Seiko Epson Corporation and Epson America Inc. v. Howard Morales
Claim Number: FA0711001111729
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
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <epsonality.tv>, <epsonality.net>, and <epsonality.org>, registered with GoDaddy Software, 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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 5, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 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, email@example.com, and firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names are confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names.
3. Respondent registered and used the <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, is a multinational manufacturer of and leader in the design, the production, and distribution of high technology products including printers, scanners, digital cameras, and video projectors. Complainant, Epson America Inc., is the North and Latin American sales, marketing, and customer service subsidiary of Complainant, Seiko Epson Corporation. Complainant, Seiko Epson Corporation, owns several trademark registrations worldwide including a trademark registration for the ESPON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980). Complainant, Epson America Inc., is a licensee of the EPSON mark from Complainant, Seiko Epson Corporation (hereinafter collectively referred to as “Complainant”).
Additionally, Complainant recently launched an advertising campaign featuring the term “epsonality.” The launch of the “epsonality” advertising campaign is a marketing strategy designed to help customers match their “unique printing needs with Complainant’s equally unique printing products.” In association with its new marketing campaign, Complainant registered the <epsonality.com> domain name on May 29, 2007.
Respondent registered each if the <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names on August 3, 2007. Respondent’s disputed domain names resolve to websites featuring links to printing parts and accessory websites as well as other unrelated categories such as travel, real estate, and insurance.
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 registration and continuous use of
the EPSON mark sufficiently establishes its rights pursuant to Policy ¶ 4(a)(i). See Vivendi
Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Complainant contends that Respondent’s <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names are confusingly similar to Complainant’s mark. Respondent’s disputed domain names contain Complainant’s EPSON mark in its entirety, adds the letters “ality,” along with either the generic top-level domains “.net” or “.org” or the country-code top-level domain “.tv.” Moreover, Complainant has recently launched a new marketing campaign centering on the term “epsonality.” The Panel finds that neither the addition of the letters “ality,” an addition that aligns itself with Complainant’s recently launched marketing campaign, nor the addition of a top-level domain sufficiently distinguishes Respondent’s domain names from Complainant’s mark for purposes of Policy ¶ 4(a)(i). See 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); see also PG&E Corp. v. Anderson, D2000-1264 (WIPO Nov. 22, 2000) (finding that “Respondent does not by adding the common descriptive or generic terms ‘corp’, ‘corporation’ and ‘2000’ following ‘PGE’, create new or different marks in which it has rights or legitimate interests, nor does it alter the underlying [PG&E] mark held by Complainant”); 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).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names. In instances such as this, where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain names. See 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”).
Complainant contends that Respondent is using the <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names to operate websites containing various sponsored links to websites featuring competing printing related products. The Panel infers from Respondent’s use of the disputed domain names that it is collecting click-through fees for each Internet user redirected to competing commercial websites. The Panel finds that Respondent’s operation of websites for the purpose of collecting click-through fees 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 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
Moreover, Respondent has submitted no evidence that it is
either commonly known by the disputed domain names or authorized to register
domain names featuring Complainant’s mark.
In the absence of such evidence, the Panel finds that Respondent has not
established rights or legitimate interests pursuant to Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names to operate websites that provide Internet users with links to various websites that offer competing printing products. The Panel finds that Respondent’s use of the disputed domain names constitute a disruption of Complainant’s business and shows bad faith pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); 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).
Furthermore, Respondent’s use of the <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names will likely cause confusion as to Complainant’s sponsorship of and affiliation with the resulting websites. The Panel finds that use of confusingly similar domain names for Respondent’s own commercial gain is additional evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
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 <epsonality.tv>, <epsonality.net>, and <epsonality.org> domain names be TRANSFERRED from Respondent to Complainant.
Dated: January 16, 2008
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