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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Nikon Inc. and Nikon Corporation vs. Photocom Korea
Case No. D2000-1338
1. The Parties
The Complainants in this administrative proceeding are Nikon Inc. ("Nikon USA"), a New York corporation, with its principal place of business at 1300 Walt Whitman Road, Melville, New York 11747, USA and Nikon Corporation ("Nikon Japan") a Japanese corporation with its principal place of business at Fuji Building, 2-3, 3-chome, Marunouchi, Chiyoda-ku, Tokyo 100, Japan. (collectively "Nikon").
The Respondent is Photocom Korea, with its address at #178-1, Chungpadong-1 ga, Youngsangu, Seoul, N/A, N/A 140-131, Republic of Korea.
2. The Domain Names and Registrar
The domain names in dispute are <nikonmall.com> and <nikonmart.com>, registered with Tucows.com, Inc., based in Toronto, Canada.
3. Procedural History
3.1. The WIPO Arbitration and Mediation Center ("the Center") received the Complaint on October 5, 2000 by e-mail, and on October 6, 2000 in hardcopy.
3.2. A request for Registrar verification was transmitted to the Registrar, Tucows.com Inc., requesting it to: (1) confirm that the domain names in issue are registered with Tucows; (3) provide the full contact details [i.e., postal address(es), telephone number(s), facsimile number(s), e-mail address(es)] available in the Registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact, (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect, and (5) indicate the current status of the domain names.
3.3. On October 16, 2000, Tucows.com, Inc. confirmed by reply e-mail that the domain names in question were registered with Tucows.com Inc., and were currently in an "on hold" status. This status was to ensure that, pending resolution of the dispute, the domain names in question were not transferred to another party. The Registrar also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4. The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The Panel has independently determined and agrees with the assessment of the WIPO Center in this regard. The Complainants paid on time and in the required amount the fees for a sole Panelist.
3.5 No formal deficiencies having been recorded, on October 23, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainants, Tucows and ICANN), setting a deadline of November 11, 2000, by which time the Respondent could file a response to the Complaint.
3.6 Having reviewed the communications records in the case file, the Administrative Panel finds that the WIPO Center has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent."
3.7. On November 20, 2000, not having received any response, the WIPO Center sent the parties a formal Notification of Respondent Default.
3.8 On December 8, 2000, in view of the Complainants’ designation of a single member panel, the WIPO Center appointed the undersigned to serve as the sole Panelist. The Panel was required to forward its decision to WIPO by December 22, 2000.
4. Factual Background
4.1 The first Complainant, Nikon USA is the wholly owned subsidiary of the second Complainant, Nikon Japan (the Complainants are collectively referred to as Nikon). 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, including but not limited to cameras, lenses, straps, filters, bags and other photographic equipment and accessories.
4.2 For over forty years, Nikon has played a dominant role in virtually every facet of 35 mm photography, helping people everywhere create and record visual images. Today, the name NIKON is in a class by itself. Not only is the NIKON brand exceptionally well known, but it also has an enviable cachet. NIKON instantly evokes images of quality, reliability, innovation and prestige. In short, NIKON is among the most well known and highly respected trademarks in the field of photography.
4.3 The unique reputation attached to the NIKON name is the result of research and development, manufacturing know how, well executed quality control and quality assurance programs and continuous sales, marketing and promotion of NIKON brand products in the United States and elsewhere for over forty years.
4.4 To date, the Complainants have spent well over two hundred million dollars for advertising and promotions in the United States. On an average, the Complainants spend more than one million dollars a month advertising and promoting its well-known mark and products.
4.5 The Complainants manufacture and sell a broad range of cameras under the NIKON trademark throughout the world and the United States and these cameras include sophisticated single lens reflex cameras ("SLR") and lens shutter cameras, both of which are made with automatic and manual focus capabilities. The Complainants manufacture sophisticated cameras for the professional and serious amateur photographer as well as popularly priced "point and shoot" cameras for the general consumer.
4.6 The Complainants also sell NIKON brand lenses and accessory products for its cameras which include camera cases, bags and straps as well as filters and lens caps and covers.
4.7 Other NIKON products are binoculars, riflescopes, eyewear, electronic imaging equipment, surveying equipment, telescopes, microscopes and ophthalmic goods.
