Seiko Epson Corporation and Epson America, Inc. v. Hypernet Group
Claim Number: FA1204001437882
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, California, USA. Respondent is Hypernet Group (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsondurabrite.com>, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2012; the National Arbitration Forum received payment on April 3, 2012.
On April 4, 2012, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsondurabrite.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 4, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 24, 2012 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@epsondurabrite.com. Also on April 4, 2012, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 1, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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
Complainant contends as follows:
Complainant Seiko Epson Corporation (“Seiko Epson”) is an international manufacturer of, and world leader in, the design, production, and distribution of high technology products, including printers, scanners, digital cameras, and video projectors. Seiko Epson’s products are designed for a wide range of consumers in small and large businesses, government offices and home offices.
Complainant owns several 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) and its DURABRITE mark (Reg. No. 2,664,235 registered October 29, 2002).
Co-complainant Epson America, Inc. is the North and Latin American sales, marketing, and customer service subsidiary of Seiko Epson and a licensee of the EPSON and DURABRITE trademarks and services marks for the distribution and sale of products and services offered throughout North America, Central America, and South America.
Respondent’s domain name resolves to a parked website indicating that such services are provided courtesy of <sedo.com> and that the domain name is for sale by the registrant for $700.00.
The domain name is confusingly similar to Complainant’s EPSON and DURABRITE marks as it combines those marks and adds the generic top-level domain (“gTLD”) “.com.”
Respondent is not, and has not been, commonly known by the disputed domain name.
Respondent’s use of the domain name to divert Internet users attempting to reach Complainant’s website, for Respondent’s benefit, is 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).
Respondent has registered and is using the domain name in bad faith under Policy ¶¶ 4(b)(i), (b)(iii), and (b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complaint and Co-complainant (hereinafter “Complainant”) are sufficiently legally connected to be treated as single complainant for the purposes of this proceeding.
Complainant had, and has, trademark rights in its EPSON and DURABRITE marks at all times relevant to this proceeding. Complainant’s trademarks are confusingly similar to each of Respondent’s disputed domain names.
Respondent, Hypernet Group, registered the at-issue <epsondurabrite.com> domain name on December 29, 2011.
Respondent had, and has, no authority to use Complainant’s trademark in any manner whatsoever.
The website referenced by the at-issue domain name resolves to a parked webpage indicating that such parking services are provided courtesy of Sedo.com
The at-issue domain name was offered for sale by Respondent.
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."
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.
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.”).
There are two Complainants in this proceeding: Seiko Epson Corporation and Epson America, Inc. UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.” (emphasis added). There is a sufficient legal connection between the parties to treat them commonly under Supp. Rule 1(e) since the later entity is a subsidiary of the former and a licensee of the former’s at-issue trademarks.
The at-issue domain name is confusingly similar to trademarks in which Complainant has rights.
Complainant has rights in the EPSON mark (e.g., Reg. No. 1,134,004 registered April 29, 1980) and the DURABRITE mark (Reg. No. 2,664,235 registered October 29, 2002) since each was registered with the USPTO. It is well settled that trademark registration with a recognized authority demonstrates that a complainant has rights in a mark or marks under Policy ¶ 4(a)(i). See 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). This is the case regardless of whether or not Respondent’s location is outside the jurisdiction of the registration (here Thailand). See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <epsondurabrite.com> domain name is confusingly similar to Complainant’s trademarks. The at-issue domain name consists of the EPSON and DURABRITE trademarks combined with the gTLD “.com.” The differences between the at-issue domain name and Complainant’s marks are insufficient to materially distinguish the two under Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the <epsondurabrite.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
Respondent lacks rights or interests in respect of the <epsondurabrite.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case that Respondent lacks rights and legitimate interests in the at-issue domain name (or each of them where more than one domain is at‑issue) and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights and legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since there was no response to the Complaint, Complainant’s prima facie case will be conclusive.
Complainant has never granted Respondent permission to use the ESPON or DURABRITE marks in any way. Furthermore, Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the domain name’s registrant as “Hypernet Group,” which is not similar to the domain name. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). 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).
Although Complainant argues that Respondent has failed to make an active use of the disputed domain name, a screenshot of a website referenced by the at-issue domain name features various third-party links to providers of printing products and services that appear to be in competition with Complainant. This website is sponsored by third party <sedo.com>. Respondent’s use of the disputed domain name in this manner is consistent with UDRP precedent that has found such use to not be 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 ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to 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).
Additionally, the at-issue domain name is for sale through <sedo.com> and correspondence from Respondent to Complainant additionally states that the domain name is for sale on <sedo.com> and that Complainant can buy it there. The foregoing evidences an offer to sell the domain, further showing that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
Given Complainant’s uncontroverted evidence, Complainant well satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in the disputed domain name under Policy ¶4(a)(ii).
Respondent registered and uses each of the at-issue domain names in bad faith.
A link on the website referenced by the at-issue domain name allows Internet users to purchase the disputed domain name for $700.00. As eluded to above regarding rights and interest, Respondent replied to one of Complainant’s cease and desist letter and therein stated that the domain name could be purchased through <sedo.com>. Under the particular circumstances of the instant case Respondent’s attempts to sell the disputed domain name to Complainant (and others) shows bad faith registration and use under Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale); see also Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith).
Furthermore, Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iii) as Complainant explains that Respondent’s use of the domain name diverts Internet users to competing printing products. 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 Policy ¶ 4(b)(iii)).
There is also evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iv). It appears more likely than not that Respondent is commercially benefiting from its use of the domain name in question. See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Finally, prior to registering the at-issue domain name Respondent clearly had knowledge of Complainant and its rights in each of the trademarks comprising the domain name. See Bluegreen Corp. v. eGo, FA 128793 (Nat. Arb. Forum Dec. 16, 2002) (finding bad faith where the method by which the respondent acquired the disputed domain names indicated that the respondent was well aware that the domain names incorporated marks in which the complainant had rights); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Therefore, the Panel concludes, on multiple independent grounds, that Respondent registered and used the at-issue domain name in bad faith pursuant to 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 <epsondurabrite.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: May 6, 2012
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