Seiko Epson Corporation and Epson America, Inc. v. Digi Real Estate Foundation
Claim Number: FA0706001007976
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 Digi
Real Estate Foundation (“Respondent”),
P.O. Box 7-5324,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsoninkcartridgerefill.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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 13, 2007.
On June 13, 2007, Rebel.com confirmed by e-mail to the National Arbitration Forum that the <epsoninkcartridgerefill.com> domain name is registered with Rebel.com and that Respondent is the current registrant of the name. Rebel.com has verified that Respondent is bound by the Rebel.com 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 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@epsoninkcartridgerefill.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 12, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <epsoninkcartridgerefill.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsoninkcartridgerefill.com> domain name.
3. Respondent registered and used the <epsoninkcartridgerefill.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, hold several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (e.g., Reg. No. 1,134,004 issued April 29, 1980 and Reg. No. 1,917,610 issued September 12, 1995). Complainant has used the EPSON mark in connection with the manufacture, design, distribution, marketing and sale of various technology products, including printers, scanners, digital cameras, and video projectors. In addition, Complainant specifically uses the EPSON mark to sell supplies for these products, including replacement ink cartridges.
Respondent registered the <epsoninkcartridgerefill.com> domain name on June 12, 2006. Respondent is using the disputed domain name to display links to third-party websites offering goods and services in competition with those goods and services offered by Complainant under the EPSON mark. Additionally, Respondent has been involved as the respondent in thirty-five other domain name disputes, including Robert Half International Inc. & Robert Half Inc. v. Digi Real Estate Foundation, FA 360817 (Nat. Arb. Forum Dec. 30, 2004), State Farm Mutual Automobile Insurance Co. v. Digi Real Estate Foundation, FA 366186 (Nat. Arb. Forum Jan. 20, 2005) and Citigroup Inc. v. Digi Real Estate Foundation, FA 964679 (Nat. Arb. Forum May 30, 2007). In all of these cases the disputed domain names were transferred from Respondent to the respective complainants involved in those cases.
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 under Policy ¶ 4(a)(i) through registration of the mark with the USPTO. See UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (holding that where the complainant had several trademark registrations with the USPTO, “[t]he Panel had no difficulty in finding that Complainant has established rights in the marks for purposes of Policy ¶ 4(a)(i).”); 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 <epsoninkcartridgerefill.com> domain name is confusingly similar to Complainant’s EPSON mark as it uses the mark in its entirety and simply adds the descriptive phrase “ink cartridge refill” and the generic top-level domain (“gTLD”) “.com” to the mark. First, the Panel finds that the addition of the phrase “ink cartridge refill” does not sufficiently distinguish the disputed domain name from the EPSON mark as it describes Complainant’s business, specifically the products it sells under the EPSON mark. Therefore, the Panel finds that Respondent’s addition of the phrase “ink cartridge refill” does not negate a finding of confusing similarity under Policy ¶ 4(a)(i). See Parfums Christian Dior v. 1 Netpower, Inc., D2000-0022 (WIPO Mar. 3, 2000) (finding that four domain names that added the descriptive words "fashion" or "cosmetics" after the trademark were confusingly similar to the trademark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business).
Additionally, the Panel holds, as other panels have held, that the addition of a gTLD is irrelevant to determining whether the disputed domain name is confusingly similar to Complainant’s mark. See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is…without legal significance since use of a gTLD is required of domain name registrants…."); 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 contends that Respondent does not have rights or legitimate interests in the <epsoninkcartridgerefill.com> domain name. Complainant’s submission establishes a prima facie case, which shifts the burden to Respondent to show that it has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”).
The Panel may assume that Respondent does not have rights or
legitimate interests here because Respondent failed to respond to the
Complaint. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on
Respondent's failure to respond, it is presumed that Respondent lacks all
rights and legitimate interests in the disputed domain name.”). However, the Panel will consider all
available evidence before determining whether Respondent has rights or
legitimate interests in the domain name under Policy ¶ 4(c).
Respondent is using the <epsoninkcartridgerefill.com> domain name to redirect Internet users to Respondent’s website displaying links to competing third-party websites. The Panel finds that Respondent’s use of the disputed domain name to display links to websites that compete with Complainant is not a use in connection with 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 Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this 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 or fair use under Policy ¶ 4(c)(iii).”); see also 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).
Additionally, Respondent offers no evidence and no evidence is present in the record to indicate that Respondent is commonly known by the <epsoninkcartridgerefill.com> domain name. Respondent’s WHOIS information identifies Respondent as “Digi Real Estate Foundation.” Therefore, the Panel finds that Respondent has failed to establish rights or legitimate interests in the <epsoninkcartridgerefill.com> domain name under Policy ¶ 4(c)(ii). See 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.”); see also 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).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent has registered and is using the <epsoninkcartridgerefill.com> domain name, which is confusingly similar to Complainant’s EPSON mark, to redirect Internet users to Respondent’s website, which displays links to websites that offer competing goods and services to those sold by Complainant under the EPSON mark. The Panel finds that Respondent’s use of a domain name that displays websites competing with Complainant constitutes disruption under Policy ¶ 4(b)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that respondent’s use of the disputed domain name to display links to services in competition with Complainant constituted disruption under Policy ¶ 4(b)(iii)); see also American Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
Additionally, Respondent is using the <epsoninkcartridgerefill.com> domain name to redirect Internet users to Respondent’s website for the assumed profit of Respondent. The Panel finds that Internet users seeking Complainant’s products may become confused as to Complainant’s affiliation with the disputed domain name. Presumably, Respondent is profiting from this confusion. The Panel finds that such use by Respondent is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant); see also AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Complainant offers evidence to indicate that
Respondent has registered thirty-five other domain names incorporating famous
marks, all of which were transferred from Respondent to the complainant in each
case. See, e.g., Robert Half
Int’l Inc. & Robert Half Inc. v. Digi Real Estate Found., FA 360817
(Nat. Arb. Forum Dec. 30, 2004); State Farm Mut. Auto. Ins. Co. v. Digi Real
Estate Found., FA 366186 (Nat. Arb. Forum Jan. 20, 2005); Citigroup Inc.
v. Digi Real Estate Found., FA 964679 (Nat. Arb. Forum May 30, 2007). The Panel finds that Respondent’s pattern of
registering domain names incorporating well-known trademarks is evidence of bad
faith registration and use under Policy ¶ 4(b)(ii). See Sony
Kabushiki Kaisha v. Anderson, FA 198809
(Nat. Arb. Forum Nov. 20, 2003) (finding a pattern of registering domain names
in bad faith pursuant to Policy ¶ 4(b)(ii) when the respondent previously
registered domain names incorporating well-known third party trademarks); see
also Société Air France v. Mert, D2004-0759 (WIPO Dec. 3,
2004) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii)
where the complainant provided evidence of a pattern
of registration of “numerous other domain names” by the respondent).
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 <epsoninkcartridgerefill.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: July 24, 2007
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