4.8 The Complainants’ cameras, lenses and photographic accessory products are available at a broad variety of retail outlets in all areas of the United States. NIKON cameras, lenses and photographic accessories are purchased by people of all ages.
4.9 Nikon conducts business on the Internet. For example, since August 25, 1996, Nikon has continuously operated a Web site at <www.nikonusa.com> that provides information concerning its various products and services, company information and a guestbook. Specifically, this site contains a link to Nikon’s Web site at <www.nikonoutlet.com> which is a virtual storefront that offers a selection of popular Nikon hard-to-find products, accessories, educational materials, Nikon imprinted merchandise and reconditioned products that provides consumers with a convenient source for direct online ordering.
4.10 Nikon’s future plans are to continue to expand its internet-related activities by offering more services over the Internet as well as offering more NIKON brand products for sale online.
4.11 Nikon owns eight trademark registrations in the United States and eleven trademark registrations in Korea for the mark NIKON. These registrations cover an extensive range of goods, including cameras, sunglasses, video cameras, ophthalmic instruments, etc.
4.12 On July 26, 2000, the Complainants’ attorney sent a letter by Federal Express concerning the domain name <nikonmall.com> to "Dong Keun Kim", who is stated to be the administrative contact in the Whois records for the domain name. The Complainants’ attorney was informed by Federal Express that this letter could not be delivered because the Respondent’s address, as listed in the Whois record, did not exist.
4.13 The Complainants’ attorney therefore attempted to send its letter via facsimile to the telephone number listed by the Respondent in the Whois information. This attempt to contact the Respondent was also unsuccessful.
4.14 Consequently, on August 8, 2000, the Complainants’ attorney sent its letter to the e-mail address supplied by the Respondent in the Whois information.
4.15 In this letter, the Complainants informed the Respondent that his actions infringe the Complainants’ trademark rights in NIKON and violate the recently enacted Anticybersquatting Consumer Protection Act and the Federal Trademark Dilution Act. In this letter, the Complainants also requested that, in order to avoid costly and time-consuming litigation, the Respondent immediately transfer the domain names to the Complainants.
4.16 On August 9, 2000, the Complainants received an e-mail message from the Respondent that consisted almost entirely of Korean characters. The Complainants responded to this message in three words: "Please, in English." The Respondent replied to this with two words: "Nikon staff?" On August 18, 2000, the Complainants’ attorney responded to this inquiry by stating that it is "Nikon’s lawyer" and requested that the Respondent send its e-mail message of August 9, 2000 again in English.
4.17 On August 19, 2000, the Respondent sent an e-mail message to the Complainants’ attorney, stating:
<nikonmall.com> doname [sic] sell.
<nikonmall.com> - 100,000 USD(Only)
<nikonmart.com> - 50,000 USD(Only)"
4.18 Sometime around the beginning of August, 2000, the Complainants’ attorney noticed that the Respondent posted a Web site at <nikonmall.com> that featured Flash pages containing the phrases <nikonmall.com>, "Nikon Shopping Mall Camera Lens and…," "Scanner Digital Camera," "Coming Soon," and "Powered by Photocom.co.kr." The Web site also contains a link to the Respondent’s e-mail address of email@example.com.
4.19 Thereafter the Complainants have instituted the present proceeding.
5. Parties’ Contentions
A. The Complainants have delineated their contentions under three broad heads as below:
Identical or confusing similarity
5.1 The domain names nikonmart.com and nikonmall.com contain the word NIKON as a dominant portion thereof and are hence confusingly similar to the trademark NIKON, in which the Complainants have exclusive rights. The Complainants rely upon United States Olympic Committee vs. MIC, WIPO Case No. D2000-0189 (finding the domain name usolympicstore.com to be confusingly similar to the Complainants’ OLYMPIC trademarks since the "dominant portion of the domain name – the term OLYMPIC – is identical to a number of USOC’s registered marks") and Seiko Epson Corporation and Epson America, Inc. v. Distribution Purchasing & Logistics Corp., NAF File No.: 0003000094219, in support of their contention.
5.2 The Respondent has not used the domain names <nikonmart.com> and <nikonmall.com> in connection with a bona fide offering of goods and services. Pursuant to the Complainants’ letter to the Respondent alleging that the domain names were in violation of their trademark rights, the Respondent attempted a partial activation of <nikonmall.com>. This page merely provides a list of electronic items and states "coming soon" and is therefore a deminimis activation of the website. The domain name <nikonmart.com>, despite being registered on June 2, 2000 has not been activated as yet. In view of the fact that the trademark NIKON is a very well known one, it is impossible to conceive of a situation where the Respondent could legitimately use these domain names.
5.3 There is no evidence to show that the Respondent, whether as an individual, business or other organisation has been or is commonly known by the domain names <nikonmart.com>and <nikonmall.com> or that it has acquired any trademark or service mark rights in the same. The Complainants has not licensed or permitted the Respondent to use the NIKON mark or to apply for any domain names incorporating this mark.
5.4 There is no evidence to show that the Respondent is making a non-commercial or fair use of the domain names at issue. Rather the evidence on record i.e. a letter of the Respondent offering to sell the domain names <nikonmall.com> and <nikonmart.com> for sums of U.S. $100,000 and U.S.$50,000 respectively, would prove otherwise.
5.5 The Respondent has registered the impugned domain names primarily for the purpose of selling the domain names to the Complainants who is the rightful owner of the trademark NIKON for valuable consideration in excess of out-of–pocket costs, directly related to the domain names. This is evidenced by the e-mail reply of the Respondent mentioned above. The Complainants also rely upon Cellular One Group v. Paul Brien, WIPO Case No. D2000-0028, to contend that since the Complainants’ mark is famous and the Respondent has not legitimately used the disputed domain names, it is proper to infer that the Respondent intended to offer them for sale to the Complainants since "it would be difficult, perhaps impossible, for the Respondent to use the Domain Name as the name of any business, product or service for which it would be commercially useful without violating Complainants’ rights".
5.6 The Respondent has registered the impugned domain names in order to prevent the Complainants from reflecting their trademark NIKON in corresponding domain names and it has engaged in a pattern of such conduct. The Respondent’s e-mail message to the Complainants’ attorney asking whether the Complainants’ attorney was a Nikon staff member clearly indicates that the Respondent was well aware of exclusive rights of the Complainants in the mark NIKON. Despite having knowledge of the Complainants’ famous mark, the fact that the Respondent has registered two domain names incorporating this mark demonstrates a "pattern of such conduct". The Complainants rely upon Bellevue Square Managers, Inc. v. Redmond Web and Branden F. Moulton, WIPO Case No. D2000-0056 (stating that a showing of even only one other domain registered to the Respondent can be sufficient to satisfy 4(b)(ii)’s pattern of conduct standard) in support of their contention.
5.7 The Respondent cannot justify his actions by claiming that the Complainants already maintain web sites at <www.nikon.com> or <www.nikonoutlet.com> and thus, it is not precluding the Complainants from registering their trademarks as domain names, as this is not a valid justification. The Complainants rely upon J. Crew International, Inc. v. crew.com, WIPO Case No. D2000-0054, wherein it was held that "the ability of the Complainants to obtain alternate domain names should not make this provision inapplicable. Otherwise, the provision would always be inapplicable for it would nearly always be possible for the Complainants to obtain an alternative domain name or even to register the same name as its trademark in another gTLD or ccTLD".
B. The Respondent has not filed any response in these proceedings.
6. Discussions and Findings
6.1. Paragraph 4(a) of the Policy requires the Complainant to prove the following:
a) that the domain name registered by the Respondent is identical or confusingly similar to a trademark of service mark in which the Complainant has rights; and
b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
c) that the domain name has been registered and is being used in bad faith.
Each of these requirements will be dealt with separately.
A. Complainants’ trademark rights; identical/confusing similarity
The Complainants have several trademark registrations for the trademark NIKON and have also been using it in connection with goods/services for the last 40 years. The panel therefore finds that the trademark NIKON is an extremely well known one with an enviable cachet and that the Complainants have exclusive rights in the same.
The domain names <nikonmall.com> and <nikonmart.com> have the word NIKON as a dominant portion thereof and are hence confusingly similar to the trademark NIKON (See United States Olympic Committee vs. MIC, WIPO Case No. D2000-0189 wherein it was held that that the domain name usolympicstore.com was confusingly similar to the Complainants’ OLYMPIC trademarks since the "dominant portion of the domain name was "OLYMPIC"). Even otherwise, the terms MALL and MART are mere generic terms and cannot help distinguish the trademark NIKON from the impugned domain names. In Nokia Corporation vs. Nokiagirls.com a.k.a. IBCC, WIPO Case No. D2000-0102 wherein it was held that despite the addition of a generic word such as GIRLS, the domain name was confusingly similar to the trademark of the Complainant, since the ability of generic terms to distinguish the domain name from the trademark of the Complainant is limited.
