Seiko Epson Corporation and Epson America, Inc. v. Eyecon Marketing Inc.
Claim Number: FA0512000609195
Complainant is Seiko Epson Corporation and Epson America, Inc. (collectively “Complainant”), represented by R. Parrish Freeman, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is Eyecon Marketing Inc. (“Respondent”), 1121 Lewis Ave, Sarasota, FL 34237.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsoncartridges.com>, registered with Network Solutions, Inc.
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.
Hon. Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 13, 2005; the National Arbitration Forum received a hard copy of the Complaint on December 14, 2005.
On December 14, 2005, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsoncartridges.com> domain name is registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 15, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 4, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@epsoncartridges.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Ralph Yachnin 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." 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 makes the following assertions:
1. Respondent’s <epsoncartridges.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsoncartridges.com> domain name.
3. Respondent registered and used the <epsoncartridges.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, is a multinational manufacturer of, and world leader in the design, production and distribution of high technology products, including printers, scanners, digital cameras and video projectors. Complainant’s products are designed for a wide range of consumers in small and large businesses, government, and home offices.
Complainant has registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004, issued April 29, 1980). Complainant has been using the EPSON mark in the United States and around the world for more than thirty years and has invested substantially in associating the EPSON mark with its goods and services.
Respondent registered the <epsoncartridges.com> domain name on March 22, 1999. Respondent is using the disputed domain name to divert Internet users searching under Complainant’s EPSON mark to third party websites including <myinkrep.com>, that promotes the sale of printers from Complainant’s competitors such as Canon, HP, Brother and many other printer brands.
Complainant has not licensed or otherwise permitted Respondent to use the EPSON mark or any of its other marks, or to register the <epsoncartridges.com> domain name or any other domain names incorporating its EPSON mark.
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.
Complainant has established rights in the EPSON mark through registration with the USPTO. See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Complainant asserts that the <epsoncartridges.com>
domain name is confusingly similar to Complainant’s EPSON mark pursuant to
Policy ¶ 4(a)(i) because the domain name incorporates Complainant’s entire
EPSON mark with the addition of the generic or descriptive term
“cartridges.” The Panel finds that
simply adding a generic or descriptive term to a mark does not negate the
confusing similarity between Respondent’s domain name and Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See
Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003)
(finding the <novellsolutions.com> domain name confusingly similar to the
NOVELL mark despite the addition of the descriptive term “solutions” because
even though “the word ‘solutions’ is descriptive when used for software,
Respondent has used this word paired with Complainant's trademark NOVELL”); see
also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb.
Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark
and merely added the descriptive terms “traffic school,” “defensive driving,”
and “driver improvement” did not add any distinctive features capable of
overcoming a claim of confusing similarity).
Furthermore, the addition of the generic top-level domain “.com” does not negate the confusing similarity of Respondent’s domain name to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); 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 that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent does not have rights or
legitimate interests in the <epsoncartridges.com> domain
name. When a Complainant establishes a prima
facie case pursuant to Policy ¶ 4(a)(ii), the burden shifts to the
respondent to prove that it has rights or legitimate interests. Due to Respondent’s failure to respond to
the Complaint, the Panel infers that Respondent does not have rights or
legitimate interests in the disputed domain name. See Parfums
Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that
by not submitting a response, the respondent has failed to invoke any
circumstance which could demonstrate any rights or legitimate interests in the
domain name); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”).
Additionally, Respondent has not offered any evidence and there is no proof in the record suggesting that Respondent is commonly known by the <epsoncartridges.com> domain name. Thus, the Panel concludes that Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); 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).
Moreover, Respondent is using the <epsoncartridges.com>
domain name to attract Internet users to its own commercial website where
printer products belonging to Complainant’s competitors are being advertised
for sale. Respondent presumably garners
click-through fees for providing links to Complainant’s third party
competitors. Respondent’s commercial
use of a domain name confusingly similar to Complainant’s mark fails to
demonstrate a bona fide offering of goods or services pursuant to Policy
¶ 4(c)(i) or a legitimate noncommercial use or fair use of the domain name
under Policy ¶ 4(c)(iii). See Sports
Auth. Mich., Inc. v. Internet Hosting, FA 124516 (Nat. Arb. Forum Nov. 4,
2002) (“Redirecting Internet users attempting to reach a complainant’s website
in order to gain a profit off of a complainant is one example of bad faith use
and registration under the Policy.”); see also Medline, Inc. v. Domain Active Pty. Ltd., FA 139718 (Nat. Arb. Forum Feb. 6,
2003) (finding no rights or legitimate interests where the respondent merely
redirected the <wwwmedline.com> domain name to the complainant’s own
website at <medline.com>).
The Panel finds that Policy ¶
4(a)(ii) has been satisfied.
The Panel finds that Respondent intentionally registered the disputed domain name incorporating Complainant’s mark to divert Internet users to Respondent’s commercial website. The Panel concludes that such activity is evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Respondent is using the disputed domain name to
advertise printing products and provide links to third parties engaged in the
business of selling printing products.
Complainant is engaged in the business of selling printing products. The Panel finds that, by creating confusion
around Complainant’s mark, Respondent is attempting to disrupt the business of
a competitor. Respondent’s use of
Complainant’s mark to sell goods similar to Complainant’s goods and services is
evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA
94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad
faith by attracting Internet users to a website that competes with the complainant’s
business); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent
registered a domain name confusingly similar to Complainant's mark to divert
Internet users to a competitor's website. It is a reasonable inference that
Respondent's purpose of registration and use was to either disrupt or create
confusion for Complainant's business in bad faith pursuant to Policy ¶¶
4(b)(iii) [and] (iv).”).
The Panel finds that Policy ¶ 4(a)(iii) has been
satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsoncartridges.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: January 23, 2006
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum