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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Olympus USA, Inc., Olympus America, Inc., and Olympus Optical Co., Ltd. v. World Photo Video and Imaging Corp.
Case No. D2001-1464
1. The Parties
The Complainants in this administrative proceeding are Olympus Optical Co., Ltd., together with its wholly owned U.S. subsidiaries Olympus USA Incorporated and Olympus America Inc. Olympus Optical Co., Ltd. is a Japanese joint stock company having a place of business at Hachioji-shi, Tokyo 192, Japan. Olympus USA is a wholly owned subsidiary of Olympus Optical and in turn, Olympus America is a wholly owned subsidiary of Olympus USA. Both have a place of business at Melville, New York 11747-3156, USA. Hereinafter Complainants shall be collectively referred to as Complainant. According to Network Solutions’ who-is database, the Respondent in this administrative proceeding is World Photo Video & Imaging Corp. with an address at Brooklyn, New York, NY 11232-1138, USA.
2. The Domain Name(s) and Registrar(s)
This dispute concerns the domain name <olympususa.com> (the "Domain Name").
The registrar with whom the Domain Name is registered is Register.com, Inc., 575 Eighth Avenue, 11th Floor, New York, New York 10018, USA. (the "Registrar"). The Panel finds that the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy") is the Policy applicable to this dispute.
3. Procedural History
A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on December 19, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated December 21, 2001.
A Formal Requirements Compliance Checklist (the "Checklist") was completed by the WIPO Center on January 8, 2002. The Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, as approved by ICANN (the "Uniform Rules"), and the WIPO Supplemental Rules for Uniform Domain Dispute Resolution Policy (the "WIPO Supplemental Rules"). According to the Checklist, the required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
No formal deficiencies having been recorded, on January 9, 2002, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent, setting a deadline of January 29, 2002, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by e-mail and by express courier. Having reviewed the communications records in the case file, the 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."
On February 1, 2002, the WIPO Center received Respondent’s Response. On February 5, 2002, the WIPO Center received from Respondent a Request for Extension to file an Amended Response together with the Response. On February 6, 2002, the Center received an amended Response from the Respondent. On February 6, 2002, the WIPO Center transmitted its response to Respondent’s Request, denying the requested extension. In its response the WIPO Center referred the issue of the admissibility of Respondent’s Amended Response to the Panel. The Panel has reviewed the late Amended Response and will give it such weight as the Panel believes is appropriate.
Having received this Panelist's Statement of Acceptance and Declaration of Impartiality and Independence, on February 18, 2002, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date. The Projected Decision date was set for March 4, 2002. The Sole Panelist finds that the Panel was properly constituted and appointed in accordance with the Uniform Rules and WIPO Supplemental Rules.
4. Factual Background
The following facts appear from the Complaint and two Responses. Complainant first began to use "Olympus" as a brand name in 1921 and first started using the term OLYMPUS in connection with cameras at least as early as 1935. Complainant first used the OLYMPUS mark in the U.S. at least as early as 1947 and registered the mark for use in connection with cameras in 1957.
Complainant has sold millions of dollars of cameras and related products under the OLYMPUS mark and has spent millions of dollars advertising the OLYMPUS marks, both in the U.S. and abroad. The OLYMPUS marks have been the subject of numerous magazine and trade articles as well as other extensive publicity. As a result of extensive sales, advertising and publicity, the OLYMPUS marks have become closely associated with Complainant as the source of goods and services offered under those marks.
Respondent is a retailer, selling, among other things, Olympus photographic equipment. It sells these products through the Domain Name as well as other websites. Complainant has never licensed Respondent to use any of its marks.
5. Parties’ Contentions
Complainant contends that Respondent has registered as a domain name a mark which is identical or confusingly similar to the service mark and trademark registered and used by Complainant, that the Respondent has no rights or legitimate interests in respect to the Domain Name, and that the Respondent has registered and is using the Domain Name in bad faith.
Respondent at first just stated that the Complaint was "factually inaccurate" without providing any details. The essence of its Amended Response went a little further to claim that "Olympus USA" was not a trademark of Complainant and that the Complaint was "maleficent and unfounded."
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." Since all of the activity which is the subject of this matter takes place in the United States, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel will look to the principles of the law of the United States.
Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
(i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and;
(ii) that the Respondent has no rights or legitimate interests in respect of the domain name; and;
(iii) that the domain name has been registered and is being used in bad faith."
The Domain Name violates Paragraph 4(a)(i) of the Policy in that it is identical or confusingly similar to the trademark in which the Complainant has rights. While not material to Paragraph 4(a)(i), it is worth noting that the Domain Name is nearly identical to the company name of one of the Complainants, Olympus USA. The Domain Name differs from a number of Complainant’s trademarks only with respect to the additions of the letters "USA". Further, the dominant feature of the Domain Name is the "OLYMPUS" portion that is the sole, or dominant feature of all the marks and registrations belonging to Complainant. Accordingly, the Domain Name is identical or confusingly similar to the several OLYMPUS marks belonging to and used by Complainant.
The Domain Name also violates Paragraph 4(a)(ii) of the Policy. Respondent has not received any permission or consent to use the trademark from Complainant and is not (either as an individual, business or other organization) commonly known by the name "Olympus". Rather, Respondent is a retail camera store that sells cameras through several websites, including through the Domain Name. Respondent sells a variety of cameras through the Domain Name, including many not manufactured by or in any way related to Complainant. Regardless of whether Respondent sells OLYMPUS brand cameras at the Domain Name, it does not thereby automatically have the right to use the term OLYMPUS in its domain name. Even a party legitimately selling goods or services manufactured by the trademark owner can be prohibited from using the trademark by itself in advertisements. See, e.g., Volkswagenwerk Aktiengesellschaft v. Wheeler, 814 F.2d 812 (1st Cir. 1987); Volkswagenwerk AG v. Hoffman, 489 F.Supp. 678, D.S.C. 1980); cf. Volkswaagenwerk Aktiengesellschaft v. Church, 411 F.2d 350 (9th Cir. 1969).
Paragraph 4(b) of the Policy provides guidance on Paragraph 4(a)(iii) of the Policy. It provides:
"b. Evidence of Registration and Use in Bad Faith".
For the purposes of Paragraph 4(a), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location."
The evidence is clear that Respondent is intentionally using the Domain Name to attract customers to its site. Indeed, Respondent admits as such: "Our sole motive is to make ourselves visible to various search engines." Amended Response p.2. That a likelihood of confusion will result is inevitable. The Panel therefore concludes that the Domain Name violates Paragraph 4(a)(iii) of the Policy.
Accordingly, the Panel finds that Respondent’s ownership of the Domain Name violates Paragraph 4(a) of the Policy.
For all of the foregoing reasons, the Panel decides that the Domain Name registered by Respondent is identical or confusingly similar to the trademark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the Domain Name and that the Respondent’s Domain Name has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(a) of the Policy, the Panel requires that the registration of the Domain Name <olympususa.com> be transferred to the Complainant.
Thomas D. Halket
Dated: March 1, 2002