Seiko Epson Corporation v. Asish Sen
Claim Number: FA1611001702054
Complainant is Seiko Epson Corporation (“Complainant”), represented by Rachel Jacques of Maschoff Brennan, Utah, United States. Respondent is Asish Sen (“Respondent”), New York, United States.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonprinterhelpline.net>, registered with GoDaddy.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 8, 2016; the Forum received payment on November 8, 2016.
On November 9, 2016, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <epsonprinterhelpline.net> 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 November 9, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 29, 2016 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@epsonprinterhelpline.net. Also on November 9, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 2, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Bruce E. Meyerson 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 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 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
1. Complainant is an international manufacturer of, and world leader in, the design, production, and distribution of high technology products, including printers, scanners, digital cameras, video projectors, and related services. Complainant has registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,134,004, registered Apr. 29, 1980).
2. Respondent’s <epsonprinterhelpline.net> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the mark and merely adds the term “printerhelpline” and the “.net” generic top-level domain (“gTLD”). [1]
3. Respondent does not have any rights or legitimate interests in the domain name. Respondent is not commonly known by the domain name, and Respondent is not authorized by Complainant to register the domain name or to run a website that incorporates any of Complainant’s EPSON marks.
4. Further, Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to promote and advertise its own services to consumers, services that compete directly with Complainant’s business.
5. Additionally, Respondent has failed to stop using the EPSON mark in its domain name after receiving two cease and desist letters from Complainant.
6. Respondent registered and is using the domain name in bad faith. First, Respondent uses the domain name to promote and advertise services that are directly competitive with Complainant’s business. Second, Respondent has not responded to Complainant’s cease and desist letters. Finally, because of the fame of the EPSON mark, it is clear that Respondent registered the domain name with actual knowledge of Complainant’s mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EPSON mark. Respondent’s domain name is confusingly similar to Complainant’s EPSON mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <epsonprinterhelpline.net> domain name and that Respondent registered and uses 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(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 (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 is an international manufacturer of, and world leader in, the design, production, and distribution of high technology products, including printers, scanners, digital cameras, video projectors, and related services. Complainant has registered the EPSON mark with the USPTO (e.g., Reg. No. 1,134,004, registered Apr. 29, 1980), which demonstrates its rights in the mark. See Expedia, Inc. v. Tan, FA 991075 (FORUM June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant claims that the <epsonprinterhelpline.net> domain name is confusingly similar to Complainant’s mark as it wholly incorporates the EPSON mark and merely adds the term “printerhelpline” and the “.net” gTLD. Neither the addition of generic and/or descriptive terms nor the affixation of the “.net” gTLD serves to adequately distinguish a respondent’s domain name from a complainant’s mark under Policy ¶ 4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (FORUM June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (FORUM Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). For these reasons, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the <epsonprinterhelpline.net> domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant alleges that Respondent does not have any rights or legitimate interests in the <epsonprinterhelpline.net> domain name. According to Complainant, Respondent is not commonly known by the domain name, and Respondent is not authorized by Complainant to register the domain name or to run a website that incorporates any of Complainant’s EPSON marks. The WHOIS information merely lists “Asish Sen” as registrant, and Respondent has failed to provide any contrary evidence for the Panel’s consideration. Thus, the Panel concludes Respondent is not commonly known by the <epsonprinterhelpline.net> domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (FORUM July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant maintains that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Complainant asserts that Respondent uses the domain name to promote and advertise its own services to consumers; services that compete directly with Complainant’s business. Panels have held that a respondent’s use of a domain name to offer services that are competitive with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Alcon, Inc. v. ARanked, FA 1306493 (FORUM Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”). Thus, the Panel holds that Respondent is not using the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) and (iii).
Complainant claims that Respondent has failed to stop using the EPSON mark in its domain name after receiving two cease and desist letters from Complainant. Where a respondent fails to respond to the demand letter(s) of a complainant under circumstances when the respondent is misusing a mark in which a complainant has rights, it has been found that the respondent lacks rights and legitimate interests in the domain name. See The Great Eastern Life Assurance Company Ltd. v. Unasi Inc., D2005-1218 (WIPO Jan. 26, 2006) (stating, “Panel finds that the Respondent’s failure to counter the allegations of the cease and desist letter amounts to adoptive admission of the allegations,” and finding no rights or legitimate interests as the prima facie burden shifted to the respondent, who did not submit a response and therefore failed under Policy ¶ 4(a)(ii)). Thus, the Panel finds that Respondent lacks rights and legitimate interests in the domain name.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent uses the domain name to promote and advertise services that are directly competitive with Complainant’s business. A respondent’s use of a domain name to offer products and/or services that compete directly with a complainant’s business is evidence of bad faith registration and use pursuant to Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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 Policy ¶ 4(b)(iii).”); see also MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark). Thus, Respondent’s use of the <epsonprinterhelpline.net> domain name constitutes bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Complainant has shown that Respondent has failed to respond to Complainant’s cease and desist letters. This has been found to constitute bad faith. See Guccio Gucci S.p.A. v. Domain Administrato - Domain Administrator, D2010-1589 (WIPO Nov. 3, 2010) (“The Panel also considers the failure of the Respondent to respond to the Complainant’s letters of demand and failure to file a Response to the Complaint further support an inference of bad faith.”).
Finally, Complainant alleges that because of the fame of the EPSON mark, it is clear that Respondent registered the domain name with actual knowledge of Complainant’s mark and rights therein. A respondent demonstrates bad faith registration and use pursuant to Policy ¶ 4(a)(iii) where the respondent had actual knowledge of the complainant’s mark at the time the domain name was registered. See Yahoo! Inc. v. Butler, FA 744444 (FORUM Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Accordingly, the Panel finds that Respondent registered the <epsonprinterhelpline.net> domain name with actual knowledge of Complainant’s mark, thereby violating Policy ¶ 4(a)(iii).
The Panel finds Complainant has satisfied 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 <epsonprinterhelpline.net> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: December 12, 2016
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