|Kläger||Nikon Corporation (Nikon Japan), Nikon Inc. (USA)|
|Entscheider||Bernstein, David H.|
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nikon, Inc. and Nikon Corporation v. Technilab, Inc.
Case No. D2000-1774
1. The Parties
The complainants are Nikon Inc. ("Nikon USA"), a New York corporation with its principal place of business located at 1300 Walt Whitman Road, Melville, New York 11747, USA; and Nikon Corporation ("Nikon Japan"), a Japanese corporation with its principal place of business located at Fuji Building, 2-3, 3-chome, Marunouchi, Chiyoda-ku, Tokyo 100, Japan (collectively "Nikon"). Nikon USA is the wholly owned subsidiary of Nikon Japan. Complainants are represented by Robin Blecker & Daley.
The respondent is Technilab Inc., also a New York corporation, with its principal place of business formerly at 53 South Main St., New City, New York 10956-0857,USA. Respondent is represented by Harold, Salant, Strassfield, & Spielberg.
2. The Domain Names and Registrar
The domain names at issue are:
The registrar is Network Solutions, Inc. ("NSI").
3. Procedural History
Complainants initiated this proceeding by filing a Complaint with the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") on
December 20, 2000. The Center then reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy. Following this review, the Center notified Complainants that their initial submission failed to comply with two of the formal requirements. Complainants submitted a First Amendment to the Complaint on January 5, 2001 by e-mail and on January 8, 2001 in hard copy, rectifying the Complaints procedural deficiencies. The Center then notified Respondent of the commencement of this proceeding on January 10, 2001, in accordance with the Rules.
On January 28, 2001, Respondent submitted its timely Response to the Complaint. On February 6, 2001, after clearing for any potential conflicts, the Center appointed
David H. Bernstein as the sole panelist in this matter. No further communications have been received from the parties.
4. Factual Background
Complainants manufacture and sell a broad range of cameras and related products, including camera lenses, camera cases and binoculars. Complainants products are available at a variety of retail outlets in all areas of the United States and around the world.
Nikon also conducts business on the Internet. Nikons portal site at <www.nikon.com> directs users to its various worldwide Web sites, including its main site at <www.nikon.co.jp>, as well as numerous others directed at the American, Canadian, European, and Asian markets.
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 products. Nikon Japan owns eight trademark registrations in the United States for the mark "Nikon" (U.S. Registration Nos. 569,949; 1,319,123; 1,392,065; 1,456,107; 1,647,958; 1,866,819; 1,905,522; and 2,330,693).
One of Complainants products is the Nikkor brand lens, which has been in use at least since 1948. Complainants also sponsor a Nikkor Club, which promotes the art of photography through a variety of contests, publications and other activities. Nikon Japan owns two registrations in the United States for the mark "Nikkor" (U.S. Registration Nos. 1,328,312 and 569,948).
Nikon markets two of its cameras under the "Nikon F" and "Nikon F5" brands. They are part of a series of high performance, professional 35 millimeter cameras.
Through at least April 30, 2000, Respondent Technilab was an authorized dealer of various camera and equipment manufacturers, including Nikon, Canon, Minolta, Pentax, Leica, and Olympus. Respondent operated a full service retail photo finishing business, including a one-hour photo development service, at a store front located at 53 South Main Street, New City, New York. Technilab was also a dealer of used cameras and camera equipment, including used Nikon F and Nikon F5 cameras.
On or about April 30, 2000, Respondent ceased operations, although Respondent states that it intends to resume operations within a year. Nikon contends that this suspension caused any relationship between itself and Respondent to terminate and ended Respondents status as an authorized dealer. Respondent counters that Nikon has not taken any affirmative steps to end the arrangement, and argues that there is no authority which holds that a dealership agreement automatically terminates if the dealer closes its doors to the public. Neither party has provided the Panel with a copy of any written dealership or other agreement between Nikon and Respondent.
During the time period that Technilab was in business, Nikon supplied Technilab with numerous promotional materials bearing the names "Nikon" and "Nikkor." These included various displays, stickers and signs for use on displays, in windows, on walls, and in advertisements.
