Seiko Epson Corporation and
Epson America Inc. v. Frank Anthony
Claim Number: FA0907001272951
PARTIES
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by James B. Belshe, of Workman
Nydegger,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonink.us>, registered with Wild West
Domains, Inc.
PANEL
The undersigned certifies that he or acted independently and
impartially and to the best of his knowledge has no known conflict in serving
as Panelist in this proceeding.
Louis E. Condon as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum (the
“Forum”) electronically on July 9, 2009;
the Forum received a hard copy of the Complaint on July 10, 2009.
On July 10, 2009, Wild West Domains, Inc. confirmed by e-mail to
the Forum that the <epsonink.us> domain name is registered
with Wild West Domains, Inc. and that
Respondent is the current registrant of the name. Wild West
Domains, Inc. has verified that Respondent is bound by the Wild West Domains, Inc. registration agreement
and has thereby agreed to resolve domain-name disputes brought by third parties
in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution
Policy (the “Policy”).
On July 21, 2009, a Notification
of Complaint and Commencement of Administrative Proceeding (the “Commencement
Notification”), setting a deadline of August 10, 2009 by which Respondent could
file a Response to the Complaint, was transmitted to Respondent in compliance
with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the
“Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On August 17, 2009, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed Louis E. Condon
as Panelist.
Having reviewed the communications records, the Administrative Panel
(the “Panel”) finds that the Forum has discharged its responsibility under
Paragraph 2(a) of the Rules. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the Rules, the Forum’s Supplemental Rules and any
rules and principles of law that the Panel deems applicable, without the
benefit of any Response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <epsonink.us> domain name is confusingly similar to Complainant’s EPSON mark.
2.
Respondent does not have any rights or
legitimate interests in the <epsonink.us>
domain name.
3.
Respondent registered and used the <epsonink.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Seiko
Epson Corporation and Epson America Inc., sells and distributes computer
products, printer products, and other electronic components under the EPSON
mark, which Complainant registered with the United States Patent and Trademark
Office (“USPTO”) on April 29, 1980 (Reg. No. 1,134,004). Complainant has used the EPSON trademark
continuously in commerce for more than thirty years in the
Respondent registered the <epsonink.us> domain name on February
27, 2008. The disputed domain name resolves
to a parked website that features links to third-party websites that compete
with Complainant’s computer and printer products.
DISCUSSION
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 the Complainant's undisputed
representations pursuant to Paragraphs 5(f), 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 the 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 the
Respondent is identical or confusingly similar to a trademark or service mark
in which the Complainant has rights; and
(2) the Respondent has no rights or legitimate
interests in respect of the domain name; and
(3) the domain name has been registered or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical and/or Confusingly Similar
Complainant registered its EPSON mark with the USPTO on April 29, 1980 (Reg. No. 1,134,004). The Panel finds that Complainant’s long-standing registration of the EPSON mark with the USPTO confers sufficient rights in the mark upon Complainant pursuant to Policy ¶ 4(a)(i). See Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007) (“Complainant’s trademark registrations with the USPTO adequately demonstrate its rights in the [EXPEDIA] mark pursuant to [UDRP] ¶ 4(a)(i).”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Respondent’s <epsonink.us>
domain name is confusingly similar to Complainant’s EPSON
mark. The <epsonink.us> domain name differs from Complainant’s mark in two ways:
(1) the descriptive term “ink” has been added to the end of the mark; and (2)
the country code top-level domain (ccTLD) “.us” has been added to the mark. The Panel finds that adding a descriptive
term does not sufficiently distinguish a domain name from that mark for the
purposes of Policy ¶ 4(a)(i). See
Brambles Indus. Ltd. v. Geelong
Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain
name <bramblesequipment.com> is confusingly similar because the
combination of the two words "brambles" and "equipment" in
the domain name implies that there is an association with the complainant’s
business); see also Vance Int’l, Inc. v.
Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that by adding the
term “security” to the complainant’s VANCE mark, which described the
complainant’s business, the respondent “very significantly increased” the
likelihood of confusion with the complainant’s mark). The
Panel also finds that the addition of a ccTLD is inconsequential when
considering whether a domain name is confusingly similar to a mark. See Mattel,
Inc. v. Unknown, FA 490083 (Nat. Arb.
Forum July 11, 2005) (finding that where the only difference is the addition of
the country code “us,” for the purposes of Policy ¶
4(a)(i) this difference is insufficient to distinguish the domain name
from the trademark). Therefore,
the Panel finds that despite these changes, the <epsonink.us> domain name is not sufficiently distinguished from Complainant’s EPSON
mark, and so Respondent’s <epsonink.us> domain name is confusingly similar to Complainant’s mark pursuant to
Policy ¶ 4(a)(i).
Rights or Legitimate Interests
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), if the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also 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.”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <epsonink.us> domain name. Therefore the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant contends that
Respondent is not commonly known by the disputed domain name, nor has it ever been the
owner or licensee of the EPSON mark. The
WHOIS record for the disputed domain names lists Respondent as “Frank Anthony.” Because Respondent has failed to show any
evidence that Respondent has ever been commonly known by the disputed domain name,
or by any other variant on the EPSON mark, the Panel finds that Respondent is
not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(iii). See RMO, Inc. v. Burbridge,
FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting [UDRP] ¶ 4(c)(ii) "to require a showing that one has been commonly
known by the domain name prior to registration of the domain name to
prevail"); see
also St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there was no evidence in the record
indicating that the respondent was commonly known by the disputed domain name).
Respondent is using
the disputed domain name to
resolve to a parked website that features links to competing third-party
websites offering printing products. Respondent
presumably receives referral fees from the advertising links listed on its
website. Thus, the Panel finds that
Respondent’s use of the disputed domain name does not constitute a bona fide
offering of goods and services pursuant to Policy ¶ 4(c)(ii), or a
legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iv). See Bank of Am.
Corp. v. Nw. Free Cmty. Access,
FA 180704 (Nat. Arb. Forum
Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users
seeking Complainant's website to a website of Respondent and for Respondent's
benefit is not a bona fide offering of goods or services under [UDRP] Policy ¶
4(c)(i) and it is not a legitimate noncommercial or fair use under [UDRP]
Policy ¶ 4(c)(iii).”); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr.
18, 2007) (holding that the respondent’s use of the contested domain name to
maintain a commercial website with links to the products and services of the
complainant’s competitors did not represent a bona fide offering of goods or services under [UDRP] ¶ 4(c)(i) or a
legitimate noncommercial or fair use under [UDRP] ¶ 4(c)(iii)).
Registration and Use in Bad Faith
The disputed domain name directs
Internet customers to Respondent’s website resolving from the disputed domain
names; these customers are further directed to third-party websites that offer
services in the same printer product market as Complainant. The Panel finds that Respondent is intentionally
disrupting Complainant’s business, and that therefore, Respondent’s
registration and use of the disputed domain name is in bad faith pursuant to
Policy ¶ 4(b)(iii).
See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding
bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii) where a
respondent used the disputed domain name to operate a commercial search engine
with links to the complainant’s competitors); see
also Jerie v. Burian, FA 795430 (Nat. Arb. Forum
Oct. 30, 2006) (concluding that the respondent registered and used the
<sportlivescore.com> domain name in order to disrupt the complainant’s
business under the LIVESCORE mark because the respondent was maintaining a
website in direct competition with the complainant).
Complainant
contends that Respondent is gaining commercially from this diversion, through
the receipt of click-through fees from the third-party printing product websites. The Panel finds that Respondent is
intentionally using the confusingly similar, disputed domain name for
commercial gain by creating a likelihood of confusion with Complainant’s mark, which
is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). 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 [UDRP] ¶ 4(b)(iv) 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 Asbury Auto. Group, Inc.
v.
DECISION
Complainant having established all three elements required under the usTLD Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <epsonink.us> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: August 21, 2009
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