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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Canon U.S.A., Inc. v. donnylong.com

Case No. D2010-0245

1. 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 by
email to GoDaddy.com, Inc. a request for registrar verification in connection with the
disputed domain name. On February 19, 2010, GoDaddy.com, Inc. transmitted by
email to the Center its verification response confirming that Respondent is listed as the
registrant and providing the contact details. The Center verified that the Complaint
satisfied the formal requirements of the Uniform Domain Name Dispute Resolution
Policy (the “Policy” or “UDRP”), 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 February 23, 2010.
In accordance with the Rules, paragraph 5(a), the due date for Response was
March 15, 2010. Respondent failed to file a formal response. However, Respondent
transmitted to the Center emails dated February 23, 2010, March 5, 2010 and
March 17, 2010 informally replying to the Complaint.

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The Center appointed Frederick M. Abbott as the sole panelist in this matter on
March 19, 2010. 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, Canon U.S.A., Inc., is authorized by its corporate parent, Canon Inc., to
use 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 referred
to as “Complainant”. Complainant has registered the word trademark CANON on the
Principal Register of the United States Patent and Trademark Office (USPTO),
including among others, registration number 975904, dated January 1, 1974, in
international class (IC) 9, covering “electrophotographic copying machines and parts
thereof”, and registration number 1315232, dated January 22, 1985, in IC 1, 7, 9, and
16 (cancelled) covering, inter alia, printers, telefax equipment and photocopiers.
Complainant has filed declarations of incontestability for both the aforesaid
registrations pursuant to Section 15 of the Lanham Act, and both such registrations are
deemed incontestable within the meaning of the Act.

Complainant has for over 50 years used the CANON trademark throughout the United
States and worldwide to advertise its products and services, it has expended significant
financial resources on advertisement and promotion under the trademark, and it has
sold billions of products under the trademark.

Complainant has registered the domain name <canon.com> and operates a commercial
Internet 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 disputed


domain name. According to that verification report, the record of registration of the
disputed domain name was created on August 27, 2008.

As of January 20, 2010, the disputed domain name was used to direct Internet users to a
website with the banner heading “Canon All In One”, followed by the terms “Info
Specs Price Contact”. This was followed by the line, “This site will be info on where
you can find many Canon All In Ones for a cheap price on the web. For now while the
site is being built check out”. This statement is followed by additional information
including “SITE IS OWNED BY WELL KNOWN PORN STAR DONNY LONG”.
Links on the website include “Swingers Watching” and “XXXFILMJOBS.COM, THE
ADULT INDUSTRIES SECRET PLACE”. The functional links on the website are an
email address, and the aforesaid connections to “www.swingerswatching.com” and
“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. His WIKI Page and his IAFD Page”.

Complainant has submitted a declaration from a legal administrator in its legal


administration division stating that on January 6, 2010, she received a telephone call
from a person identifying himself as “Don” who indicated that he bought and sold
Internet domain names, knew how much the <canonallinone.com> domain was worth,

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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 receive
no response to his offer within a short period of time.” Complainant has asserted that
the telephone number from which the call from “Don” originated is identical to a
telephone 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 a
webpage headed with “Canon All in One”, and stating in large font “THIS SITE IS
STRICTLY A GRIPE SITE.”

The Registration Agreement in effect between Respondent and GoDaddy.com subjects


Respondent to dispute settlement under the Policy. The Policy requires that domain
name registrants submit to a mandatory administrative proceeding conducted by an
approved dispute resolution service provider, of which the Center is one, regarding
allegations of abusive domain name registration and use. (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the trademark CANON based on long use in
commerce in the United States and as evidenced by registration at the USPTO.

Complainant argues that the disputed domain name is confusingly similar to its
CANON trademark.

Complainant asserts that its CANON trademark is well-known in the United States and
other countries.

Complainant alleges that Respondent lacks rights or legitimate interests in the disputed
domain name. Complainant argues that Respondent did not make a bona fide offering
of goods or services under the disputed domain name prior to notice of the dispute; that
Respondent has not been previously known by the disputed domain name; that
Respondent is not making legitimate noncommercial or fair use of the disputed domain
name without intent (1) for commercial gain to divert consumers misleadingly or (2) to
tarnish Complainant’s trademark. Complainant also argues that Respondent has acted
in 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 the
disputed 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 to
Complainant in a manner that implied that a payment would be required for more than
Respondent’s out of pocket expenses associated with the disputed domain name.

Complainant further contends that, even without evidence of offering to sell the
disputed domain name, Respondent’s registration and use in bad faith is evidenced by
use 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 such
action by Respondent is intended for commercial gain, and tarnishes the reputation and
goodwill of Complainant associated with its mark.

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Complainant requests the Panel to direct the Registrar to transfer the disputed domain
name to Complainant.

B. Respondent

Respondent’s email replies in response to the Complaint state in total:

Please let me know what it is you will be needing from me. I really
don’t have time for this so please also let me know what will happen if I just
ignore this. Canon has ripped me off big time and I guess they are trying to
do this again. This might just be making very large adult press headlines for
them trying to rip me off “a well known adult movie star”. All they had to
do was exchange my camera and printer. (Email from Donny Long of
February 23, 2010)

I dont have time for this and as you can see on the site its a gripe site and
that’s my response. Cannon ripped me off on a camera and a printer and if
they want to play this game we can make this public fine by me. (Email
from Donny Long of March 5, 2010)

I have already replied. Canon has ripped me off twice and


canonallinone.com is a grip site. (Email from Donny Long of
March 17, 2010)

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain


name registration and use. The Panel will confine itself to making determinations
necessary to resolve this administrative proceeding.

It is essential to Policy proceedings that fundamental due process requirements be met.


