Seiko Epson Corporation and Epson America, Inc. v.
G'Mel
Claim Number: FA0706001008563
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 G'Mel
Enterprise c/o George Gozah (“Respondent”), 3 Ridge Run S.E.#G,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsonlinestore.com>, registered with Direct Information Pvt Ltd d/b/a Publicdomainregistry.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.
Louis E. Condon as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2007; the National Arbitration Forum received a hard copy of the Complaint on June 15, 2007.
On
On June 20, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 10, 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@epsonlinestore.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 <epsonlinestore.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonlinestore.com> domain name.
3. Respondent registered and used the <epsonlinestore.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Seiko Epson Corp. and its subsidiary Epson America, Inc., are a multinational corporation that designs, manufactures, and distributes a variety of high technology products. The Panel will hereinafter refer to both parties collectively as “Complainant.” Complainant has conducted business under the EPSON mark for over 30 years and currently offers its products online at the <epson.com> domain name. Complaint holds several trademark and service mark registrations with the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (Reg. No. 1,134,004 issued April 29, 1980).
Respondent registered the <epsonlinestore.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.
Complainant’s registration of the EPSON mark with the USPTO sufficiently establishes its rights in the mark under Policy ¶ 4(a)(i). See 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.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) ("Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive.").
Respondent’s <epsonlinestore.com>
domain name is confusingly similar to Complainant’s EPSON mark, as it fully
incorporates the mark, simply adding the generic terms “line” and “store” onto
the mark. Previous panels have held, and
this Panel so holds, that the addition of generic or descriptive terms to an
established mark does not negate any confusing similarity between a mark and an
infringing domain name. Moreover, the
addition of the generic top-level domain “.com” is irrelevant to the Policy ¶
4(a)(i) analysis, as a top-level domain is a required
element of all domain names. Therefore,
the Panel finds that Respondent’s <epsonlinestore.com>
domain name is confusingly similar to Complainant’s EPSON mark pursuant to
Policy ¶ 4(a)(i).
See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec.
9, 2000) (finding that “[n]either the addition of an ordinary descriptive
word . . . nor the suffix ‘.com’ detract from the overall
impression of the dominant part of the name in each case, namely the trademark
SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son
& Co. (
The Panel thus finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant has the initial burden of proving that Respondent lacks rights or legitimate interests in the <epsonlinestore.com> domain name under Policy ¶ 4(a)(ii). Once Complainant has made a prima facie case, however, the burden shifts to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. In the instant case, the Panel finds that Complainant has established a prima facie case under the Policy. See 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 has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent’s failure to answer the Complaint raises the
presumption that Respondent lacks rights or legitimate interests in the
disputed domain name. See G.D.
Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum
Respondent’s WHOIS information
does not indicate, and there is nothing further in the record to suggest, that
Respondent is commonly known by the <epsonlinestore.com>
domain name. In addition, Respondent
is not authorized or licensed by Complainant to use the EPSON mark for any
purpose. Thus, Respondent lacks rights
or legitimate interests in the disputed domain name under Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum
Respondent’s <epsonlinestore.com> domain name resolves to a website that features various electronic products for sale, which are in direct competition with Complainant’s products. The Panel presumes that Respondent accrues some commercial benefit when Internet users purchase products from this website. This does not qualify as 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 Toronto-Dominion Bank v. Karpachev, 188 F.Supp.2d 110, 114 (D. Mass. 2002) (finding that, because the respondent's sole purpose in selecting the domain names was to cause confusion with the complainant's website and marks, its use of the names was not in connection with the offering of goods or services or any other fair use); see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) (finding no rights or legitimate interests in the famous MSNBC mark where the respondent attempted to profit using the complainant’s mark by redirecting Internet traffic to its own website).
The Panel thus finds that Policy ¶ 4(a)(ii)
has been satisfied.
Respondent is using the <epsonlinestore.com>
domain name to redirect Internet users to a website featuring products in
direct competition with Complainant.
This constitutes a disruption of Complainant’s business and qualifies as
bad faith registration and use under Policy ¶ 4(b)(iii). See S.
Exposure v. S. Exposure, Inc., FA 94864 (Nat.
Arb. Forum
The Panel presumes that Respondent benefits commercially
when consumers purchase products from the website that resolves from the <epsonlinestore.com> domain
name. Respondent is therefore
capitalizing on the likelihood that consumers will confuse the source of the
disputed domain name as being affiliated with Complainant. This is further evidence of bad faith
registration and use under Policy ¶ 4(b)(iv). See Amazon.com,
Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain
name at issue in direct competition with Complainant, and giving the impression
of being affiliated with or sponsored by Complainant, this circumstance
qualifies as bad faith registration and use of the domain name pursuant to
Policy ¶ 4(b)(iv).”); see also Am. Univ. v. Cook, FA 208629
(Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that
incorporates another's mark with the intent to deceive Internet users in regard
to the source or affiliation of the domain name is evidence of bad faith.”).
The Panel thus finds that Policy ¶
4(a)(iii) has been satisfied.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief should be GRANTED.
Accordingly, it is Ordered that the <epsonlinestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Louis E. Condon, Panelist
Dated: July 17, 2007
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