Seiko Epson Corporation and Epson America, Inc. v. Asiadot Co., ltd c/o Chianvichai, pramote
Claim Number: FA0907001273398
Complainant is Seiko
Epson Corporation and Epson
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsonthailand.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 July 13, 2009; the National Arbitration Forum received a hard copy of the Complaint on July 14, 2009.
On July 13, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsonthailand.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 July 17, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 6, 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@epsonthailand.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 11, 2009, 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 is a multinational manufacturer that designs, produces, and distributes high technology products such as printers, scanners, digital cameras, and video projectors.
Complainant also provides customer service for the EPSON products.
Complainant has used the EPSON mark in commerce in connection with this business for more than thirty years.
Complainant holds multiple registrations with the United States Patent and Trademark Office (“USPTO”) for the EPSON trademark (including Reg. No. 1,134,004, issued April 29, 1980).
Respondent registered the <epsonthailand.com> domain name on November 2, 2008.
The disputed domain name resolves to a website featuring advertisements for the products and services of Complainant’s business competitors, as well as links to websites featuring the products of such competitors.
Respondent receives click-through fees from these advertisements and related links.
Respondent’s <epsonthailand.com> domain name is confusingly similar to Complainant’s EPSON mark.
Respondent does not have any rights to or legitimate interests in the domain name <epsonthailand.com>.
Respondent registered and uses the <epsonthailand.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 in which Complainant has rights; and
(2) Respondent has no rights to 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 a 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.
There is no dispute as to Complainant’s assertion that it
has registered the EPSON mark with the USPTO.
Respondent operates in
Complainant alleges that Respondent’s <epsonthailand.com>
domain name is confusingly similar to Complainant’s EPSON mark. The disputed domain name contains the EPSON
mark in its entirety and simply adds the geographic term “
[i]t
is well established that a domain name consisting of a well-known mark,
combined with a geographically descriptive term or phrase, is confusingly
similar to the mark.
Likewise, the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that the <epsonthailand.com> domain name is confusingly similar to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i).
Complainant asserts that Respondent does not have any rights to or legitimate interests in the <epsonthailand.com> domain name. The burden shifts to the respondent to prove it does have rights or legitimate interests once a complainant makes out a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by a complainant, the burden shifts to a respondent to demonstrate its rights to or legitimate interests in a disputed domain name.
Complainant has made out a sufficient prima facie case. Respondent’s failure to respond to the Complaint permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond). We will nonetheless examine the record before us to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name sufficient to meet the requirements of Policy ¶ 4(c).
We begin by observing that there is no dispute as to Complainant’s allegation to the effect that Respondent uses the <epsonthailand.com> domain name to resolve to a website featuring both advertisements for and links to websites selling the products of Complainant’s competitors. Complainant alleges, and Respondent does not deny, that Respondent receives click-through fees from such advertisements and related links. We conclude that Respondent’s use of the <epsonthailand.com> domain name as alleged is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting a respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because that respondent was using the domain to operate a website containing links to commercial websites competing with the business of a complainant, which a panel found not to be a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also 24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For Sale, FA 187429 (Nat. Arb. Forum Sep. 26, 2003) (holding that a respondent’s use of the <24hrsfitness.com>, <24-hourfitness.com> and <24hoursfitness.com> domain names to redirect Internet users to a website featuring advertisements and links to a complainant’s competitors could not be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domains).
Complainant alleges that Respondent is not authorized to use the EPSON mark, and Respondent has failed to offer evidence showing that it is commonly known by the <epsonthailand.com> domain name. The pertinent WHOIS information lists Respondent as “Asiadot Co., ltd c/o Chianvichai, promote,” and there is no evidence in the record suggesting that Respondent is commonly known by the disputed domain name. Therefore, we conclude that Respondent has not established that it is commonly known by the <epsonthailand.com> domain name pursuant to Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name where there was no evidence in the record showing that that respondent was commonly known by the subject domain name, and where the relevant WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name, supported that conclusion); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that a respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the pertinent WHOIS information, suggesting that that respondent was commonly known by the disputed domain name).
Therefore, the Panel concludes Panel ¶ 4(a)(ii) has been satisfied.
Respondent’s <epsonthailand.com> domain name resolves to a website featuring advertisements for Complainant’s competitors and links to websites selling products competing with those of Complainant. This use of a confusingly similar disputed domain name constitutes disruption of Complainant’s business, which is evidence of bad faith registration and use of the domain under Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a website containing links to the websites of a complainant’s competitors represents bad faith registration and use of the domain under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that a respondent registered and used a disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) where that respondent used the domain name to advertise goods and services of a complainant’s competitors, thereby disrupting that complainant’s business).
From the circumstances presented, we presume, as Complainant
alleges, that Respondent receives click-through fees for the use of the
disputed domain name to redirect Internet users interested in Complainant to
Respondent’s website. Respondent is thus
attempting to profit by creating a likelihood of confusion as to Complainant’s possible
affiliation with the resolving website.
Respondent’s use of the <epsonthailand.com> domain name as
alleged constitutes bad faith registration and use of the domain under Policy ¶
4(b)(iv). See TM Acquisition Corp. v. Warren, FA 204147 (Nat. Arb. Forum Dec. 8, 2003):
Although
Complainant’s principal website is <century21.com>, many Internet users
are likely to use search engines to find Complainant’s website, only to be
misled to Respondent’s website at the <century21realty.biz> domain name,
which features links for competing real estate websites. Therefore, it is likely that Internet users
seeking Complainant’s website, but who end up at Respondent’s website, will be
confused as to the source, sponsorship, affiliation or endorsement of
Respondent’s website.
See also Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that a respondent’s registration of an infringing domain name to redirect Internet users to banner advertisements constituted bad faith use of a domain name).
For these reasons, the Panel finds that the elements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <epsonthailand.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 20, 2009
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