made by Canon, Xerox, and Ricoh.

According to the complaint Respondent's Ameritek global web site is currently directly accessible through only one of the domain names in dispute -- canoncopymachines.com. While the web site previously had been accessible by the other three domain names in dispute, after protests by Complainants, Respondent ceased use of the three other domain names -- canonastro.com, astrocanon.com, and usacanon.com.

The evidence further establishes that Respondent and/or those acting in active concert and participation with it own at least four (4) domain names virtually identical to the registered marks of other companies, including xeroxmachines.com, ricohaficio.com, ricohdigitalcopiers.com, and xeroxdigitalcopiers.

Complainants contend that the domain names in issue are vitually identical to and/or confusingly similar to Complainants' "Canon" trademark and trade name and to the "Astro Canon" trade name. They further contend that because Respondent no longer has an active web site under the domain names canonastro.com, astrocanon.com, and usacanon.com, Respondent has no legitimate interest in such domain names. With respect to the domain name canoncopymachines.com, Complainants argue that Respondent has no legitimate interest in such name because: (1) the domain name does not consist of Respondent's or Ameritek's trade name; and (2) neither Respondent nor Ameritek is an authorized Canon dealer.

Complainants also contend that the domain names have been registered and used in "bad faith." In support of such assertion, Complainants argue, in part, that the domain names were registered to prevent Complainants from reflecting the "Canon" mark and trade name and the "Astro Canon" trade name in corresponding domain names; that registration was acquired primarily for the purpose of disrupting the business of Complainants; and that Respondent's use of the domain names constitutes an intentional attempt to attract, for commercial gain, Internet users to the Ameritek web site by creating a likelihood of confusion with Complainants' "Canon" mark and trade name and the "Astro Canon" trade name as to the source, sponsorship, affiliation, and endorsement of the Ameritek web site and products offered on that web site by Ameritek.

In his response, Respondent argues, essentially, that his use of the domain names is protected as comparative advertising.

In order to be entitled to relief under the applicable Policy, Complainants must establish that the domain names in issue are identical or confusingly similar to a trademark or service mark in which Complainants have rights. The Panel determines that the domain names at issue -- usacanon.com; astrocanon.com; canonastro.com; and canoncopymachines.com -- are confusingly similar to the "Canon" mark and trade name and to the "Astro Canon" trade name. The addition of purely descriptive matter, such as "usa" and "copy machines", and the reversal of the terms "astro" and "canon" do not avoid a finding of confusing similarity.

As noted above, however, the U.S. trademark registrations for the "Canon" mark are not owned by any of the Complainants, but, rather, by Canon Kabushiki Kaisha Corp. While Canon USA, presumably, is authorized to use the marks, there is nothing in the record that indicates that any license exists between Canon USA and Canon Kabushiki Kaisha Corp. However this may be, the evidence clearly establishes that Canon USA, through its long use of the "Canon" mark in the U.S., possesses common law rights in the "Canon" mark and trade name.

With respect to the "Astro Canon" trade name, the Panel notes that the Policy refers specifically to trademarks and service marks. This raises the issue of whether the trade names at issue also fall within the scope of paragraph 4(a)(i) of the Policy. In the circumstances of the present case, the Panel concludes that they do. Even though paragraph 4(a)(i) of the Policy does not refer to trade names, the Panel notes that trade names are closely akin to trademarks and service marks. Even though trade names may not be registered under U.S. trademark law, they do enjoy protection under the law, primarily through application of Section 43(a) of the federal (U.S.) trademark law. Thus, the Panel finds that Complainants have relevant rights in the "Astro Canon" trade name.

Focusing on the issue of "bad faith" registration and use, the Panel agrees with Complainants that Respondent has engaged in activity that falls within paragraphs 4(b)(ii) and (iii) of the Policy. Specifically, the Panel determines that Respondent registered the domain names in order to prevent Complainants from reflecting the mark and trade names in a corresponding domain name and that Respondent has engaged in a pattern of such conduct; and that Respondent registered the domain names primarily for the purpose of disrupting the business of a competitor.

Finally, with respect to the domain names canonastro.com, astrocanon.com, and usacanon.com, the Panel holds that Respondent has no rights or legitimate interests. The unrebutted evidence establishes that these domain names no longer access Respondent's web site. That being the case, the circumstances set forth in paragraphs 4(c)(i) and (iii) clearly are not applicable. There is also no evidence that Respondent is commonly known by any of the domain names in issue, within the meaning of paragraph 4(c)(ii) of the Policy.

However, the Panel reaches a different conclusion with respect to the domain name canoncopymachines.com. With respect to this domain name, the evidence indicates that the domain name is in use, insofar as it accesses Respondent's web site, and that such use commenced prior to notice of this dispute in connection with the bona fide offering of goods or services, within the meaning of paragraph 4(c)(i) of the Policy. Further, upon review of Exhibit E to the Complaint, the Panel concludes that Respondent's use of the "Canon" mark falls within paragraph 4(c)(iii) of the Policy. Respondent has the right, at least under U.S. trademark law, to refer to the marks of others as a means to identify the types of products it services or sells.

In view of the above, the Panel grants Complainants' request for transfer to Canon USA of the domain names canonastro.com, astrocanon.com, and usacanon.com, but denies such request with respect to the domain name canoncopymachines.com.

Jeffrey M. Samuels
Panelist