Seiko Epson Corporation and Epson America Inc. v. FABV LLC c/o DNS Admin
Claim Number: FA0907001272451
Complainants are Seiko
Epson Corporation and Epson America
Inc. (“Complainants”), represented by James
B. Belshe, of Workman Nydegger, Utah, USA. Respondent is FABV LLC c/o DNS Admin (“Respondent”),
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsons.net>, registered with Weregisterit.ca.
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.
Sandra J. Franklin as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on July 7, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 8, 2009.
On July 8, 2009, Weregisterit.ca confirmed by e-mail to the National Arbitration Forum that the <epsons.net> domain name is registered with Weregisterit.ca and that Respondent is the current registrant of the name. Weregisterit.ca has verified that Respondent is bound by the Weregisterit.ca 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 July 13, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 3, 2009 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@epsons.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2009, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainants request that the domain name be transferred from Respondent to Complainants.
A. Complainants make the following assertions:
1. Respondent’s <epsons.net> domain name is confusingly similar to Complainants’ EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsons.net> domain name.
3. Respondent registered and used the <epsons.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainants, Seiko Epson Corporation and Epson America Inc., utilize the EPSON mark in connection with printers and related accessories. Complainants have registered the EPSON mark numerous times with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,134,004 issued April 29, 1980).
Respondent registered the <epsons.net> domain name on July 16, 2008. The disputed domain name resolves to a website that displays links to third-party competitors and distributors of competitive products.
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 Complainants’ 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 Complainants 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.
The Panel finds that Complainants have sufficiently
demonstrated rights in the EPSON mark by submitting evidence of its registration
of the mark with the USPTO under Policy ¶ 4(a)(i). See
Expedia, Inc. v. Emmerson, FA 873346 (Nat. Arb. Forum Feb. 9, 2007)
(“Complainant’s trademark registrations with the USPTO adequately demonstrate
its rights in the [EXPEDIA] mark pursuant to Policy ¶ 4(a)(i).”); see also SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007)
(holding that “[t]his trademark registration [with the USPTO] establishes
Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s <epsons.net>
domain name contains Complainants’ EPSON mark while merely adding the letter
“s” and the generic top-level domain “.net.”
Prior UDRP precedent has found that such additions are insufficient or
irrelevant, respectively, in a Policy ¶ 4(a)(i) analysis. See
T.R. World Gym-IP, LLC v. D’Addio, FA 956501 (Nat. Arb. Forum May 22, 2007)
(finding that the addition of the letter “s” to a registered trademark in a
contested domain name is not enough to avoid a finding of confusing similarity
under Policy ¶ 4(a)(i)); 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). The Panel thus
finds that the disputed domain name is confusingly similar to Complainants’
mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainants have asserted that Respondent lacks rights and legitimate interests in the disputed domain name. Complainants must successfully assert a sufficient prima facie case supporting its allegations before Respondent receives the burden of demonstrating its rights or legitimate interests. The Panel finds that Complainants have met the burden, and therefore Respondent must demonstrate its rights or legitimate interests under Policy ¶ 4(c). See G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under certain circumstances, the mere assertion by the complainant that the respondent has no right or legitimate interest is sufficient to shift the burden of proof to the respondent to demonstrate that such a right or legitimate interest does exist).
Due to Respondent’s failure to respond to the Complaint, the
only evidence within the record relevant to a Policy ¶ 4(c)(ii) analysis is in
the WHOIS record and the Complaint. The
WHOIS information lists Respondent as “FABV LLC c/o DNS Admin,” and Complainants
have asserted that Respondent has no right or permission to use Complainants’
mark. Since there is no evidence to the
contrary, the Panel therefore finds that Respondent is not commonly known by
the disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v.
WORLDTRAVELERSONLINE.COM, FA
740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not
commonly known by the <cigaraficionada.com> domain name under Policy ¶
4(c)(ii) based on the WHOIS information and other evidence in the record); see also 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).
Respondent is using the disputed domain name to resolve to a
website that features links and advertisements to Complainants’ competitors as
well as distributors of competitive products.
Respondent is therefore diverting Internet users seeking Complainants’
products to competitive websites, presumably for click-through referral
fees. Such a use has routinely been
found to fail 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 Skyhawke
Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum
May 18, 2007) (“Respondent is using
the <skycaddy.com> domain name to display a list of hyperlinks,
some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed
domain name does not constitute 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 also ALPITOUR S.p.A. v.
balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that
“using the confusingly similar <viaggidea.com> domain name to operate a
website that features links to various commercial websites from which
Respondent presumably receives referral fees….is neither a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate
non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”). The Panel finds that Respondent has not
engendered rights or legitimate interests under either Policy ¶¶ 4(c)(i) or
(iii), respectively.
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The competitive links and advertisements on the Respondent’s
<epsons.net> domain name website is a disruption to Complainants’ business,
given that Internet users will be routed away from Complainants through the
confusingly similar disputed domain name.
Therefore, the Panel finds that Respondent has clearly registered and
used the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr.
9, 2007) (finding that the respondent registered and used the disputed domain
name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the
disputed domain name to advertise goods and services of complainant’s
competitors, thereby disrupting the complainant’s business); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec.
1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news
site. The Panel strongly finds that
appropriating Complainant’s mark to refer customers seeking Complainant to
Complainant’s competitors is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iii).”).
Respondent presumably benefits
from the re-routed traffic by receiving click-through referral fees. Respondent intentionally sought to create a
likelihood of confusion as to Complainants’ affiliation with, or endorsement of,
the disputed domain name and resolving website.
Therefore, the Panel finds that Respondent has registered and used the
disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Asbury Auto. Group, Inc. v. Tex. Int’l
Prop. Assocs.,
FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of
the disputed domain name to advertise car dealerships that competed with the
complainant’s business would likely lead to confusion among Internet users as
to the sponsorship or affiliation of those competing dealerships, and was
therefore evidence of bad faith registration and use pursuant to Policy ¶
4(b)(iv)); see also Red Hat, Inc. v. Haecke, FA
726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in
bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the
disputed domain names to operate a commercial search engine with links to the
products of the complainant and to complainant’s competitors, as well as by
diverting Internet users to several other domain names).
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 <epsons.net> domain name be TRANSFERRED from Respondent to Complainants.
Sandra J. Franklin, Panelist
Dated: August 12, 2009
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