Seiko Epson Corporation and
Epson America, Inc. v. AOS Web Com, Inc.
Claim Number: FA0610000823033
PARTIES
Complainants are Seiko Epson
Corporation and Epson America, Inc. (collectively “Complainant”), represented by R.
Parish Freeman, of Workman Nydegger, 1000 Eagle Gate
Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is AOS Web Com (“Respondent”),
The domain name at issue is <epsonusa.com>, registered with Stargate
Holdings Corp.
PANEL
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.
Alan L. Limbury as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 17, 2006; the
National Arbitration Forum received a hard copy of the Complaint on October 18, 2006.
On October 18, 2006, Stargate Holdings Corp. confirmed by e-mail to
the National Arbitration Forum that the <epsonusa.com> domain name is
registered with Stargate Holdings Corp.
and that the Respondent is the current registrant of the name. Stargate
Holdings Corp. has verified that Respondent is bound by the Stargate Holdings Corp. 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 October 19, 2006, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of November 8, 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@epsonusa.com by e-mail.
A timely Response was received and determined to be complete on November 8, 2006.
On November 17, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Alan L. Limbury as Panelist.
An Additional Submission was submitted by
Complainant on November 20, 2006 (more than 5 calendar days after the Response)
and, being out of time under Supplemental Rule 7(a), was determined to be
deficient. Respondent submitted a Reply to Complainant’s Additional
Submission on November 23, 2006. Since the Complainant’s submission was out of
time, the Panel has considered neither of the additional submissions.
RELIEF SOUGHT
Complainant request that the domain name be transferred from Respondent
to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant contends that the disputed domain name is identical and/or
confusingly similar to the trademark and service mark EPSON, of which the first
Complainant (“Seiko Epson”) is the registrant in
the USA and elsewhere and which it has licensed to its subsidiary, the second
Complainant (“Epson America”). Complainant says it has used the mark for over
30 years and that it has not licensed the mark to Respondent nor otherwise
permitted registration by Respondent of the disputed domain name. Complainant contends that Respondent has no
rights nor any legitimate interest in the disputed domain name and that it was
registered and is being used in bad faith.
Complainant says that the disputed domain name leads
to a single page website that has a link to Action Office Supplies, Inc., an
office supply website which offers for sale products of companies who are
direct competitors of Complainant or who are selling products not authorized by
Complainant.
B. Respondent
Respondent does not contest Complainant’s rights in the mark EPSON nor
that the disputed domain name is identical and/or
confusingly similar to that mark. Respondent says Complainant has failed to
establish both absence of legitimacy and bad faith registration and use. It
says Complainant has a history of reverse domain name hijacking based on
previous NAF pleadings.
Respondent says it registered the disputed domain name for its sister
company, Action Office Supplies, Inc. It denies driving traffic to items that
are not Epson products, saying “we are authorized resellers of Epson Products
and our marketing plan was simply to use the name epsonusa.com to further our
sales of Epson products to our corporate and government customers”. Action
Office Supplies Inc. is a reseller of Epson Products and a preferred dealer
with S. P. Richards Company, one of
The disputed domain name had previously been held by Epson but was
never used and was allowed to expire prior to 2001. <Epsonusa.com>
was the perfect name for Respondent to reach its
Respondent’s project of building an e-commerce site specifically for
its Epson product line has not been completed but in the meantime, wishing to
avoid confusion with epson.com (the Epson corporate website), Respondent placed
a disclaimer on the epsonusa.com website and a link to cheapofficesupplies.com
informing customers to search at that
site for Epson products using the Epson product code EPS.
Only 5 people have called Respondent over the last 5 years having
confused Respondent with Epson.com. In terms of confusion, this is next to
nothing. Respondent does not pretend to be Epson and its website clearly states
that.
FINDINGS
Complainant has established the elements
necessary to entitle it to the relief it sought.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the Complainants 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 at
least one of Complainants has rights;
(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.
Seiko Epson has long established
rights in the distinctive mark EPSON through use and through numerous
Likewise, many cases have established that the
test of confusing similarity under the Policy is confined to a comparison of
the disputed domain name and the trademark alone, independent of the other
marketing and use factors, such as the "Sleekcraft factors" – AMF Inc. v. Sleekcraft Boats, 599 F.2d
341,346 (9th Cir. 1979), usually considered in trademark
infringement or unfair competition cases.
Accordingly, the content of a website is irrelevant to this question.
See BWT Brands, Inc. and British Am.Tobacco
(Brands), Inc v. NABR, D2001-1480 (WIPO
Mar. 26, 2002); Britannia Bldg.
Society v. Britannia Fraud Prevention, D2001‑0505
(WIPO Jul. 12, 2001); Wal-Mart
Stores, Inc. v. Richard MacLeod d/b/a For
Here the mark and the domain name are not identical even though the latter wholly incorporates the former.
The disputed
domain name is confusingly similar to the EPSON mark. The gTLD ‘.com’ is
inconsequential and the addition of the geographic identifier ‘
Complainants have established this element of
their case.
Respondent is not known by the domain name. It is
common ground that Complainant has not licensed the mark to Respondent nor
permitted registration by Respondent of the disputed domain name. In this regard, although allowing one’s
registration of a domain name to expire leaves it open to anyone else to
register it, that does not constitute permission to do so, such as to confer a
right upon or give rise to a legitimate interest in any such new registrant.
These circumstances are sufficient to constitute a prima facie showing by Complainant of absence of rights or legitimate interest in the disputed domain name on the part of Respondent. The evidentiary burden therefore shifts to Respondent to show by concrete evidence that it does have rights or legitimate interests in that name: Do The Hustle, LLC v. Tropic Web, D2000-0624 (Aug. 23, 2000)and the cases there cited.