On September 1, 1996, Respondent, without notifying Complainants, registered with NSI the domain names <nikoncamera.com>, <nikonf.com> and <nikonf5.com>. Respondents did the same for <nikkor.com> on September 13, 1996, and for <nikondealer.com> and <nikondealers.com> on August 14, 1999.
Between 1996 and 2000, Technilab advertised Nikon products on the Internet on various web pages, including <www.technilab.com> and <www.nikoncamera.com>. Technilab used <nikoncamera.com> as a portal through which it sold used cameras manufactured by Nikon, as well as by its competitors, Canon, Minolta, and Pentax. At some point prior to the initiation of this dispute, presumably concurrent with its overall cessation of activities, Respondent deactivated its websites.
Throughout 1999, Respondent also registered domain names that include the trademark names of other companies in the photographic industry, including "Pentax," "Olympus," "Leica," "Minolta" and "Fuji Films."
In early 2000, one of Complainants competitors, Eastman Kodak, brought suit against Respondent, alleging that it had violated its trademark rights by registering eleven domain names that included the trademark "Kodak," such as <kodakdealer.com> and <kodakcamera.com>. Respondent and Eastman Kodak settled that case out of court under undisclosed terms.
Technilab still has an inventory of new Nikon cameras, Nikkor lenses, and other equipment, including Nikon F5 cameras.
On October 17, 2000, the Complainants attorney sent a letter to Respondent, setting forth Complainants concerns with Respondents registration of domain names bearing the Nikon and Nikkor marks. Complainants also demanded that Respondent immediately transfer the domain names to the Complainants.
On or about November 22, 2000, counsel for Complainants and Respondent conferred by phone. During that telephone conversation, Respondents counsel suggested that the case could be settled if Complainants would agree to allow Respondent to keep two of the disputed domain names in return for its surrender of the remaining four. Complainants rejected that settlement offer.
5. Parties Allegations
Complainants allege as follows:
(1) The domain names <nikondealer.com>, <nikondealers.com>, <nikonf.com>, <nikonf5.com> and <nikoncamera.com> are confusingly similar to Complainants "Nikon" trademark and trade name, as well as the Nikon F and Nikon F5 marks, and that the domain name <nikkor.com> is identical to Complainants "Nikkor" trademark.
(2) Respondent has no rights or legitimate interests in the allegedly infringing domain names. More particularly, Complainants allege that:
(a) Respondent has not used the domain names in connection with a bona fide offering of goods and services in that the domain names are currently inactive and that, even if the websites were active, the use of the Nikon and Nikkor marks as domain names would not be bona fide without the authorization of the Complainants;
(b) there is no evidence that Respondent has been or is commonly known by the names Nikon or Nikkor, or that it has acquired any trademark or service mark rights in these names; and
(c) Respondents use or proposed use of the domain names at issue is commercial and designed to create an impression of association with the Complainants, to divert consumers from Nikon or to tarnish the Nikon and Nikkor marks.
(3) Respondent registered and is using the domain names at issue in bad faith. In particular, Complainants argue that:
(a) by offering to settle this dispute in return for keeping two of the domain names at issue, Respondent offered to exchange the other domain names for valuable consideration in excess of Respondents costs directly related to those domain names;
(b) Respondents registration of six domain names incorporating the Complainants famous marks, as well as numerous other domain names incorporating famous camera-related marks, constitutes a pattern of bad faith conduct and demonstrates Respondents intent to prevent Complainants from reflecting the marks in corresponding domain names;
(c) Respondent disrupted and plans to disrupt Complainants business by selling Complainants competitors products on a website located at a domain name composed of the Complainants trademark; and
(d) by using the Nikon and Nikkor domain names, the Respondent has and intends to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainants marks as to the source, sponsorship, affiliation, or endorsement of its website.
In its defense, Respondent argues as follows:
(1) Because Complainants are manufacturers and sell their products through intermediaries, there is no likelihood of confusion between the Complainants and the domain names <nikondealer.com> and <nikondealers.com>.
