Seiko Epson Corporation and Epson America Inc. v. St Kitts Registry
Claim Number: FA0710001093102
Complainant is Seiko Epson Corporation and Epson
America Inc. (collectively, “Complainant”), represented by R. Parrish Freeman, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt
Lake City, UT 84111. Respondent
is St
Kitts Registry (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsonusa.com>, registered with Moniker Online Services, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2007.
On October 19, 2007, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsonusa.com> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 26, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 15, 2007 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@epsonusa.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 21, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <epsonusa.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonusa.com> domain name.
3. Respondent registered and used the <epsonusa.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, is a multinational manufacturer of, and world leader in, the design production, and distribution of high technology products, including printers, scanners, digital cameras, and video projectors. Complainant has continuously for over twenty-five years used the EPSON mark in connection with printing, word processing, digital camera and other related products and the servicing thereof. Complainant has also registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980). Complianant, Epson America Inc., is the North and Latin American sales, marketing, and customer service subsidiary of Seiko Epson Corporation. Complainant, Epson America Inc., is a licensee of Complainant’s, Seiko Epson Corporation, mark (hereinafter collectively referred to as “Complainant”).
Respondent’s <epsonusa.com> domain name was registered on November 15, 2007 and resolves to a website containing a commercial search engine and links to various third-parties whom offer printing products and service in direct competition with those offered under Complainant’s EPSON mark. Some of the third-party websites additionally offer Complainant’s products.
Paragraph 15(a) of the Rules instructs this Panel to "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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. web net-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Complainant has sufficiently established its rights in the
EPSON mark through registration with the USPTO pursuant to Policy ¶
4(a)(i). See
Respondent’s <epsonusa.com>
domain name contains Complainant’s mark in its entirety and then includes the
geographic term “usa,” which are the initials for the country of the United
States of America, where Complainant conducts most of its business. The disputed domain also includes the generic
top-level domain (“gTLD”) “.com.” It is
well-established that the inclusion of a gTLD is irrelevant to a Policy ¶
4(a)(i) analysis and that a generic geographic term does not distinguish a
disputed domain name. Therefore, the
Panel finds that Respondent’s <epsonusa.com> domain name is
confusingly similar to Complainant’s EPSON mark pursuant to Policy ¶
4(a)(i). See Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level
of the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly similar); see also MFI UK Ltd. v. Jones,
D2003-0102 (WIPO May 8, 2003) (finding the <mfiuk.com> domain name
confusingly similar to the complainant’s MFI mark because the addition of the
letters “UK” were merely a common designation for the United Kingdom); see also Net2phone Inc. v. Netcall
SAGL, D2000-0666 (WIPO Sept. 26, 2000) (finding that the respondent’s
domain name <net2phone-europe.com> is confusingly similar to the
complainant’s mark because “the combination
of a geographic term with the mark does not prevent a domain name from being
found confusingly similar").
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first establish a prima facie case that Respondent has no
rights or legitimate interests in the disputed domain name. See VeriSign
Inc. v. VeneSign
Respondent has failed to submit a response to the Complaint. Accordingly, the Panel presumes that
Respondent has no rights or legitimate interests in the disputed domain name
but will nonetheless consider all the available evidence in light of the
factors listed under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg.,
FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Respondent’s failure to respond
means that Respondent has not presented any circumstances that would promote
its rights or legitimate interests in the subject domain name under Policy ¶
4(a)(ii).”); see also Talk City, Inc. v.
Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to
submit a substantive answer in a timely fashion, the Panel accepts as true all
of the allegations of the complaint.”).
Nowhere in Respondent’s WHOIS information or elsewhere in
the record does it indicate that Respondent is or ever was commonly known by
the disputed domain name. Further, the
Complainant has not ever granted Respondent permission to use the EPSON mark in
any way. As a result, the Panel finds
that Respondent is not commonly known by the disputed domain name pursuant to
Policy ¶ 4(c)(i). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Jan. 23, 2001) (finding that the respondent does not have rights in a domain
name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020
(WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the
respondent was not commonly known by the mark and never applied for a license
or permission from the complainant to use the trademarked name).
Respondent’s <epsonusa.com> domain name resolves
to a commercial search engine and a series of hyper-links that redirect
Internet users to various third-parties that offer products in direct
competition with those offered under Complainant’s mark. The Panel finds this to be neither a bona fide offering of goods or services
pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use
pursuant to Policy ¶ 4(c)(iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting
customers, who are looking for products relating to the famous SEIKO mark, to a
website unrelated to the mark is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under
Policy ¶ 4(c)(iii).”); see also TM
Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002)
(finding that the respondent’s diversionary use of the complainant’s marks to
send Internet users to a website which displayed a series of links, some of
which linked to the complainant’s competitors, was not a bona fide
offering of goods or services).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(ii).
The <epsonusa.com> domain name resolves to a
series of links to third-party websites that offer Complainant’s products and products
in direct competition with those offered under Complainant’s mark. The Panel finds this disruption to
Complainant’s business to be evidence of Respondent’s bad faith registration
and use pursuant to Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex
Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use
of Complainant’s CELEBREX mark to sell Complainant’s products represents bad
faith use under Policy ¶ 4(b)(iii).”); see
also S. Exposure
v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the
respondent acted in bad faith by attracting Internet users to a website that
competes with the complainant’s business).
Moreover, the Panel presumes that Respondent is commercially
benefiting from the use of “click-through” fees for each Internet user who
clicks on one of the links or the commercial search engine that resolve from
the disputed domain name. The Panel
finds this to be additional evidence of Respondent’s bad faith registration and
use pursuant to Policy ¶ 4(b)(iv). See
Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding
that if the respondent profits from its diversionary use of the complainant's
mark when the domain name resolves to commercial websites and the respondent
fails to contest the complaint, it may be concluded that the respondent is
using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Associated
Newspapers Ltd. v. Domain Manager, FA
201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the
<mailonsunday.com> domain name is evidence of bad faith pursuant to
Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's
competitors and Respondent presumably commercially benefited from the
misleading domain name by receiving ‘click-through-fees.’”).
The Panel concludes that Complainant has satisfied Policy ¶
4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonusa.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: December 3, 2007
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