Seiko Epson Corporation and Epson America Inc. v. Whois Protection c/o Info Administrator
Claim Number: FA0706001006968
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 Whois
Protection c/o Info Administrator (“Respondent”), P.O. Box 322 WB,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonprinter.com>, registered with Rebel.com.
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 June 18, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 9, 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@epsonprinter.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 <epsonprinter.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonprinter.com> domain name.
3. Respondent registered and used the <epsonprinter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Seiko Epson Corporation and its
subsidiary, Epson America Inc. (collectively “Complainant”), is a multinational
manufacturer and distributor of high technology products, including
printers. Complainant has used the EPSON
mark around the world for over 30 years to market its printers and other
technological products. Complainant
holds numerous registered trademarks with the United States Patent and Trademark
Office (“USPTO”) for the EPSON mark (i.e., Reg. No. 1,134,004 issued
Respondent, Whois Protection,
registered the <epsonprinter.com> 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.
Generally speaking, registration of a mark with an
appropriate governmental authority confers rights in that mark to a
complainant. See Enter. Rent-A-Car
Co. v. David Mizer Enters., Inc., FA 622122
(Nat. Arb. Forum
Respondent’s <epsonprinter.com> domain name contains Complainant’s EPSON mark in its entirety, and adds the generic word “printer” as well as the generic top-level domain (“gTLD”) “.com.” The word “printer” has an obvious business relationship to Complainant since Complainant sells printers. Therefore, the addition of this term does not distinguish the disputed domain name from Complainant’s EPSON mark. Furthermore, a top-level domain is required of all domain names, so the addition of “.com” is without relevance to this analysis. Therefore, the Panel finds that Respondent’s <epsonprinter.com> domain name is confusingly similar to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent does not have rights or legitimate interests in the <epsonprinter.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). Since Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant has alleged that Respondent is not commonly known by the <epsonprinter.com> domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel concluded that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names. Furthermore, the complainant had not authorized the respondent to register a domain name containing its registered mark. Similarly, in Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007), the panel concluded that the respondent was not commonly known by the disputed domain name since there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information, as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name. Like the complainants in Braun Corp. and Reese, Complainant did not authorize Respondent to use its EPSON mark in a domain name. Furthermore, WHOIS information identifies Respondent as “Whois Protection,” and there is no other evidence in the record indicating that Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Complainant is not commonly known by the <epsonprinter.com> domain name pursuant to Policy ¶ 4(c)(ii).
Respondent is using the <epsonprinter.com>
domain name to display a list of hyperlinks, some of which lead to websites
selling printers manufactured and distributed by Complainant’s competitors. Respondent is using Complainant’s mark in the
disputed domain name, without authorization, for Respondent’s own benefit, and
such use does not constitute 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). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat.
Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary
use of the complainant’s marks to send Internet users to a website which
displayed a series of links, some of which linked to the complainant’s
competitors, was not a bona fide offering of goods or services); see also Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May
11, 2007) (finding that the respondent’s use of a confusingly similar domain
name to advertise real estate services which competed with the complainant’s
business did not constitute 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)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the <epsonprinter.com>
domain name to display a list of hyperlinks, some of which lead to websites
selling printers manufactured and distributed by Complainant’s
competitors. This is likely to disrupt
Complainant’s business by diverting business away from Complainant. Therefore, the Panel finds that Respondent’s
registration and use of the disputed domain name constitutes bad faith pursuant
to Policy ¶ 4(b)(iii).
See Tesco Pers. Fin. Ltd. v.
Domain Mgmt. Svcs.,
FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent
registered and used the disputed domain name in bad faith pursuant to Policy ¶
4(b)(iii) when the disputed domain name resolved to a website that displayed
commercial links to the websites of the complainant’s competitors); see also
Respondent’s <epsonprinter.com>
domain name, which is confusingly similar to Complainant’s EPSON
mark, is likely to cause confusion among customers searching for Complainant’s
products. Specifically, Complainant has
alleged that customers may become confused as to the affiliation or sponsorship
of the printers and printing supplies advertised by the links on Respondent’s
website. Respondent presumably receives
click-through fees for each misdirected Internet user, and is therefore
attempting to commercially benefit from this likelihood of confusion between
Respondent’s domain name and the goodwill associated with Complainant’s EPSON
mark. Therefore, the Panel finds that
Respondent’s registration and use of the <epsonprinter.com>
domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See
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 <epsonprinter.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 17, 2007
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