Seiko Epson Corporation and Epson America Inc. v.
Davood K Golshirazian
Claim Number: FA0806001212769
Complainant is Seiko Epson Corporation and Epson America Inc. (“Complainant”), represented by R.
Parrish Freeman, of Workman Nydegger,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <buyepsondirect.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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 electronically on June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 27, 2008.
On June 27, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide, confirmed by e-mail to the National Arbitration Forum that the <buyepsondirect.com> domain name is registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide, and that Respondent is the current registrant of the name. Melbourne It, Ltd. d/b/a Internet Names Worldwide, has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide, 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
30, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of July
21, 2008
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@buyepsondirect.com by
e-mail.
On July 16, 2008, the National Arbitration Forum received a “Joint Request to Stay the Administrative Proceeding.” On July 16, 2008, the National Arbitration Forum granted this Request pursuant to Supplemental Rule 6(b)(i), and the Administrative Proceeding was stayed for a period of forty-five (45) days until August 29, 2008.
On August 29, 2008, Complainant filed a “Request to Remove the Stay of Administrative Proceeding and Reinstate the Complaint” pursuant to Supplemental Rule 6(b)(ii). On August 29, 2008, the National Arbitration Forum granted Complainant’s Request and removed the Stay. Since the Stay was originally granted during the Response period, the new deadline by which Respondent could file a Response to the Complaint was set as September 3, 2008.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 14, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <buyepsondirect.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <buyepsondirect.com> domain name.
3. Respondent registered and used the <buyepsondirect.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Seiko Epson Corporation is a multinational manufacturer,
producer, and distributor of high technology products, including printers,
scanners, digital cameras, and video projectors. Epson America, Inc. is the North and Latin American
sales, marketing, and customer service subsidiary of Seiko Epson
Corporation. These two entities will
hereinafter be collectively referred to as “Complainant.” Complainant has been using
the mark in the
Respondent, Davood K Golshirazian, registered the <buyepsondirect.com> domain name on January 27, 2008. Respondent is using the disputed domain name to sell printers and other electronic products that are primarily manufactured by Complainant’s competitors.
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 by virtue of its trademark registrations with the USPTO. The Panel recognizes previous panel decisions that have recognized Complainant’s rights in the EPSON mark on this basis. See, e.g., Seiko Epson Corp. & Epson Am., Inc. v. AOS Web Com, Inc., FA 823033 (Nat. Arb. Forum Nov. 27, 2006) (“Seiko Epson has long established rights in the distinctive mark EPSON through use and through numerous United States and other trademark and service mark registrations.”). Therefore, the Panel concludes that Complainant has rights in the EPSON mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <buyepsondirect.com> domain name contains Complainant’s EPSON mark in its entirety, but adds the generic words “buy” and “direct” along with the generic top-level domain (“gTLD”) “.com.” The fame of Complainant’s EPSON mark among consumers makes the mark the dominant portion of the disputed domain name, and the generic words do not add any distinguishing features. The Panel also notes that gTLDs are irrelevant under the Policy since they are required by all domain names. As a result, the Panel holds that Respondent’s <buyepsondirect.com> domain name is confusingly similar to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i). See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to the complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Gen. Elec. Co. v. Forddirect.com, Inc., D2000-0394 (WIPO June 22, 2000) (finding that adding the generic term “direct” on to the complainant’s marks (GE CAPTIAL and GECAL) does not alter the underlying mark held by the complainant, and thus the respondent’s domain names are confusingly similar); 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).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <buyepsondirect.com> domain name. Once Complainant makes a prima facie case in support of its allegations, the burden then shifts to Respondent to show it does have rights or legitimate interests under Policy ¶ 4(a)(ii). Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii). Despite the fact that Respondent has not responded to the Complaint, the Panel chooses to examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
According to Complainant, Respondent is not commonly known
by or identified by the <buyepsondirect.com>
domain name. Indeed, the EPSON mark is
identified with Complainant, and the WHOIS information identifying Respondent
as “Davood K Golshirazian” gives no indication of an affiliation of any
kind. Therefore, the Panel concludes
that Respondent is not commonly known by the <buyepsondirect.com>
domain name pursuant to Policy ¶ 4(c)(ii). See Coppertown
Drive-Thru Sys., LLC v.
Snowden, FA 715089
(Nat. Arb. Forum July 17, 2006) (concluding that the
respondent was not commonly known by the <coppertown.com> domain name
where there was no evidence in the record, including the WHOIS information,
suggesting that the respondent was commonly known by the disputed domain name); see also
Respondent’s <buyepsondirect.com> domain name redirects Internet users to a website offering various electronic products for sale. Many of these products were produced by Complainant’s competitors, such as Canon. Respondent presumably profits from the sale of these products, and is therefore financially benefiting from the use of Complainant’s EPSON mark in the disputed domain name. The Panel finds that this use of the <buyepsondirect.com> domain name constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶ 4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark); see also Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
The Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
The Panel finds that Respondent’s use of the <buyepsondirect.com> domain name is a clear case of disruption as contemplated by the Policy, and specifically by Policy ¶ 4(b)(iii). Respondent is selling products manufactured by competing companies that directly compete with Complainant’s business, and Respondent is attempting to lure Internet users into purchasing these competing products by using Complainant’s EPSON mark in the disputed domain name. These circumstances indicate bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
The Panel further finds that Respondent’s use of the <buyepsondirect.com> domain name is likely to cause confusion among customers as to the source, sponsorship, affiliation, or endorsement of the products advertised on Respondent’s resolving website. Respondent has created this likelihood of confusion for his own commercial gain, and is attempting to profit off the goodwill associated with Complainant’s prominent EPSON mark. The Panel therefore concludes that Respondent’s registration and use of the <buyepsondirect.com> domain name constitutes bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s AIM mark and the competing instant messaging products and services advertised on the respondent’s website that resolved from the disputed domain name); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
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 <buyepsondirect.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 29, 2008
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum