Seiko Epson Corporation and Epson America, Inc. v. Brian Mitchell
Claim Number: FA1209001463621
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, U.S.A. Respondent is Brian Mitchell (“Respondent”), Utah, U.S.A.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <justepson.com>, registered with Godaddy.com, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 20, 2012; the National Arbitration Forum received payment on September 20, 2012.
On September 25, 2012, Godaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <justepson.com> domain name is registered with Godaddy.com, LLC and that Respondent is the current registrant of the name. Godaddy.com, LLC has verified that Respondent is bound by the Godaddy.com, LLC 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 September 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 15, 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@justepson.com. Also on September 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 October 23, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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.
In the instant proceedings, there are two Complainants. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.” The Panel finds this Complainant is properly filed, as hereinafter explained.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns an extensive list of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its EPSON mark.
Reg. No. 1,134,004 registered April 29, 1980;
Reg. No. 1,187,440 registered January 26, 1982;
Reg. No. 1,917,610 registered September 12, 1995;
Reg. No. 2,144,386 registered March 17, 1998;
Reg. No. 2,266,760 registered August 3, 1999;
Reg. No. 2,949,374 registered May 10, 2005;
Reg. No. 3,044,202 registered January 17, 2006;
Reg. No. 3,066,469 registered March 7, 2006;
Reg. No. 3,092,025 registered May 16, 2006;
Reg. No. 3,385,803 registered February 19, 2008; &
Reg. No. 3,520,274 registered October 21, 2008.
2. Complainant has established goodwill in the minds of consumers in connection with its EPSON mark.
3. The WHOIS information provided by Complainant lists the Registrant as “Brian Mitchell.”
4. Respondent registered the <justepson.com> disputed domain name on May 28, 2012.
5. Complainant has not licensed or authorized Respondent to use its EPSON mark in any way.
6. Respondent’s <justepson.com> domain name resolves to a website that provides information about Complainant’s products as well as provides a link to a third party where Complainant’s products can be purchased.
7. Respondent’s <justepson.com> domain name confuses Internet users and attempts to profit from Complainant’s EPSON mark by diverting Internet traffic away from Complainant and to Respondent’s disputed website in order to disrupt Complainant’s business.
8. Complainant sent two cease-and-desist letters to Respondent, which both went unanswered.
9. Respondent’s <justepson.com> domain name is confusingly similar to Complainant’s EPSON mark.
10. Respondent’s <justepson.com> domain name adds the generic word “just” to Complainant’s EPSON mark.
11. Respondent has no rights or legitimate interests in the <justepson.com> domain name.
12. Respondent is not making a bona fide offering of goods or services or a noncommercial or fair use of the <justepson.com> domain name.
13. Respondent’s resolving website directly competes with Complainant’s business.
14. Respondent has registered and is using the <justepson.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). 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.”
There are two Complainants in this matter: Seiko Epson Corporation and Epson America, Inc. Complainant Seiko Epson Corporation is an international manufacturer of high technology products such as printers, scanners, digital cameras and video projectors. Seiko Corporation has registered the EPSON mark with the (“USPTO”) and Canadian Intellectual Property Office. Epson America, Inc. is the North and Latin American sales, marketing, and customer service subsidiary for Seiko Epson Corporation. Epson America is a wholly owned subsidiary and licensee of Seiko Epson. Previous panels have deemed these Complainants to be a single common entity for the purposes of bringing a UDRP complaint. See Seiko Epson Corp. and Epson Am., Inc. v. Mihaljevi, FA 438102 (Nat. Arb. Forum May 16, 2012); see also Seiko Epson Corp. and Epson Am., Inc. v. Hypernet Grp., FA 437882 (Nat. Arb. Forum May 6, 2012).
Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralympic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:
It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names. Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark. But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”).
The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, and treats them all as a single entity in this proceeding. ICANN Rule 12. The Complainants will be collectively referred to as “Complainant.”
1. Complainant has rights in its EPSON MARK.
2. Respondent’s <justepson.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith,
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.”).
Complainant contends it has rights in its EPSON mark pursuant to Policy ¶ 4(a)(i) due to its trademark registration with the USPTO:
Reg. No. 1,134,004 registered April 29, 1980;
Reg. No. 1,187,440 registered January 26, 1982;
Reg. No. 1,917,610 registered September 12, 1995;
Reg. No. 2,144,386 registered March 17, 1998;
Reg. No. 2,266,760 registered August 3, 1999;
Reg. No. 2,949,374 registered May 10, 2005;
Reg. No. 3,044,202 registered January 17, 2006;
Reg. No. 3,066,469 registered March 7, 2006;
Reg. No. 3,092,025 registered May 16, 2006;
Reg. No. 3,385,803 registered February 19, 2008; &
Reg. No. 3,520,274 registered October 21, 2008.
