Seiko Epson Corporation and Epson America, Inc. v. Jerayu Tanachaia
Claim Number: FA1011001360859
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by James B. Belshe of Workman Nydegger, Utah, USA. Respondent is Jerayu Tanachaia (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonlaserprintertonercartridge.us>, registered with Name.com, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum (the “Forum”) electronically on November 30, 2010; the Forum received a hard copy of the Complaint on December 1, 2010.
On December 1, 2010, Name.com, LLC confirmed by e-mail to the Forum that the <epsonlaserprintertonercartridge.us> domain name is registered with Name.com, LLC and that Respondent is the current registrant of the name. Name.com, LLC has verified that Respondent is bound by the Name.com, LLC 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 December 8, 2010, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 28, 2010 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 December 30, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <epsonlaserprintertonercartridge.us> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonlaserprintertonercartridge.us> domain name.
3. Respondent registered and used the <epsonlaserprintertonercartridge.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Seiko Epson Corporation and Epson America, Inc., designs, manufactures and sells computer and printer products. Epson America, Inc., is a service subsidiary of Seiko Epson Corporation. The Panel treats these two parties as a single entity for the purposes of these proceedings. Complainant conducts its technology retail business under the EPSON mark which is registered with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,134,004 issued April 29, 1980).
Respondent, Jerayu Tanachaia, registered the <epsonlaserprintertonercartridge.us> domain name on August 10, 2010. The disputed domain name resolves to a website featuring hyperlinks and advertisements for replacement inkjet cartridges and printers.
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) the 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.
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.
Complainant alleges it has rights in the EPSON mark based on its registration of the mark with the USPTO (e.g., Reg. No. 1,134,004 issued April 29, 1980). Previous panels have found that registration with a federal trademark authority establishes rights in the mark under Policy ¶ 4(a)(i). Therefore, the Panel finds that Complainant has established rights in the EPSON mark. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority); see also KCTS Television Inc. v. Get-on-the-Web Ltd., D2001-0154 (WIPO Apr. 20, 2001) (holding that it does not matter for the purpose of paragraph 4(a)(i) of the UDRP whether the complainant’s mark is registered in a country other than that of the respondent’s place of business).
Complainant contends that Respondent’s <epsonlaserprintertonercartridge.us> domain name is confusingly similar to Complainant’s EPSON mark. Respondent’s disputed domain name uses Complainant’s entire mark in addition to the descriptive terms “laser”, “printer”, “toner”, “cartridge”, and the country code top-level domain (“ccTLD”) “.us” which does not prevent Respondent’s domain name from being confusingly similar to Complainant’s mark. The Panel concludes that adding descriptive terms and a ccTLD to an established mark fails to distinguish the domain name from the mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”).
The Panel finds Policy ¶ 4(a)(i) has been established.
Complainant alleges that Respondent does not possess any rights or legitimate interests in the <epsonlaserprintertonercartridge.us> domain name. The burden rests with the Complainant to prove that Respondent does not have any rights or legitimate interests in the disputed domain name. After the Complainant makes a prima facie showing supporting this allegation, the burden is then placed on Respondent to show that it does possess the necessary rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel finds that because Complainant has made a prima facie showing and because Respondent failed to make a timely response, the Panel may assume that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel chooses to examine the record to determine whether Respondent has any rights or legitimate interests in the <epsonlaserprintertonercartridge.us> domain name under Policy ¶ 4(c). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under UDRP ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent does not own any service marks or trademarks that reflect an interest in the <epsonlaserprintertonercartridge.us> domain name. Therefore, the Panel finds that Respondent does not have any rights and legitimate interests in the disputed domain name 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 Sep. 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)).
The WHOIS information contained in the record, lists the registrant of the <epsonlaserprintertonercartridge.us> domain name as “Jerayu Tanachaia” which is not similar to the disputed domain name. Additionally, Complainant asserts that it has not licensed, or authorized, Respondent to use the EPSON mark. Thus, the Panel finds that Respondent is not commonly known by the <epsonlaserprintertonercartridge.us> domain name under Policy ¶ 4(c)(iii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under UDRP ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant asserts that Respondent is using the disputed domain name to resolve to a website that posts links to third-party competitors of Complainant in the sale of computer and printer products. Complainant alleges that clicking through the hyperlinks generates click-through fees for Respondent. The Panel finds that such use of a disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to UDRP ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to UDRP ¶ 4(c)(iii)); see also 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 ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under UDRP ¶ 4(c)(iii).”).
The Panel finds Policy ¶ 4(a)(ii) has been established.
Respondent’s <epsonlaserprintertonercartridge.us> domain name resolves to a website featuring hyperlinks which take Internet users to the websites of Complainant’s competitors in the computer and printer industry. Complainant contends that such use of a disputed domain name is disruptive to its business because purchasers of Complainant’s products may in fact be directed to Respondent’s resolving website. Therefore, the Panel finds that Respondent’s use of the <epsonlaserprintertonercartridge.us> domain name disrupts Complainant’s business and therefore constitutes bad faith registration and use under ¶ 4(b)(iii) of the Policy. See 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 UDRP ¶ 4(b)(iii)); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iii).”).
The Panel infers that click-through fees are generated for Respondent from the hyperlinks posted on the disputed domain name and resolving website. The Panel also presumes that Internet users searching for, and intending to find, Complainant may instead find Respondent’s website as a result of Respondent’s use of the disputed domain name. Internet users are likely to become confused as to Complainant’s sponsorship of, and affiliation with, the disputed domain name and resolving website. The confusion generated results in Respondent receiving click-through fees and the Panel finds this to be evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to UDRP ¶ 4(b)(iv).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under UDRP ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
The Panel finds Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonlaserprintertonercartridge.us> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 11, 2011
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