B. Rights/ Legitimate Interests
The panel agrees with the Complainants that the trademark NIKON being an extremely well known one, it is virtually inconceivable to imagine a situation where the Respondent could use it in connection with a legitimate offering of goods/services. This is especially so since the Respondent was clearly aware of the Complainants prior rights in it’s trademark NIKON. (The Respondent’s e-mail message to the Complainants’ attorney asking whether the Complainants’ attorney was a Nikon staff member clearly indicates that the Respondent was well aware of exclusive rights of the Complainants in the mark NIKON).
The Respondent has no doubt attempted a partial activation of the website by posting a list of electronic items. However, the panel finds that this de minimis activation has taken place subsequent to the Respondent being informed by the Complainants that its registration of the impugned domain names were in violation of the Complainant’s trademark rights. It is thus evident that the Respondent has attempted to fake an interest in the domain name by partially activating a website under the said domain name. The panel wishes to stress that the Policy in para 4 (a) (ii) uses the term "legitimate" interest. Thus, in order for the Respondent to prevail in an action of this sort, it is essential that the facts and circumstances reveal a "legitimate" interest and not just any interest. Far from being a legitimate interest, it is obvious that the domain name has been registered with a view to misappropriating the Complainants’ well known trademark. The email of the Respondent dated August 19, 2000, offering the domain names nikonmall.com and nikonmart.com for sums of US $ 100,000 and US $ 50,000 respectively, would evidence this. Also the partially active website, nikonmall.com by featuring Flash pages containing the phrases "NIKONMALL.COM," "Nikon Shopping Mall Camera Lens and…," "Scanner Digital Camera," etc evidence an intention to conjure up an association with the Complainants and pass off goods/ services as and for that of the Complainants.
The domain name <nikonmart.com>, despite being registered in January 2, 2000 has not been activated as yet and thus there cannot be any legitimate interest in respect of this domain name.
The Complainants contends that the Respondent is not commonly known by the domain names <nikonmark.com> and <nikonmall.com>. The Complainants has not licensed or permitted the Respondent to use the NIKON mark or to apply for any domain names incorporating this mark. The Respondent has not made any submissions in the present proceedings and hence the panel is inclined to agree with the Complainants contentions in this regard.
For all the foregoing reasons, the panel finds that the Respondent has no rights/ legitimate interests in the impugned domain names.
In view of the e-mail communication of the Respondent to the Complainants, dated August 19, 2000 stating that he intends to sell the domain names <nikonmall.com> and <nikonmart.com> for sums of US $ 100,000 and US $ 50,000 respectively, the panel finds that the Respondent has registered the impugned domain names primarily for the purpose of selling the domain names to the Complainants for valuable consideration in excess of out-of-pocket costs. Thus the elements of the para 4 (b) (i) of the UDRP stand satisfied.
The fact that the Respondent has registered two domain names incorporating the well known trademark of the Complainants demonstrates a "pattern" of conduct, as required by para 4 (b) (ii) of the UDRP. The panel therefore finds that Respondent has registered the impugned domain names in order to prevent the Complainants from reflecting their trademark NIKON in corresponding domain names. See Bellevue Square Managers, Inc. V. Redmond Web and Branden F. Moulton, WIPO Case No.D2000-0056, wherein it was held that a showing of even only one other domain registered by the Respondent can be sufficient to satisfy para 4(b)(ii)’s "pattern of conduct" standard.
Lastly, the panel also finds that since the website <www.nikonmall.com> features Flash pages containing the phrases "NIKONMALL.COM," "Nikon Shopping Mall Camera Lens and…," "Scanner Digital Camera," etc, the Respondent is intentionally attempting to attract, for financial gain, Internet users to his website by creating a likelihood of confusion with the Complainants’ mark NIKON.
The Respondent has not contested any of the Complainants allegations above mentioned. The panel therefore finds that that the impugned domain names have been registered and are being used in bad faith by the Respondent.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical to the trademark in which the Complainants have rights, that the Respondent has no rights or legitimate interests in respect of the domain names at issue, and that the Respondent’s domain names have been registered and are being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the disputed domain names be transferred to the Complainants.
Dated: December 27, 2000