(2) Because Respondent was an authorized dealer of Nikon products at the time that the disputed domain names were registered, was encouraged to use Nikon marks and products in its marketing by Complainants, and maintains an inventory of Nikon products for sale, it has a legitimate interest in the domain names at issue in connection with a bona fide offering of goods and services. Respondent also argues that Complainants themselves have no legitimate interest in <nikonf.com> because "Nikon ceased production of the Nikon F [camera] in the early 1970s."
(3) There can be no finding of bad faith because, at the time the domain names were registered, it was reasonable for Respondent to believe that it had the right to register domain names containing the names Nikon and Nikkor. Moreover, Technilab has never offered the domain names at issue for sale and no inference of cybersquatting may be drawn from its litigation with Eastman Kodak because that dispute was settled. Finally, Respondents use of the domain names at issue cannot disrupt Complainants activities because Complainants already own the domain names <nikon.com>, <nikon.co.jp>, and other domain names integrating the Nikon mark.
6. Discussion and Findings
Paragraph 4(a) of the Policy provides that, to justify the transfer of a domain name, a complainant must prove each of the following:
(1) that the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(2) that the respondent has no rights or legitimate interests in respect of the domain name; and
(3) that the respondent has registered and has been using the domain name in bad faith.
A. The Domain Names Are Identical or Confusingly Similar to Complainants Trademarks
Respondent does not contest that <nikoncamera.com>, <nikonf.com> (Footnote 1), <nikonf5.com> and <nikkor.com> are identical or confusingly similar to Complainants marks. They argue, though, that <nikondealer.com> and <nikondealers.com> "cannot reasonably cause confusion as to the registrant of the domain name" because an Internet user will believe the website merely belongs to a dealer and not to Nikon itself.
Respondents argument reflects too narrow a reading of the phrase "confusingly similar." The issue is not whether confusion is likely in the trademark sense (that is, confusion as to source based on the domain name and its use in connection with a website), but rather, whether the domain name, standing alone, is sufficiently similar to the trademark to justify moving on to the other elements of a claim for cybersquatting. Nicole Kidman v. John Zuccarini, d/b/a Cupcake Party, Case No. D2000-1415 (WIPO Jan. 23, 2001). Thus, when a domain name wholly incorporates a complainants registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy. E.g., Magnum Piering, Inc. v. Mudjackers, Case No. D2000-1525 (WIPO Jan. 29, 2001) (<magnumpiering.com> and other similar domain names are confusingly similar to the "Magnum" mark); Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO Sept. 18, 2000) (<channelstore.com> and <chanelfashion.com> are confusingly similar to "Chanel" mark).
B. Respondent Does Not Have a Legitimate Interest in the Domain Names
The extent to which a purveyor of legitimate goods can, without authorization, use the manufacturers or licensors name as part of a domain name has not yet been definitively resolved. Of the cases identified by parties and through the Panels own research, there is a distinct majority and minority view.
The majority view rejects any claim by a licensee to the right to register a domain name consisting of, or containing, the licensors trademark. See, e.g., Motorola, Inc. v. NewGate Internet, Inc., Case No. D2000-0079 (WIPO Apr. 14, 2000) ("[T]he right to resell products does not create the right to use a mark more extensively than required to advertise and sell the product"); Stanley Works and Stanley Logistics, Inc. v. Camp Creek Co., Case No. D2000-0113 (WIPO Apr. 13, 2000) (retail seller of complainants goods does not have enough legitimate interest in complainants trademark "to confer the right to use these trademarks as domain names"); Mikimoto (America) Co. v. Asanti Fine Jewellers Ltd., Case No. AF-0126 (eResolution Apr. 8, 2000) ("By controlling the disputed domain name which is identical to Complainants trademarks and sites that link from it, Respondent will be in a preferred position" with respect to other distributors of Complainants products); Gorstew Limited v. Caribbean Tours & Cruises, Case No. FA 94927 (NAF July 28, 2000) (use of trademark in a domain name is "classic trademark infringement, even if the ultimate result of same is that some revenue flows to the owner of the marks"). (Footnote 2) That is especially true if the domain name suggests a broader relationship than in fact is the case. R.T. Quaife Engineering, Ltd. v. Luton, Case No. D2000-1201 (WIPO Nov. 14, 2000) (<quaifeusa.com> falsely suggested that registrant was the authorized distributor in the United States for all Quaife products).
