Seiko Epson Corporation and Epson America Inc. v. Nattarat Chantawattananukul
Claim Number: FA0812001239754
Complainant is Seiko Epson Corporation and Epson America Inc. (“Complainant”), represented by R. Parrish Freeman, of Workman Nydegger, Utah, USA. Respondent is Nattarat Chantawattananukul (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info>, registered with GoDaddy.com, Inc..
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 23, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 26, 2008.
On December 23, 2008, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 December 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2009 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@refilling-epson-ink-cartridge.info and postmaster@ink-cartridge-epson.info by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 24, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info> domain names are confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info> domain names.
3. Respondent registered and used the <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation and Epson American Inc., is a multinational corporation positioned in the manufacture, design, production, and distribution of technology products. Complainant’s products include but are not limited to printers, ink cartridges for printers, scanners, digital cameras, and video equipment. Complainant has registered its EPSON mark for various product types, including printer ink cartridges, with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980; Reg. No. 1,187,440 issued January 26, 1982; Reg. No. 1,917,610 issued September 12, 1995; Reg. No. 2,144,386 issued March 17, 1998; Reg. No. 2,266,760 issued August 3, 1999; Reg. No. 2,949,374 issued May 10, 2005; Reg. No. 3,044,202 issued January 17, 2006; Reg. No. 3,066,469 issued March 7, 2006; Reg. No. 3,092,025 issued May 16, 2006; Reg. No. 3,385,803 issued February 19, 2008; Reg. No. 3,520,274 issued October 21, 2008).
Respondent, Nattarat Chantawattananukul, registered the <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info> domain names on July 5, 2008. The disputed domain names resolve to websites containing links to Complainant’s competitors and links to third-party commercial websites containing more links to Complainant’s competitors.
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. webnet-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 multiple registrations of its EPSON mark
with the USPTO. The Panel finds this is
sufficient to establish Complainant’s rights in the EPSON mark pursuant to
Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding
that the complainant’s federal trademark registrations for the CHEAPTICKETS and
CHEAPTICKETS.COM marks were adequate to establish its rights in the mark
pursuant to Policy ¶ 4(a)(i)); see also Metro.
Life Ins. Co. v. Bonds, FA 873143
(Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration
adequately demonstrates a complainant’s rights in a mark under Policy ¶
4(a)(i)).
Respondent’s <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info> domain names are confusingly similar to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i). Respondent has incorporated Complainant’s entire mark, adding generic terms directly related to Complainant’s products and the generic top-level domain (“gTLD”) “.com.” The addition of descriptive terms, in this case “refilling,” “ink,” and “cartridge,” to Complainant’s entire mark fails to distinguish the disputed domain name from Complainant’s mark. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to the complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). A gTLD is irrelevant in determining similarity because it is merely part of the Internet address. The Panel finds the disputed domain name is confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden to make a prima facie case in support of its allegations. Once Complainant has accomplished this, the burden shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“[O]nce a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
Respondent’s lack of response to the Complaint may be interpreted by the Panel as an admission that Respondent has no rights or legitimate interests in the disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel chooses to examine the record in accordance with the factors listed under Policy ¶ 4(c). The Panel may accept the allegations in the Complaint as true unless clearly contradicted. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
The disputed domain names resolve to websites offering links to Complainant’s competitors and third-party commercial websites containing more links to Complainant’s competitors. Respondent’s websites are presumed to be pay-per-click (“PPC”) sites generating income for Respondent when confused Internet users click through the advertised links. This use by Respondent is evidence of intent to divert Internet users from Complainant by incorporating Complainant’s mark, creating confusion concerning Complainant’s affiliation with Respondent’s websites. The Panel finds that this is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
Respondent’s WHOIS information designates the registrant of the disputed domain names as “Nattarat Chantawattananukul.” Without evidence to the contrary, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
The Panel finds that Complainant has satisfied Policy ¶
4(a)(ii).
Respondent exploits Complainant’s widely-recognized mark in technology products to divert Internet users from legitimate vendors of Complainant’s products. The Panel finds that Respondent’s use of the disputed domain names is evidence of Respondent’s intent to disrupt Complainant’s business. Respondent’s use of the disputed domain names to direct Internet users to a directory of links to Complainant’s competitors evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)).
Respondent is presumed to be receiving compensation in the form of click-through fees when confused Internet users click on the advertised links. The Panel finds that this is an attempt by Respondent to profit from Complainant’s EPSON mark. Diversion from Complainant to Respondent for commercial gain by creating a likelihood of confusion is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv)); see also GMAC LLC v. WhoisGuard Protected, FA 942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy, evidence that a domain name registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s website by creating a likelihood of confusion with the complainant’s mark serves as evidence of bad faith.”).
The Panel finds 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 <refilling-epson-ink-cartridge.info> and <ink-cartridge-epson.info> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 9, 2009
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