Seiko Epson Corporation and Epson America, Inc. v. Ali Mehdi Daya Trust Fund c/o Ali Mehdi Daya
Claim Number: FA0812001238282
Complainant is Seiko
Epson Corporation and Epson
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epson-printer-inks.com>, registered with Register.com, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically
On
On
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 14, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <epson-printer-inks.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent has no rights to or legitimate interests in the <epson-printer-inks.com> domain name.
3. Respondent registered and used the <epson-printer-inks.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Seiko Epson Corporation and Epson America, Inc.
(“Complainant”) was issued a trademark for the EPSON mark (Reg. No. 1,134,004)
by the United States Patent and Trademark Office (“USPTO”) on
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 will such inferences as the Panel 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
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name Respondent registered is identical to 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.
By registering the EPSON mark with the USPTO, Complainant
established rights in the mark pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP
Servs., FA 221171 (Nat. Arb. Forum
The <epson-printer-inks.com> domain name is
composed of Complainant’s EPSON mark followed by hyphens, the descriptive terms
“printer” and “inks,” and the generic top-level domain “.com.” The additions of the hyphens and the generic
top-level domain “.com” are irrelevant to an analysis under Policy ¶
4(a)(i). See Isleworth Land Co. v. Lost
in Space, SA, FA 117330 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(i).
Pursuant to Policy
¶ 4(a)(ii), Complainant must first establish a prima facie case that
Respondent has no rights or legitimate interests in the disputed domain
name. The Panel finds that Complainant’s
allegations make such a prima facie case and the burden shifts to
Respondent to show that it does indeed have rights to or legitimate interests
in the disputed domain name pursuant to the guidelines in Policy ¶ 4(c). When a Respondent fails to submit a response,
the Panel may presume that Respondent has no rights or legitimate interests in
the disputed domain name. See
Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l,
D2001-0376 (WIPO
Under Policy ¶ 4(c)(ii), if Respondent demonstrates it is
commonly known by the disputed domain name, then it will have demonstrated
rights or legitimate interests in said name.
The Panel finds no evidence in the record suggesting that Respondent is
commonly known by the <epson-printer-inks.com> domain name. Complainant asserts that Respondent has no
license or agreement with Complainant authorizing Respondent to use the EPSON
mark, and the WHOIS information identifies Respondent as “Ali Mehdi Daya Trust
Fund c/o Ali Mehdi Daya.” Thus, Respondent
has not established rights or legitimate interests in the disputed domain name
under Policy ¶ 4(c)(ii). See Tercent
Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum
Respondent may also prove it has rights or legitimate
interests in the disputed domain name by showing it is being used in connection
with 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). The <epson-printer-inks.com>
domain name is being used to redirect Internet users to the website resolving
from the <clickinks.com> domain name, which offers discounts on printer
ink cartridges, including those for printers produced by Complainant. The Panel finds that the offering of
Complainant’s goods or competitive goods without Complainant’s consent does not
establish that Respondent has any rights or legitimate interests in the
disputed domain name pursuant to Policy ¶¶ 4(c)(i) or (iii). See Nike, Inc. v. Dias, FA 135016
(Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent is using the <epson-printer-inks.com>
domain name to redirect Internet users to a website resolving from another
domain name that sells Complainant’s products and products of Complainant’s
competitors. The Panel finds that
Respondent is using the disputed domain name to divert Internet users, who are
seeking Complainant’s products, thereby disrupting Complainant’s business. This is evidence to support findings of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See
Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum
Since the <epson-printer-inks.com> domain name
is confusingly similar to Complainant’s mark and resolves to a website selling
printer cartridges, Internet users may become confused as to Complainant’s
sponsorship or affiliation with the site.
Respondent is seeking to profit from this confusion. The Panel finds that this evidence also
supports findings of of bad faith registration and use pursuant to Policy ¶
4(b)(iv). See Computerized Sec. Sys.,
Inc. v. Hu, FA 157321 (Nat. Arb. Forum
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epson-printer-inks.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: January 28, 2009.
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