Seiko Epson Corporation and Epson America, Inc. v. Idan Salhov
Claim Number: FA1108001402096
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is Idan Salhov (“Respondent”), Texas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonprojector.us>, registered with GoDaddy.com.
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 August 5, 2011; the National Arbitration Forum received payment on August 16, 2011; the Forum received a hard copy of the Complaint on August 18, 2011.
On August 8, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <epsonprojector.us> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 August 18, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 7, 2011 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 13, 2011, 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 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 <epsonprojector.us> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonprojector.us> domain name.
3. Respondent registered and used the <epsonprojector.us> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Epson America, Inc. is the North and Latin American sales, marketing and customer service subsidiary of Complainant Seiko Epson Corporation. This relationship is adequate to establish a sufficient nexus or link between the Complainants, and the Panel will treat the Complainants as a single entity in this proceeding and allow them to bring this Complaint jointly. The Complainants will be collectively referred to as “Complainant.” Complainant is a designer, manufacturer, and distributor of a wide range of technology based products for businesses, government offices, and home offices. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its EPSON mark (e.g. Reg. No. 1,134,004 registered April 29, 1980).
Respondent, Idan Salhov, registered the <epsonprojector.us> domain name on January 29, 2010. Respondent’s disputed domain name resolves to a website which offers Complainant’s goods without authorization, as well as the goods of 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.
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 has presented the Panel with several trademark certificates from the USPTO showing that it has registered its EPSON mark (e.g. Reg. No. 1,134,004 registered April 29, 1980) numerous times. The Panel finds that such evidence firmly establishes Complainant’s rights in the EPSON mark under Policy ¶ 4(a)(i). See Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (“Complainant has established rights in the CHECK INTO CASH mark through registration with the USPTO.”); see also Reliant Techs., Inc. v. Jones, FA 1124524 (Nat. Arb. Forum Feb. 19, 2008) (finding that, as the complainant had registered its FRAXEL mark with the USPTO, the complainant had established rights to the mark pursuant to Policy ¶ 4(a)(i)).
Respondent’s <epsonprojector.us> domain name is confusingly similar to Complainant’s EPSON mark. The domain name features Complainant’s entire mark while adding the descriptive term “projector” and the country-code top-level domain (“ccTLD”) “.us,” changes insufficient to distinguish the disputed domain name form Complainant’s EPSON mark. See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000), and Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007), for the precedent that the addition of a generic word that has a descriptive quality relating to Complainant’s products is not sufficient to distinguish a domain name from an asserted mark. Further, it has long been held that the addition of a ccTLD or any TLD is irrelevant for the purposes of Policy ¶ 4(a)(i). See Lifetouch, Inc. v. Fox Photographics, FA 414667 (Nat. Arb. Forum Mar. 21, 2005) (finding the respondent’s <lifetouch.us> domain name to be identical to the complainant’s LIFETOUCH mark because “[t]he addition of “.us” to a mark fails to distinguish the domain name from the mark pursuant to the [usTLD] Policy”); 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.”). Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s EPSON mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <epsonprojector.us> domain name. Complainant is required to produce a prima facie case in support of its allegations and then the burden shifts to Respondent to prove it possesses rights or legitimate interests in the disputed domain name. The Panel finds Complainant has adequately established a prima facie case. Due to Respondent’s failure to respond to these proceedings, the Panel may assume Respondent does not possess rights or legitimate interests in the disputed domain name. See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 2, 2002) (“Because Complainant’s submissions constitute a prima facie case under the [UDRP], the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its right or legitimate interests in the subject domain name under [UDRP] ¶ 4(a)(ii).”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent’s failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). The Panel, however, will examine the record to determine whether Respondent possesses rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
There is no evidence on record indicating that Respondent is the owner of any service or trademark rights in the domain name under 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 the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002) (holding that because the 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 argues that Respondent is neither commonly known by the <epsonprojector.us> domain name, nor has Complainant given Respondent permission to use Complainant’s mark. The WHOIS information identifies “idan salhov” as the registrant of the <epsonprojector.us> domain name, and there is no evidence on record that Respondent is commonly known by the disputed domain name. The Panel thus finds Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(iii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the disputed domain name); see also 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).
Complainant contends that Respondent is selling Complainant’s products without authorization or license to do so and is therefore directly competing with Complainant for customers. Complainant’s screenshot evidence shows that Respondent is not only selling EPSON goods, but also those of Complainant’s competitors, such as “Favi” and “Mitsubishi” projectors. The Panel finds that such use of a confusingly similar domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(ii) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges that Respondent registered and is currently using the disputed domain name in bad faith. The Panel notes that under the usTLD Policy, Complainant need only prove that Respondent registered or used the domain name in bad faith. Respondent’s competing use of the domain name disrupts Complainant’s business because potential customers of Complainant are being diverted to Respondent’s website selling both Complainant’s goods and the goods of its competitors. The Panel finds that Respondent is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to [UDRP] ¶ 4(b)(iii).”).
Further, Complainant contends that Respondent registered the domain name at issue with the intent of profiting from Internet user confusion relating to Complainant’s sponsorship of or affiliation with the resolving website. Respondent is attempting to commercially profit from its advertisement and sale of the goods of Complainant and its competitors. The Panel therefore finds that Respondent is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the respondent registered and used the <wwfauction.com> domain name in bad faith because the name resolved to a commercial website that the complainant’s customers were likely to confuse with the source of the complainant’s products, especially because of the respondent’s prominent use of the complainant’s logo on the site); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to UDRP ¶ 4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonprojector.us> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: September 20, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page