This view is closely related to the traditional rule that a "licensees use [of a mark] inures to the benefit of the licensor-owner of the mark and the licensee acquires no ownership rights in the mark itself." 2 T.J. McCarthy, McCarthy on Trademarks and Unfair Competition, 18:52 (4th Ed. 2000). See Mariah Boats, Inc. v. Shoreline Marina, LLC, Case No. FA 94392 (NAF May 5, 2000) (citing McCarthy); NET2PHONE Inc. v. Dynasty System SDN BHD, Case No. D2000-0679 (WIPO
Sept. 19, 2000) (membership in complainants web affiliate program does not create legitimate interest in registration of infringing domain name); Heel Quik!, Inc. v. Goldman, Case No. FA 92527 (NAF Mar. 1, 2000) (neither licensing agreement, nor close working relationship with the complainant, gave respondent a right or interest in an infringing domain name). (Footnote 3)
The Panel acknowledges that a minority view has been espoused in some decisions, holding that a respondent may show a legitimate interest in a domain name containing a mark where it has used the domain name in connection with a bona fide offering of the trademarked goods. Weber-Stephen Products Co. v. Armitage Hardware, Case No. D2000-0187 (WIPO May 11, 2000); Draw-Tite, Inc. v. Plattsburgh Spring Inc., Case No. D2000-0017 (WIPO Mar. 14, 2000) (complainant cannot contest the use of a trademark in respondents domain name where it had acquiesced to the bona fide offering of its products through the web site); Adaptive Molecular Technologies, Inc. v. Woodward, Case No. D2000-0006 (WIPO
Feb 28, 2000) (authorized stocking distributor has a legitimate interest in using complainants trademark for the domain name of a website devoted to sale of mark holders products).
On the facts of this case, it is clear that, under either approach, Respondent lacks a legitimate interest. That is because Respondent appears to have used at least the <nikoncamera.com> domain name to sell both Nikon products and goods of other manufacturers who compete directly against Nikon. See Mariah Boats, Inc., supra (finding no legitimate interest in the use of a mark in a domain name that "sells competitive products of other manufacturers"); Antera S.p.A v. Antera, Inc., Case No. D2000-0689 (WIPO Sept. 28, 2000) (when a respondents proposed activities threaten a complainant with the possibility of competing against a confusing site, the respondent has not met its burden of showing a legitimate use). Even under the minority view, this use of a trademark owners mark to promote and sell competitive goods does not constitute a legitimate use. Cf. Adaptive Molecular Technologies, Inc., supra, (noting that the web site in question "is devoted entirely to the sale of Complainants product"); Weber-Stephen Products Co., supra, (relying on fact that respondent had removed all products from the website "other than Complainants"). Moreover, the domain names in dispute suggest a broader relationship than actually exists. Rather than communicate that Respondent is a camera store at which one can purchase Nikon and other branded cameras and related goods, the four non-dealer domain names (<nikonf.com>, <nikonf5.com>, <nikoncamera.com> and <nikkor.com>) suggest a relationship directly with Nikon itself, whereas the two other domain names (especially <nikondealers.com>) suggest that the sites provide links to all authorized dealers of Nikon products.
C. Respondents Registered and Used the Domain Names in Bad Faith
Paragraph 4(b) of the Policy sets out four non-exclusive indicia of bad faith:
(i) circumstances indicating that respondent 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
(ii) 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) respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to its website 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 respondents website or location or of a product or service on the website or location.
Bearing these factors in mind, the totality of Respondents conduct supports a finding of bad faith registration and use.
First, the number of domain names that Respondent registered that contain Complainants marks gives rise to the inference that Respondent has registered the domain names in order to prevent Complainants from reflecting their marks in the corresponding domain names. See Stanley Works and Stanley Logistics, Inc., supra. Cf. Magnum Piering, Inc., supra ("A single distributor is extremely unlikely to have a legitimate interest in precluding others from using numerous variants on a mark."). Although registration of one domain name to conduct a business selling Nikon cameras may have been consistent with good faith, Respondents pattern of registering six different domain names suggests a far less virtuous intention. That is confirmed by the fact that Respondent also has registered countless domain names that utilize other trademarks, including <fuji-films.com>, <leicacamera.com>, <pentaxcamera.com> and <canoncamera.com>. See, e.g., Guerlain S.A. v. Peikang, Case No. D2000-0055 (WIPO Mar. 21, 2000).
Second, the use of the <nikoncamera.com> domain name for a site that sold Nikon products and those of its competitors constitutes an improper use of Complainants mark to attract Internet users to Respondents site for commercial gain by creating a likelihood of confusion as to source, sponsorship, affiliation or endorsement of the site. See, e.g., Chanel, Inc., supra.
Third, Respondents offer to transfer four of the domain names in return for the right to keep the other two constitutes an offer to sell the domain names in return for valuable consideration. (Footnote 4) The "valuable consideration" mentioned in 4(b)(i) need not be monetary. See Kinkos Inc. v. eToll, Inc., Case No. FA 94447 (NAF May 27, 2000). Had Complainants sanctioned Respondents right to permanently keep and use two of these domain names, it indisputably would have given Respondent something of great importance, with a value far in excess of the costs of registering the four transferred domain names.
Taken together, these three circumstances demonstrate sufficient bad faith to justify the transfer of all six of the domain names at issue. See, e.g., Chernow Communications, Inc. v. Kimball, Case No. D2000-0119 (WIPO May 18, 2000); Telstra Corp. Ltd. v. Nuclear Marshmallows, Case No. D2000-0003 (WIPO Feb. 18, 2000).
The Panel concludes that all six domain names at issue are identical or confusingly similar to Complainants marks, that Respondent lacks any legitimate rights in those domain names, and that Respondent registered and used the domain names in bad faith. Accordingly, the domain names <nikondealer.com>, <nikondealers.com>, <nikoncamera.com>, <nikonf.com>, <nikonf5.com> and <nikkor.com> should be transferred to Complainants.
David H. Bernstein
Dated: February 26, 2001
1. Respondents argument that Complainants cannot object to its use of the <nikonf.com> domain name because Complainants stopped production of the Nikon F camera in the 1970s is unavailing. Even if Complainants no longer make new Nikon F cameras, there is no evidence in this record that they have abandoned that mark. In any event, the domain name includes the indisputably famous "Nikon" mark.
2. See also Fibrocap, Inc. v. Vanseo International, Ltd., Case No. AF-0184 (eResolution June 8, 2000); Labrada Bodybuilding Nutrition, Inc. v. Garrett, Case No. FA 94293 (NAF Apr. 27, 2000); Martin v. Carpenter, Case No. FA 94311 (NAF Apr. 25, 2000); Mayor Pharmaceutical Laboratories, Inc. v. Boone, Case No. FA 94295 (NAF Apr. 12, 2000).
3. Although panels are not bound to follow the decisions of prior panels, it nevertheless is appropriate to determine whether a majority view has developed among other panels that have considered the same issue. Not only do such decisions frequently have persuasive weight and authority, but also, they reflect a consensus that is worthy of some deference. Divining and following such a consensus helps to ensure consistency among UDRP decisions, a critical component of any system of justice. Otherwise, and given the lack of an appellate remedy, the expected result in any given case would be random based on the identify of the panelists, which would undermine the credibility of the entire UDRP process.
4. Because of the Policys goal of preventing abusive cybersquatting, evidence of settlement discussions are admissible in proceedings such as these where it is illustrative of Respondents intent. See Magnum Piering, Inc., supra.