Seiko Epson Corporation and Epson America Inc. v. Jacob Aboud
Claim Number: FA0710001092824
Complainant is 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
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonchipresetters.com>, registered with Godaddy.com.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum
On October 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 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 firstname.lastname@example.org by e-mail.
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant contends that the <epsonchipresetters.com> domain name is confusingly similar to Complainant’s mark; that Respondent does not have any rights or legitimate interests in the <epsonchipresetters.com> domain name; and that Respondent registered and used the <epsonchipresetters.com> domain name in bad faith.
Respondent contends that the domain name at issue is not identical and/or confusingly similar to Complainant’s mark; that Respondent has rights and legitimate interests in the domain name at issue; and that the domain name at issue was not registered in bad faith.
C. Additional Submissions
In its Additional Submission, Complainant restates and reinforces the contentions set forth in the original Complaint.
Respondent reiterates its position as stated in its Response.
Complainants are a multinational manufacturer of high technology products, including printers and supplies, including ink cartridges. Complainants registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980).
Respondent has not provided any evidence of its business operations.
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 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 its
rights in the EPSON mark pursuant to Policy ¶ 4(a)(i)
through registration with the United States Patent and Trademark Office
(“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980). Complainant has submitted evidence sufficient
to establish rights in the EPSON mark for purposes of Policy ¶ 4(a)(i). See
The domain name at issue, <epsonchipresetters.com>, is confusingly similar to Complainant’s EPSON mark as it contains Complainant’s EPSON mark in its entirety and adds the generic terms “chips” and “resetters.” The addition of generic terms and the generic top-level domain “.com” is an insufficient means of distinguishing a disputed domain name from an established mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also 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 Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar).
It appears from the evidence presented that Respondent is using the <epsonchipresetters.com> domain name to operate a website featuring links to other various commercial websites, some of which offer products in competition with those offered by Complainant. This “click-through” use of the domain name at issue would not be construed 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 ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which 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 also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that were a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites 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 pursuant to Policy ¶ 4(c)(iii)).
No evidence has been presented to indicate that Respondent is commonly known by the <epsonchipresetters.com> domain name or is licensed to register a domain name featuring the EPSON mark. Respondent has failed to sufficiently establish that it is commonly known by the <epsonchipresetters.com> domain name and as a result, has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).
Registration and Use in Bad Faith
A review of the evidence presented reveals that Respondent is using the domain name at issue to operate a website that provides links to various websites offering products that compete with Complainant’s business. Such use of the domain name at issue constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites).
Moreover, Respondent’s manner of use of the domain name at issue is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. This is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonchipresetters.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
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