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Nikon Inc. and Nikon Corporation v. Edward Edward Wright [2004] GENDND 1199 (22 September 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Nikon Inc. and Nikon Corporation v. Edward Edward Wright

Case No. D2004-0622

1. The Parties

The Complainants are Nikon Inc., New York, United States of America; and Nikon Corporation, Tokyo, Japan, represented by Abelman Frayne & Schwab, United States of America.

The Respondent is Edward Edward Wright, New York, United States of America.

2. The Domain Name and Registrar

The disputed domain name <nikondigital.com> (the “Domain Name”) is registered with Register.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 9 2004. On August 10, 2004, the Center transmitted by e-mail to Register.com a request for registrar verification in connection with the domain name(s) at issue. On that same day, Register.com transmitted by e-mail to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 13, 2004. In accordance with the Rules, paragraph 5(a), the due date for filing a response was September 2, 2004. Respondent did not submit any response. Accordingly, the Center notified Respondent of his default on September 8, 2004.

The Center appointed Robert A. Badgley as the sole panelist in this matter on September 13, 2004. 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

Complainant Nikon Inc. (hereinafter “Nikon USA”) is a wholly-owned subsidiary of Complainant Nikon Corporation (hereinafter “Nikon Japan”). As set forth in the Complaint and annexes thereto, Nikon Japan is the owner of the trademark NIKON, and Nikon USA is the exclusive licensee and distributor in the United States of NIKON brand photographic products.

It is alleged and undisputed that Complainants have spent well over $200 million for advertising and promotions in the United States. On average, Complainants spend more than $1 million per month advertising and promoting their NIKON products.

It is further undisputed that Complainants manufacture and sell a broad range of cameras, including digital cameras, under the NIKON trademark in the United States and throughout the world. Complainants claim to manufacture sophisticated photographic and digital cameras for the professional and serious amateur photographer, as well as “point and shoot” cameras for the general consumer. Complainants also sell NIKON brand lenses and accessory products for its cameras, which include camera cases, bags and straps, as well as filters, lens caps, and covers.

It is also undisputed that Complainants’ cameras, lenses and photographic accessory products are available at a broad variety of retail outlets in all areas of the United States. Complainants also conduct business on the Internet via various websites.

Complainant Nikon Japan owns numerous trademark registrations in the United States for the mark NIKON. These registrations cover an extensive range of goods and services. The Complaint expressly refers to eight such USPTO registrations, the certificates of which are annexed to the Complaint. Three such registrations are as follows:

The USPTO trademark registration certificates for NIKON were issued to Nikon USA (or a predecessor company) and, on August 1, 2000, were assigned to Nikon Japan, as shown by the Trademark Assignment included as part of Annex F to the Complaint.

Respondent registered the Domain Name on January 9, 2000. The Registrant details contained in the WHOIS record include the following details:

edward
EDWARD WRIGHT
P.O. BOX 230711
BROOKLYN, NY 11223
US

On July 7, 2004, Complainants’ attorney sent a letter informing Respondent (“Edward Wright”) that his actions infringed Complainants’ trademark rights in NIKON and violated the U.S. Anticybersquatting Consumer Protection Act and the Federal Trademark Dilution Act. In this letter, Complainants also requested that Respondent immediately transfer the Domain Name to Complainants. The July 7, 2004, e-mail was returned as undeliverable, and Complainants allege that they did not receive a response to the posted letter. Complainants claim to have sent Respondent a follow-up letter (via unspecified means), to which no response was received.

According to the Complaint, someone acting on behalf of Complainants attempted to telephone Respondent by using the phone number for the “Registrant” in the WHOIS record for the Domain Name. Complainants allege that the phone was answered by a man who identified himself as “47^th Street Photo,” and when he was asked for Edward Wright, he said there was no one there by that name. The Complaint is duly certified in accordance with the Rules, and Respondent has not contested the accuracy of Complainants’ account of this telephone call. Still, the Panel believes that the better practice would have been for Complainants to annex to the Complaint a sworn affidavit or declaration by the actual person who placed the phone call on Complainants’ behalf.

Complainants searched the “Wayback Machine” (located at “www.archive.org”) to determine whether there was ever a website associated with the Domain Name. Through these means, it was ascertained that, between January 24, 2003, and June 20, 2003, the Domain Name resolved to a website for “47^th Street Photo,” located at “www.47stphoto.com”. A printout of this archived web page was annexed to the Complaint. 47^th Street Photo is an electronics retailer in Brooklyn, New York that specializes in selling various brands of cameras, such as Nikon and Canon, as well as other electronic products. The mailing address for 47^th Street Photo, according to the website “www.47stphoto.com”, is “P.O. Box 230711, Brooklyn, New York 11223.” This is the same address as Respondent’s address as indicated in the WHOIS record for the Domain Name <nikondigital.com>.

Complainants’ assert, and Respondent does not deny, that Respondent is not authorized or licensed to use the NIKON mark or name in any manner by Complainants.

5. Parties’ Contentions

A. Complainant

Complainants’ contentions are not disputed by Respondent, and hence a considerable amount of the pertinent information is set forth in the previous section (“Factual Background”). Moreover, the Panel will not summarize each of Complainants’ arguments, since disposition of this case does not require a ruling on each argument raised in the Complaint.

Complainants allege that, for over forty years, they have played a dominant role in photography, helping people everywhere create and record visual images. Today, NIKON is among the best-known and highly respected trademarks in the field of photography. Complainants contend that the Domain Name <nikondigital.com> is “confusingly similar” to the NIKON mark.

Complainants further assert that there is no evidence that Respondent has used the Domain Name in connection with a bona fide offering of goods or services. Rather, it is contended, Respondent redirected the Domain Name to a website (located at “47stphoto.com”) where digital cameras and photography accessories were sold. Not only did this website purport to offer for sale Complainants’ products, but it offered products of Complainants’ competitors, including Canon, Olympus, and Sony.

Complainants argue that Respondent’s use of the Domain Name in this manner is not a bona fide offering of goods and services under the Policy and, indeed, constitutes “bad faith” registration and use of the Domain Name. Complainants argue that Respondent is simply trading off of the fame of the NIKON mark to increase Internet traffic to the “47stphoto.com” site, for commercial gain.

Complainants request that the Domain Name be transferred to them. However, the Complaint does not specify which of the two Complainants should receive the Domain Name transfer in the event the Complaint were to succeed. Since one Complainant (Nikon USA) is a wholly-owned subsidiary of the other Complainant (Nikon Japan), the decision of the Panel in this respect should not make a great deal of difference. Nevertheless, because the Panel decides (for the reasons discussed below) to order the transfer of the Domain Name to the Complainants, the Panel will further order that the Domain Name be transferred to the second Complainant, Nikon Corporation (referred to herein as “Nikon Japan”), for the reason that Nikon Japan is the actual owner, via assignment from Nikon USA, of the NIKON trademark registrations upon which this Complaint is predicated.

B. Respondent

As noted above, Respondent did not respond to the Complaint.

6. Discussion and Findings

Paragraph 4(a) of the Policy lists the three elements which Complainant must satisfy in order to succeed:

(i) the Domain Name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the Domain Name; and

(iii) the Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Complainants’ rights in the mark NIKON are clearly established. The second Complainant holds several USPTO registrations for the NIKON mark.

Respondent’s Domain Name, <nikondigital.com>, incorporates both the strong mark NIKON and a word describing one of the products sold under that mark, “digital” (as in “digital camera”). As has been held in scores of prior decisions under the Policy, the addition of a descriptive word to a strong mark does not negate -- and, indeed, oftentimes reinforces -- the “confusing similarity” between the mark and the domain name in question. In a previous case involving a domain name comprised of a trademark plus the word “digital,” the panel held that the domain name was “confusingly similar” to the mark. (The panel in that case denied the complaint, but for reasons that need not concern us here.) See Koninklijke Philips Electronics N.V. v. Kaketti, WIPO Case No. D2001-0231 (April 2, 2001) (involving <philipsdigital.com>).

The Panel rules that Complainants have satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Pursuant to paragraph 4(c) of the Policy, Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:

(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name in connection with a bona fide offering of goods or services; or

(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the Domain Name, even if you have acquired no trademark or service mark rights; or

(iii) you [Respondent] are making a legitimate noncommercial or fair use of the Domain Name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

Complainants bear the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001).

Respondent, who filed no response in this proceeding, has not invoked any of the circumstances of Policy, paragraph 4(c) to suggest any “rights or legitimate interests” in respect of the Domain Name.