Previous panels have found that evidence of a trademark registration with the USPTO satisfies the requirement of demonstrating rights in a given mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”). Based on Complainant’s contentions and these USPTO trademark registrations, the Panel finds that complainant has established rights in its EPSON mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that the <justepson.com> domain name is confusingly similar to Complainant’s EPSON mark under Policy ¶ 4(a)(i). Complainant argues that Respondent’s <justepson.com> domain name contains Complainant’s EPSON mark in its entirety with the addition of the generic term “just.” Complainant further lists previous cases in which a respondent’s use of the EPSON mark was found to be confusingly similar: Seiko Epson Corp. & Epson Am. Inc. v. FABV, LLC c/o DNS Admin., FA12722451 (Nat. Arb. Forum Aug. 12, 2009); Seiko Epson Corp. & Epson Am. Inc. v. Best Quality Computers c/o Yedidye Klagsbrun, FA1213557 (Nat. Arb. Forum Oct. 2, 2008); Seiko Epson Corp. & Epson Am. Inc. v. Christopher Dzialo, FA796386 (Nat. Arb. Forum Oct. 27, 2006). The Panel notes that Respondent’s <justepson.com> domain name adds the generic top-level domain (“gTLD”) “.com.” Previous panels have held that variations such as adding generic words or the (“gTLD”) “.com” are insufficient to differentiate one from the other in regards 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.”); see also Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end). Based on Complainant’s contentions, the Panel finds that Respondent’s <justepson.com> domain name is confusingly similar to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <justepson.com> domain name under Policy ¶ 4(c)(iii). Complainant claims that EPSON is a term that Complainant has made with no meaning apart from identifying the Complainant, its subsidiaries, and its products. Complainant also states that Respondent registered the domain name on May 28, 2012, further indicating that Respondent is not commonly known by the <justepson.com> domain name. Based on Complainant’s contentions, the Panel finds that Respondent is not commonly known by the <justepson.com> domain name. See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name)
Complainant asserts that Respondent has no rights or legitimate interests in the disputed domain name as it does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that Respondent is intentionally using the <justepson.com> domain name to divert Internet users searching for Complainant’s products to a website featuring pay-per-click links to a third party selling Complainant’s products and competing with Complainant’s business. Previous panels have found that using a disputed domain name to advertise a respondent’s business, from which respondent is financially benefitting, is not a use that is a bona fide offering of goods or services or a legitimate noncommercial or fair use. 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 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). Based on Complainant’s contentions and previous UDPR cases, the Panel finds that Respondent’s use of the disputed domain name to feature pay-per-click links for competing services does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
Complainant claims that Respondent is using the <justepson.com> domain name in bad faith by disrupting Complainant’s business pursuant to Policy ¶ 4(b)(iii). Complainant asserts that Respondent is using the confusingly similar domain name to divert Internet users to a competing website advertising Complainant’s product and displaying a link that forwards users to an Amazon.com website where the product can be purchased for the purpose of disrupting Complainant’s business. Previous panels have found bad faith pursuant to Policy ¶ 4(b)(iii) when a respondent registers and uses the disputed domain name to advertise goods and services of competitors of a complainant, thereby disrupting the complainant’s business. See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). The Panel finds that Respondent registered and is using the <justepson.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Complainant argues that Respondent demonstrates bad faith in accordance with Policy ¶ 4(b)(iv). Complainant claims that Respondent is engaging in bad faith use of the <justepson.com> domain name by using it to attract and redirect customers searching for EPSON products to Respondent’s competing website, from which Respondent is commercially profiting. Complainant further contends that Respondent’s use of the <justepson.com> domain name creates confusion as to Complainant’s sponsorship or affiliation with the disputed domain name. Previous panels have found bad faith registration under Policy ¶ 4(b)(iv) when a respondent registers a confusingly similar domain name containing Complainant’s mark in order to attract consumers to a website offering links to competing third-party websites in order to profit from those links. See Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where the respondent linked the domain name to another domain name, <iwin.com>, presumably receiving a portion of the advertising revenue from the site by directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant). Thus, the Panel finds that Respondent registered and uses the <justepson.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv) when attracting consumers and financially profiting from the confusion between the disputed domain name and registered mark.
Complainant also contends that in light of the fame and notoriety of Complainant's EPSON mark, it is inconceivable that Respondent could have registered the <justepson.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)."
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <justepson.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 7, 2012
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