Such requirements include that a respondent have notice of proceedings that may
substantially affect its rights. The Policy and the Rules establish procedures intended to
ensure that respondents are given adequate notice of proceedings commenced against
them, and a reasonable opportunity to respond (see, e.g., Rules, paragraph 2(a)).

The Center notified Respondent of the Complaint and commencement of the preceding,
and Respondent indicated through email messages to the Center that such transmissions
were received. The Panel is satisfied that Respondent received adequate notice of these
proceedings and a reasonable opportunity to respond.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a
complainant to merit a finding that a respondent has engaged in abusive domain name
registration and use, and to obtain relief. These elements are that:

(i) respondent’s 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) respondent’s domain name has been registered and is being used in bad faith.

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Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has provided evidence of use in commerce of the CANON trademark in


the United States and registration of the CANON trademark on the Principal Register of
the USPTO (see Factual Background supra). The Panel determines that Complainant
has rights in the CANON trademark in the United States.

Complainant has provided evidence sufficient to establish that its CANON trademark is
well-known in the United States in the field of home and business office equipment,
including use to identify photocopiers, printers and telefax devices.

The disputed domain name directly incorporates Complainant’s well-known CANON


trademark, and combines that mark with the term “all-in-one” to form
<canonallinone.com>. The term “all-in-one” is commonly used by Complainant and
other manufacturers in the United States to identify a type of home and business office
equipment that performs multiple functions, including copying, printing and
transmitting documents by telefax. Internet users seeing the disputed domain name
combining Complainant’s well-known CANON trademark and the term “all-in-one”
are likely to associate the disputed domain name with Complainant and its products.
The Panel finds that the disputed domain name is confusingly similar to Complainant’s
CANON trademark.1

The Panel finds that Complainant has rights in a trademark and that the disputed
domain name is confusingly similar to that trademark.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that
respondent has no rights or legitimate interests in respect of the domain name (Policy,
paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may
demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found


by the Panel to be proved based on its evaluation of all evidence presented, shall
demonstrate your rights or legitimate interests to the domain name for purposes of
paragraph 4(a)(ii):

(i) before any notice to you 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 (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 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.” (Policy, paragraph 4(c))
1 Addition of the generic top-level domain (gTLD) “.com” is not relevant to the confusing
similarity analysis in the circumstances of this proceeding.

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Complainant has stated a prima facie case that Respondent lacks rights or legitimate
interests in the disputed domain name.

Respondent has asserted rights or legitimate interests in the disputed domain name
(incorporating Complainant’s well-known trademark) based on characterizing the
website directly addressed by the disputed domain name as a “gripe site”. This
assertion of rights or legitimate interests by Respondent does not explain why the
disputed domain name was used by Respondent prior to Complainant’s initiation of this
dispute to link Internet users to pornographic websites owned and operated by
Respondent. Moreover, Respondent’s belatedly modified version of its website merely
asserts “this site is strictly a gripe site”. The latter statement is an attempted legal
characterization of content, but lacks content beyond the self-characterization.

Respondent’s use of the disputed domain name to link Internet users to websites
including graphic pornographic content does not constitute a bona fide offering of
goods or services prior to notice of the dispute, and is not legitimate noncommercial or
fair use of the disputed domain name. Respondent must have been aware of
Complainant’s well-known trademark when it registered the disputed domain name,
and that Complainant would object to Respondent’s use of Complainant’s trademark to
direct Internet users to pornographic websites. Respondent’s use of the disputed
domain name is plainly commercial in nature. This does not represent
“noncommercial” use. Respondent’s use of Complainant’s trademark (ordinarily
associated with home and business office equipment) to direct Internet users to links to
pornographic content does not fall within the scope of “fair use” (e.g., comparative
advertisement or nominative identification) in U.S. trademark law.

Complainant has succeeded in establishing that Respondent lacks rights or legitimate


interests in the disputed domain name.

C. Registered and Used in Bad Faith

Paragraph 4(b) of the Policy indicates that certain circumstances may, “in particular but
without limitation”, be evidence of the registration and use of a domain name in bad
faith. These include (i) “circumstances indicating that [a respondent has] registered or
[has] 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 [a respondent’s] documented out-of-pocket costs
directly related to the domain name”; or (iv) “by using the domain name, [respondent
has] intentionally attempted to attract, for commercial gain, Internet users to [its] 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
[respondent’s] web site or location or of a product or service on [respondent’s] web site
or location”.

Respondent has registered and used Complainant’s well-known CANON trademark in


the disputed domain name to intentionally for commercial gain attract Internet users to
a website from which Respondent links to other websites operated by Respondent. The
linked websites contain graphic pornographic content. Respondent is using the
disputed domain name to create Internet user confusion as to Complainant acting as a
source, sponsor, affiliate or endorser of Respondent’s websites and content.
Respondent’s actions are not justified by its belated assertion that the website directly
associated with the disputed domain name is a “gripe site”. The Panel determines that

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Respondent registered and has used the disputed domain name in bad faith within the
meaning of paragraph 4(b)(iv) of the Policy.

Complainant has presented evidence to suggest that Respondent registered the disputed
domain name for purposes of selling it to Complainant for an amount in excess of
Respondent’s out-of-pocket expenses associated with the disputed domain name.
Although the Panel has no reason to doubt the evidence presented by Complainant
regarding Respondent’s alleged offer for sale, because the Panel has already determined
that Respondent acted in bad faith, the Panel need not make a finding on this additional
ground.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy
and 15 of the Rules, the Panel orders that the disputed domain name,
<canonallinone.com> be transferred to Complainant.

Frederick M. Abbott
Sole Panelist

Dated: March 28, 2010

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