Without the benefit of a response in this proceeding, the precise relationship between Respondent and 47th Street Photo cannot be determined with certainty. We do know that the mailing address of both Respondent (according to the WHOIS record) and 47^th Street Photo (according to that company’s website) is the same. We also know that 47^th Street Photo sells various camera equipment, including products made by Complainants’ competitors, and that 47th Street Photo maintains a clearly commercial website. Finally, we know that, for a five-month period last year, the Domain Name <nikondigital.com> resolved to the commercially active 47th Street Photo website. The Panel finds it more likely than not that there is (or was) some relationship or affiliation between Respondent and 47th Street Photo. As such, for purposes of this proceeding, the content of the 47th Street Photo website is imputed to Respondent.

Respondent has not invoked any “legitimate interest” in respect of the Domain Name, and the Panel concludes that none are present. The most likely argument one might have expected from Respondent is that, as a reseller of Complainants’ products, he has a right to use the mark NIKON in order to identify for consumers the brand of cameras he sells.

The Panel believes two observations suffice to confirm that Respondent lacks any “legitimate interest” here. First, it is undisputed that Complainants have never authorized Respondent to use their NIKON mark.

Second, under the useful paradigm set forth in the case Oki Data Americas v. ASD, WIPO Case No. D2001-0903 (November 6, 2001), Respondent has no claim to legitimacy here. In the Oki Data case, the panel set forth the following four-part test for determining whether a reseller/distributor’s offerings are bona fide:

(1) The respondent “must actually be offering the goods or services at issue.”

(2) The respondent “must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.”

(3) The respondent’s website “must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.”

(4) The respondent “must not try to corner the market in all domain names, thus depriving the owner of reflecting its own mark in a domain name.”

Here, it is undisputed that the Domain Name resolved, for several months, to a commercial website where products of Complainants’ competitors were sold. This runs afoul of prong (2) of the Oki Data test.

The Panel rules that Respondent lacks any “rights or legitimate interests” in respect of the Domain Name for purposes of Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use of the Domain Name in “bad faith”:

(i) circumstances indicating that Respondent has registered or has acquired the Domain Name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the Domain Name; or

(ii) that Respondent has registered the Domain Name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

(iii) that Respondent has registered the Domain Name primarily for the purpose of disrupting the business of a competitor; or

(iv) that by using the Domain Name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.

With respect to the element of “bad faith” registration of the Domain Name, the Panel finds that Respondent clearly had Complainants’ well-known NIKON mark in mind when registering the Domain Name. The appendage of the word “digital” to the word “nikon” supports this conclusion, since the NIKON mark is strongly associated with digital cameras. Moreover, the 47th Street Photo website -- the contents of which are imputed to Respondent for purposes of this proceeding -- sells cameras and related accessories.

As respects the use of the Domain Name in “bad faith,” the undisputed evidence shows that, for several months, the Domain Name resolved to a website at which cameras and other products were sold. Some of these products were NIKON products, but many others were the products of Complainants’ competitors. Thus, the Domain Name, which features the strong NIKON mark, has been used to redirect Internet users to a website not affiliated with, or endorsed or sponsored by, Complainants. The commercial nature of that site is obvious from even a few seconds of perusal.

Under these circumstances, the Panel finds that Respondent has “intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website or other on-line location [the 47th Street Photo site], by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website or location or of a product or service on Respondent’s website or location.” Thus, Respondent has committed “bad faith” within the meaning of Policy, paragraph 4(b)(iv).

Complainant also argues that Respondent has committed “bad faith” under paragraphs 4(b)(ii) (a pattern of preclusive registrations) and 4(b)(iii) (disrupting the business of a competitor). However, these arguments are not very powerful and, in view of the Panel’s ruling on paragraph 4(b)(iv), they will not be addressed herein.

In sum, the Panel concludes that Respondent’s registration and use of the Domain Name constitutes “bad faith” within the meaning of Policy, paragraph 4(a)(iii).

7. Decision

For all the foregoing reasons, in accordance with paragraph 4(i) of the Policy and paragraph 15 of the Rules, the Panel orders that the Domain Name <nikondigital.com> be transferred to the second Complainant, Nikon Corporation.

Robert A. Badgley
Sole Panelist

Dated: September 16, 2004