Seiko Epson Corporation and Epson America, Inc. v. [Registrant]
Claim Number: FA0602000644511
Complainants are 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 [Registrant] (“Respondent”).
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <007-epsoncartridges.com>, registered with Go Daddy Software, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 13, 2006; the National Arbitration Forum received a hard copy of the Complaint on February 14, 2006.
On March 8, 2006, Go Daddy Software, Inc. informed the National Arbitration Forum by email that Respondent’s registration of the <007-epsoncartridges.com> domain name had expired or been deleted by the registrant during the course of this dispute. Complainant has renewed or restored the domain name under the same commercial terms as Respondent. Accordingly, the <007-epsoncartridges.com> domain name has been placed in registrar hold and registrar lock status, the WHOIS contact information for Respondent has been removed, and the WHOIS entry indicates that the domain name is subject to dispute pursuant to EDDP ¶ 3.7.5.7. Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, 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 March 10, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 30, 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@007-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 April 5, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 <007-epsoncartridges.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <007-epsoncartridges.com> domain name.
3. Respondent registered and used the <007-epsoncartridges.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, is an international manufacturer of printers, scanners, digital cameras, ink cartridges and other high technology products. Complainant, Epson America, Inc., is the North American sales, marketing and customer service subsidiary of Complainant and is the licensee of the EPSON mark. Complainant has continuously and extensively used the EPSON mark in connection with high technology products for more than 30 years, and the mark has become synonymous with its products.
Complainant has registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980; Reg. No. 1,187,440 issued January 26, 1982; Reg. No. 1,917,610 issued September 12, 1995; Reg. No. 2,144,386 issued March 17, 1998; Reg. No. 2,949,374 issued May 10, 2005).
Respondent registered the <007-epsoncartridges.com> domain name on June 21, 2001. Respondent’s domain name resolves to a website containing links to third-party websites, some of which resolve to the websites of Complainant’s direct competitors in the ink cartridge industry. The current WHOIS information only provides an e-mail address for Respondent. Previously, however, the WHOIS information listed the same e-mail address but also identified the registrant as Print Country, 5663 Balboa Ave., Suite 350, San Diego, CA 92111.
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. 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).
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 of the mark with the USPTO. Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also 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.”).
Respondent’s <007-epsoncartridges.com>
domain name is confusingly similar to Complainant’s EPSON mark pursuant to
Policy ¶ 4(a)(i), because it wholly incorporates Complainant’s mark and merely
adds a hyphen and two generic terms, one of which describes Complainant’s ink
cartridge business. Other panels have
concluded that the addition of hyphens and generic terms to a mark do not
negate a finding of confusing similarity under Policy ¶ 4(a)(i). Health Devices Corp. v. Aspen S T
C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation
marks such as hyphens is irrelevant in the determination of confusing
similarity pursuant to Policy ¶ 4(a)(i).”); see also PG&E Corp. v.
Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does
not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and
‘2000’ following ‘PGE’, create new or different marks in which it has rights or
legitimate interests, nor does it alter the underlying [PG&E] mark held by
Complainant”).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks rights and
legitimate interests in the <007-epsoncartridges.com> domain
name. Complainant must first make a prima
facie case in support of its allegations, and the burden then shifts to
Respondent to show it does have rights or legitimate interests pursuant to
Policy ¶ 4(a)(ii). Once Complainant
makes a prima facie case in support of its allegations, the burden
shifts to Respondent to show otherwise.
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. G.D. Searle v. Martin Mktg., FA 118277
(Nat. Arb. Forum Oct. 1, 2002) (holding that, where the complainant has
asserted that respondent does not have rights or legitimate interests with
respect to the domain name, it is incumbent on respondent to come forward with
concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v.
Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under
certain circumstances, the mere assertion by the complainant that the
respondent does not have rights or legitimate interests is sufficient to shift
the burden of proof to the respondent to demonstrate that such a right or
legitimate interest does exist).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <007-epsoncartridges.com>
domain name. Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO
Dec. 4, 2000) (finding that the respondents’ failure to respond can be
construed as an admission that they have no legitimate interest in the domain
names); see also 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). However,
the Panel will now examine the record to determine if Respondent has rights or
legitimate interests under Policy ¶ 4(c).
Prior to the domain name’s expiration or deletion, the WHOIS information listed Respondent as Print Country, 5663 Balboa Ave., Suite 350, San Diego, CA 92111.
There is no other evidence in the record that Respondent is
commonly known by the <007-epsoncartridges.com> domain name. As a result, Respondent is not commonly
known by the <007-epsoncartridges.com> domain name pursuant to
Policy ¶ 4(c)(ii). 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 Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the
WHOIS contact information for the disputed domain [name], one can infer that
Respondent, Onlyne Corporate Services11, is not commonly known by the name
‘welsfargo’ in any derivation.”).
Moreover, Respondent’s <007-epsoncartridges.com> domain name, which includes Complainant’s EPSON mark, resolves to a website featuring links to Complainant’s direct competitors and to unrelated content. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the panel held that the respondent’s use of the <seiko.net> domain name, which was confusingly similar to the complainant’s SEIKO mark, to divert Internet users to websites unrelated to the mark did not represent 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). Because Respondent is operating a web directory providing links to a variety of content, including Complainant’s direct competitors, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <007-epsoncartridges.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is using the disputed domain name to divert Internet users seeking Complainant’s products to a website that displays links to
Complainant’s direct competitors and to unrelated content. In TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001), the panel found that the respondent had registered and used the <erarealty.com> domain name in bad faith by diverting Internet users to a competing website for its own commercial gain and creating confusion as to the source, sponsorship, affiliation, or endorsement of the domain name with Complainant’s ERA mark. In this case, Respondent is also redirecting Internet users seeking Complainant’s products to competing websites for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s EPSON mark, and profiting off of the goodwill associated with the mark. Therefore, Respondent has registered and used the <007-epsoncartridges.com> domain name in bad faith under 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).
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 <007-epsoncartridges.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 18, 2006
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