Paragraph 4(c) of the Policy sets out, without limitation, circumstances which, if proved, establish the registrant’s rights to or legitimate interests in the disputed domain name. Respondent relies on the circumstances specified in sub-paragraph 4(c)(i):
“before any notice to you of the dispute,
your use of, or demonstrable preparations to use, the domain name or a name
corresponding to the domain name in connection with a bona fide offering of
goods or services;”
Even perfunctory preparations have been held to suffice for this purpose: Shirmax Retail Ltd. v. CES Mktg. Group, Inc., AF-0104 (eResolution Feb. 7, 2000); Lumena s-ka so.o. v. Express Ventures Ltd., FA94375 (Nat. Arb. Forum (Apr. 3, 2000) and Royal Bank of Canada v. Xross, AF-0133 (eResolution Feb. 24, 2000). On the other hand, use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or services; Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”, D2000-0847 (WIPO Oct. 16, 2000).
It
appears Respondent is not authorized by Complainant to resell Epson products but
rather lawfully acquires genuine Epson products both from a large wholesaler
having a supply contract with Complainant and through large buying groups.
Respondent resells them to users. A reseller of goods bearing another’s
trademark can be found to be making a bona fide offering of goods and services
and thus have a legitimate interest in the domain name if the use of the domain
name meets certain requirements, including the actual offering of goods and
services at issue and, more importantly in the present context, the use of the
website to sell only the trademarked goods: Oki
Data Ams, Inc. v. ASD, Inc., D2001-0903
(WIPO Nov. 6, 2001) and Experian Info.
Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002).
A panel may visit an internet site linked to the disputed domain name in order to obtain more information about the use of the domain name: See Société des Produits Nestlé SA v. Telmex Mgmt. Services, D2002-0070 (WIPO Apr. 2, 2002); Hesco Bastion Ltd. v. The Trading Force Limited, D2002-1038 (WIPO Dec. 31, 2002); Howard Jarvis Taxpayers Ass/n v. Paul McCauley, D2004-0014 (WIPO Apr. 22, 2004); Koninklijke Philips Elecs. N.V. v. Relson Ltd., D2001-0003 (WIPO Nov. 26, 2001); see also Terabeam Corp. v. Goldman, D2001-0697 (WIPO Aug. 24, 2001) and Kur- und Verkehrsverein St. Moritz v. StMoritz.com, D2000-0617 (WIPO Aug. 23, 2000).
The
Panel has visited the <cheapofficesupplies.com> website and found not
merely Complainant’s products offered for sale but those of Complainant’s
competitors also. Using a domain name which is confusingly similar to a
trademark in order to attract customers who are seeking the trademark owner’s
products to a site offering also those of its competitors, even with guidance
as to where the trademark owner’s products may be found, does not fall within
the criteria under which a reseller may be said to be making a bona fide
offering of goods or services and thereby demonstrate a legitimate interest in
the domain name.
Neither
does Respondent’s activity constitute fair use for the purposes of paragraph
4(c)(iii) of the Policy.
Accordingly
Complainants have established this element of their case.
Registration and Use in Bad Faith
Respondent clearly had Complainants and the
EPSON mark in mind when registering the then lapsed
disputed domain name. The only uses of the domain name that have been
established are first to lead to the <epsonusa.com> website, a
single page which begins with a fine print disclaimer and is followed with a
welcome, in much larger type, to Action Office Supplies, and a large logo,
followed by the statement: “We carry the
Epson Product Line” and “…We carry items by all the manufacturers you see
below”. Clicking the link below produces, so far as is apparent to the Panel,
content unrelated to Complainant’s products.
The second use has been to provide a link to the
<cheapofficesupplies.com> website, where competitors’ products, as well
as those of Complainant, are offered for sale.
The disclaimer is easy to overlook since the
welcome and the AOS logo attract the user’s attention. Even if read, the
disclaimer is equivocal. It says, among other things, ‘Nothing on this site is
to be construed as an endorsement by any manufacturer unless explicitly
identified, for this site or for any information here’. It denies ‘direct’
affiliation with Epson
The numerous references to Epson products
both in the disclaimer itself and in the text below could well reassure anyone
who bothered to read the disclaimer that Epson, of all manufacturers, being
explicitly identified, does endorse the site. No other manufacturers are
explicitly identified. Given that users would have entered the domain name
epsonusa.com into their computers before reaching the site, the language of the
disclaimer and the references to Epson and only Epson by name could well
reinforce their expectation, derived from the domain name, that the site is an
Epson-endorsed or approved site.
Accordingly the Panel finds that Respondent,
by using the domain name <epsonusa.com>, has intentionally
attempted to attract, for commercial gain, Internet users to its website by
creating the likelihood of confusion with Complainant’s mark as to the
endorsement of its website. This is evidence of both bad faith registration and
bad faith use, pursuant to paragraph 4(b)(iv) of the
Policy.
Complainant has established this element of
their case.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonusa.com> domain name be TRANSFERRED
from Respondent to Complainant Epson America Inc., unless, within 10 days of
being notified of this decision, Complainants jointly notify the National
Arbitration Forum and the Registrar that they would prefer the domain name to
be transferred to Complainant Seiko Epson Corporation, in which case it is
Ordered that the <epsonusa.com>
domain name be transferred to Seiko Epson Corporation.
Alan L. Limbury, Panelist
Dated: November 27, 2006.
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