Seiko Epson Corporation and Epson America, Inc. v. AGA Strategies LLC c/o AGA Strategies
Claim Number: FA0702000910873
Complainant is Seiko Epson Corporation and Epson
America, Inc. (“Complainant”),
represented by R. Parrish Freeman, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt
Lake City, UT 84111. Respondent
is AGA
Strategies LLC c/o AGA Strategies (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epson-inkjet-cartridges-refills.com>, registered with Enom, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On February 13, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 5, 2007 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@epson-inkjet-cartridges-refills.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <epson-inkjet-cartridges-refills.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epson-inkjet-cartridges-refills.com> domain name.
3. Respondent registered and used the <epson-inkjet-cartridges-refills.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation and Epson America, Inc., is a worldwide leader in the production, design and distribution of high technology products. In connection with the provision of these services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”) including the EPSON mark (Reg. No. 1,134,004 issued April 29, 1980).
Respondent registered the disputed domain name on
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 asserts rights in the EPSON mark through
registration of the mark with the USPTO.
The Panel finds that Complainant’s timely registration and subsequent
extensive use of the EPSON mark for over twenty-five years is sufficient to
establish rights in the mark pursuant to Policy ¶ 4(a)(i). See
Complainant further alleges that
Respondent’s <epson-inkjet-cartridges-refills.com>
domain name is confusingly similar to Complainant’s EPSON mark. The disputed domain name contains
Complainant’s mark in its entirety and adds three hyphens, the words “inkjet,”
“cartridges,” and “refills,” all descriptive terms that obviously relate to
Complainant’s business, and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a series
of hyphens, descriptive words that obviously describe Complainant’s business
and a gTLD is insufficient to distinguish the domain name from the mark
pursuant to Policy ¶ 4(a)(i). See Health
Devices Corp. v.
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
In scenarios where Complainant has made a prima facie case that provides support
for its allegations, the burden shifts to Respondent to set forth concrete
evidence indicating that it does have rights or legitimate interests pursuant
to Policy ¶ 4(a)(ii). See Compagnie
Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376
(WIPO
Respondent’s disputed domain name currently resolves to a website featuring Respondent’s non-competing products as well as links to other websites featuring non-competing products. The Panel finds that Respondent’s diversionary use of the disputed domain name is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Complainant contends that its EPSON mark is an invented word
and that Respondent could not contend that it is either commonly known by or
identified with the disputed domain name.
A review of Respondent’s WHOIS registration information reveals that the
registrant of the <epson-inkjet-cartridges-refills.com>
domain name is “Whois Privacy Protection Service, Inc.” In lieu of any evidence suggesting an
alternative conclusion, the Panel finds that Respondent is not commonly known
by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is currently using its disputed domain name to
resolve to its own website featuring Respondent’s products, with the obvious
intent of procuring financial remuneration, as well as offering links to
third-party commercial websites that do not compete with Complainant’s
business. The Panel finds that
Respondent’s current use of the disputed domain name amounts to an attraction
for commercial gain and evinces bad faith registration and use pursuant to
Policy ¶ 4(b)(iv). See Bank of Am. Corp. v.
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 <epson-inkjet-cartridges-refills.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 12, 2007
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