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Domain Name Dispute [WIPO AMC Decision] - Canon U.S.A., Inc. v. donnylong.com [2010]

Domain Name Dispute [WIPO AMC Decision] - Canon U.S.A., Inc. v. donnylong.com [2010]

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Published by: MaxDolotov on Apr 19, 2010
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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISIONCanon U.S.A., Inc. v. donnylong.comCase No. D2010-02451.The Parties
Complainant is Canon U.S.A.,
Inc. of Lake Success, New York, United States of America, represented by Dorsey & Whitney, LLP, United States of America.Respondent is donnylong.com of Woodland Hills, California, United States of America.
2.The Domain Name and Registrar
The disputed domain name <canonallinone.com> is registered with GoDaddy.com, Inc.
3.Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 18, 2010. On February 18, 2010, the Center transmitted byemail to GoDaddy.com, Inc. a request for registrar verification in connection with thedisputed domain name. On February 19, 2010, GoDaddy.com, Inc. transmitted byemail to the Center its verification response confirming that Respondent is listed as theregistrant and providing the contact details. The Center verified that the Complaintsatisfied the formal requirements of the Uniform Domain Name Dispute ResolutionPolicy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name DisputeResolution Policy (the “Rules”), and the WIPO Supplemental Rules for UniformDomain Name Dispute Resolution Policy (the “Supplemental Rules”).In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notifiedRespondent of the Complaint, and the proceedings commenced on February 23, 2010.In accordance with the Rules, paragraph 5(a), the due date for Response wasMarch 15, 2010. Respondent failed to file a formal response. However, Respondenttransmitted to the Center emails dated February 23, 2010, March 5, 2010 andMarch 17, 2010 informally replying to the Complaint.
 page 1
The Center appointed Frederick M. Abbott as the sole panelist in this matter onMarch 19, 2010. The Panel finds that it was properly constituted. The Panel hassubmitted the Statement of Acceptance and Declaration of Impartiality andIndependence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4.Factual Background
Complainant, Canon U.S.A., Inc., is authorized by its corporate parent, Canon Inc., touse the CANON trademark at issue in this proceeding and to obtain such relief as may be directed by the Panel. Complainant and its corporate parent are hereinafter referredto as “Complainant”. Complainant has registered the word trademark CANON on thePrincipal Register of the United States Patent and Trademark Office (USPTO),including among others, registration number 975904, dated January 1, 1974, ininternational class (IC) 9, covering “electrophotographic copying machines and partsthereof”, and registration number 1315232, dated January 22, 1985, in IC 1, 7, 9, and16 (cancelled) covering,
inter alia
, printers, telefax equipment and photocopiers.Complainant has filed declarations of incontestability for both the aforesaidregistrations pursuant to Section 15 of the Lanham Act, and both such registrations aredeemed incontestable within the meaning of the Act.Complainant has for over 50 years used the CANON trademark throughout the UnitedStates and worldwide to advertise its products and services, it has expended significantfinancial resources on advertisement and promotion under the trademark, and it hassold billions of products under the trademark.Complainant has registered the domain name <canon.com> and operates a commercialInternet website at URL “www.canon.com”. Among the products manufactured,marketed, offered for sale and sold by Complainant are “all-in-one inkjet printers”,which are devices that perform multiple functions, including printing documents,scanning documents, and transmitting documents by telefax.According to the Registrar’s verification report, Respondent is registrant of the disputeddomain name. According to that verification report, the record of registration of thedisputed domain name was created on August 27, 2008.As of January 20, 2010, the disputed domain name was used to direct Internet users to awebsite with the banner heading “Canon All In One”, followed by the terms “InfoSpecs Price Contact”. This was followed by the line, “This site will be info on whereyou can find many Canon All In Ones for a cheap price on the web. For now while thesite is being built check out”. This statement is followed by additional informationincluding “SITE IS OWNED BY WELL KNOWN PORN STAR DONNY LONG”.Links on the website include “Swingers Watching” and “XXXFILMJOBS.COM, THEADULT INDUSTRIES SECRET PLACE”. The functional links on the website are anemail address, and the aforesaid connections to “www.swingerswatching.comand“www.xxxfilmjobs.com”. The linked websites exhibit graphic pornographic material.The website home page for “www.xxxfilmjobs.com” states “This site is owned and run by real Porn Star/Director Donny Long. HisWIKIPage and hisIAFDPage”. Complainant has submitted a declaration from a legal administrator in its legaladministration division stating that on January 6, 2010, she received a telephone callfrom a person identifying himself as “Don” who indicated that he bought and soldInternet domain names, knew how much the <canonallinone.com> domain was worth,
 page 2
and offered to sell it to Complainant. According to the declaration, the caller also“threatened to take damaging actions against Canon U.S.A., Inc. if he were to receiveno response to his offer within a short period of time.” Complainant has asserted thatthe telephone number from which the call from “Don” originated is identical to atelephone number listed on the web page at address“www.donnylongstudios.com/prices.html”.As of February 23, 2010, the disputed domain name directed Internet users to awebpage headed with “Canon All in One”, and stating in large font “THIS SITE ISSTRICTLY A GRIPE SITE.”The Registration Agreement in effect between Respondent and GoDaddy.com subjectsRespondent to dispute settlement under the Policy. The Policy requires that domainname registrants submit to a mandatory administrative proceeding conducted by anapproved dispute resolution service provider, of which the Center is one, regardingallegations of abusive domain name registration and use. (Policy, paragraph 4(a)).
5.Parties’ ContentionsA.Complainant
Complainant alleges that it has rights in the trademark CANON based on long use incommerce in the United States and as evidenced by registration at the USPTO.Complainant argues that the disputed domain name is confusingly similar to itsCANON trademark.Complainant asserts that its CANON trademark is well-known in the United States andother countries.Complainant alleges that Respondent lacks rights or legitimate interests in the disputeddomain name. Complainant argues that Respondent did not make a
bona fide
offeringof goods or services under the disputed domain name prior to notice of the dispute; thatRespondent has not been previously known by the disputed domain name; thatRespondent is not making legitimate noncommercial or fair use of the disputed domainname without intent (1) for commercial gain to divert consumers misleadingly or (2) totarnish Complainant’s trademark. Complainant also argues that Respondent has actedin a manner that breaches its registration agreement for the disputed domain name because that agreement required Respondent to warrant that it did not intend to use thedisputed domain name to directly or indirectly infringe legal rights of a third party.Complainant argues that Respondent registered and used the disputed domain name in bad faith, including by making an unsolicited offer to sell the disputed domain name toComplainant in a manner that implied that a payment would be required for more thanRespondent’s out of pocket expenses associated with the disputed domain name.Complainant further contends that, even without evidence of offering to sell thedisputed domain name, Respondent’s registration and use in bad faith is evidenced byuse of the disputed domain name incorporating Complainant’s well-known trademark to direct Internet users to a website with links to other websites containing pornographic material associated with Respondent. Complainant argues that suchaction by Respondent is intended for commercial gain, and tarnishes the reputation andgoodwill of Complainant associated with its mark.
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