Seiko Epson Corporation and Epson America Inc. v. Eddie Estrada
Claim Number: FA0711001112609
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
is Eddie Estrada
(“Respondent”), 6913 Crown Ridge,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonpestcontrol.com>, registered with Godaddy.com, 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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 21, 2007; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2007.
On November 26, 2007, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsonpestcontrol.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. 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 November 27, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 17, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On December 22, 2007, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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:
Complainant has used the EPSON trademark and service mark in the United States, Canada and around the world for more than 30 years, and has invested substantially in the trademark and service mark associated with the goods and services marketed under the EPSON brand name.
Complainant registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004, issued April 29, 1980).
Complainant has built up considerable goodwill in the minds of consumers in connection with the EPSON trademarks and service marks.
Respondent registered the <epsonpestcontrol.com> domain name on January 20, 2007.
The disputed domain name currently resolves to a website having links to websites offering products that compete in the marketplace with those offered by Complainant.
Respondent’s <epsonpestcontrol.com> domain name is confusingly similar to Complainant’s EPSON mark.
Respondent does not have any rights or legitimate interests in the domain name <epsonpestcontrol.com>.
Respondent registered and uses the <epsonpestcontrol.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is 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 same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has registered the EPSON
mark with the USPTO. It has therefore established
rights to the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v.
XBNetVentures Inc., FA 198803 (Nat. Arb. Forum
Complainant contends, and Respondent does not deny, that the <epsonpestcontrol.com> domain name is confusingly similar to the EPSON mark. Although the question is a close one in light of Complainant’s well-known line of business as compared with the suggested business line of the domain name, we agree with Complainant’s contention because Complainant’s entire mark appears in the prominent first position in Respondent’s domain name, and because the mark is indisputably famous worldwide, and because (as discussed under the heading of rights and interests below) Respondent evidently uses the domain name to attract commercial traffic in competition with the business of Complainant.
In short, Respondent’s addition of the generic terms “pest”
and “control” are insufficient to distinguish the disputed domain name from the
registered mark. In addition, because all domain names are required to have a
top-level domain, Respondent’s use of the generic top-level domain (“gTLD”)
“.com” does not distinguish the disputed domain name from Complainant’s
registered mark. Therefore, we conclude that
the domain name is confusingly similar to
Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i). See Arthur
Guinness Son & Co. (
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 therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant asserts that Respondent lacks rights and legitimate interests in the <epsonpestcontrol.com> domain name. Complainant has the burden of proof for this allegation pursuant to Policy ¶ 4(a)(ii). Upon a prima facie showing by Complainant, the burden of proof shifts to Respondent. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain name, it is incumbent on that respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right or legitimate interest in a contested domain name is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Complainant has met its burden. And Respondent’s failure to respond to the Complaint allows us to presume that Respondent has no rights or legitimate interests in the <epsonpestcontrol.com> domain name. See 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.” See also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000):
Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.
Nonetheless, we will examine the record to determine if there is any basis for concluding that Respondent has legitimate rights or interests in the contested domain name under Policy ¶ 4(c).
In this connection, we first take cognizance of the fact
that the record contains nothing to suggest that Respondent is commonly known
by the disputed domain name within the meaning of Policy ¶ 4(c)(ii). Moreover, the pertinent WHOIS information contains no
evidence that Respondent is commonly known by the <epsonpestcontrol.com>
domain name. And there is no
suggestion in the record that Respondent is licensed or authorized to use the EPSON mark. We therefore conclude
that Respondent has no rights or legitimate interests to the disputed domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10,
2003) (stating that the fact that “nothing in Respondent’s WHOIS information
implies that Respondent is ‘commonly known by’ the disputed domain name” is a
factor in determining that Policy ¶ 4(c)(ii) does not
apply); see also Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum
In addition, we observe that there is no dispute as to Complainant’s allegation to the effect that Respondent is using the <epsonpestcontrol.com> domain name to resolve to a website having links to other websites offering products that compete in the marketplace with those offered by Complainant. Such use is not 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 DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002): “Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.” See also Ameritrade Holdings Corp. v. Polanski, FA 102715 (Nat. Arb. Forum Jan. 11, 2002) (finding that a respondent’s use of a disputed domain name to redirect Internet users to a financial services website, which competed with the business of a complainant, was not a bona fide offering of goods or services).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s undenied use of the <epsonpestcontrol.com> domain name to offer links to goods and services competing with the business of Complainant is evidence of bad faith as contemplated in the Policy. The use of the EPSON mark in the disputed domain name is likely to create confusion as to the possibility that Complainant is the source, sponsor, affiliate or endorser of the website that resolves from the disputed domain name. Therefore, Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where a respondent’s domain name resolved to a website carrying links to third-party websites that offered services similar to those of a complainant’s).
In addition, it appears that Respondent registered the <epsonpestcontrol.com> domain name with at least constructive knowledge of Complainant’s rights in the EPSON trademark by virtue of Complainant’s prior registration of that mark with the United States Patent and Trademark Office. Registration of a confusingly similar domain name despite such constructive knowledge is, without more, evidence of bad faith registration and use of the domain name pursuant to Policy ¶ 4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002); see also Orange Glo Int’l v. Blume, FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
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 <epsonpestcontrol.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 7, 2008
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