Seiko Epson Corporation and Epson America, Inc. v. Digi Real Estate Foundation c/o NA Na
Claim Number: FA0908001279698
Complainant is Seiko Epson Corporation and Epson
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsonphotoprinter.com>, registered
with Moniker.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On August 25, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 14, 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@epsonphotoprinter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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 <epsonphotoprinter.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonphotoprinter.com> domain name.
3. Respondent registered and used the <epsonphotoprinter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, is a worldwide leader
in the technology products industry.
Complainant produces “printers, scanners, digital cameras, and video
projectors.” Complainant owns a number
of trademark registrations with the United States Patent and Trademark Office
(“USPTO”) for the EPSON mark (i.e. Reg. 1,134,004 issued
Respondent registered the <epsonphotoprinter.com> domain name 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 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 has a number of trademark registrations with the
USPTO for the EPSON mark (i.e. Reg. 1,134,004 issued
Complainant argues that
Respondent’s <epsonphotoprinter.com> domain name is confusingly
similar to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i). Respondent’s disputed domain name, which was
registered on
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks all rights and legitimate interests in the <epsonphotoprinter.com> domain name. If Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that its rights and legitimate interests exist pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has established a prima facie case. See Document Techs., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO June 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.”).
Complainant contends that Respondent is neither commonly
known by nor licensed to register the <epsonphotoprinter.com> domain name. Respondent’s WHOIS information identifies
Respondent as “Moniker Privacy Services.”
The Panel finds that the WHOIS information demonstrates that Respondent
is not commonly known by the disputed domain name. Therefore, pursuant to Policy ¶ 4(c)(ii),
Respondent lacks rights and legitimate interests in the <epsonphotoprinter.com>
domain name. 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 <epsonphotoprinter.com>
domain name to display links advertising third-party websites in competition
with Complainant’s offering of technology products. The Panel infers that Respondent is using the
disputed domain name to earn click-through fees, and thus finds that Respondent
has not made 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 Wells Fargo & Co. v. Lin Shun Shing, FA 205699 (Nat. Arb. Forum Dec. 8, 2003) (finding that
using a domain name to direct Internet traffic to a website featuring pop-up
advertisements and links to various third-party websites is 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) because the registrant
presumably receives compensation for each misdirected Internet user); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that
the respondent was not using the domain names for a bona fide offering
of goods or services nor a legitimate noncommercial or fair use because the
respondent used the names to divert Internet users to a website that offered
services that competed with those offered by the complainant under its marks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the <epsonphotoprinter.com> domain name to disrupt the
business of Complainant by offering links to competitors is evidence of bad
faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (
Complainant contends that Respondent is using the <epsonphotoprinter.com> domain name to intentionally
divert Internet users to the associated websites, which display third-party
links to competing websites. In cases
such as this, the Panel presumes that Respondent is collecting click-through
fees and attempting to profit by creating a likelihood of confusion between
Complainant’s EPSON mark and the confusingly similar <epsonphotoprinter.com>
domain name. The Panel finds that
Respondent’s use of the disputed domain name is further evidence of bad faith
registration and use pursuant to Policy ¶ 4(b)(iv). See
Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18,
2006) (finding that the respondent engaged in bad faith registration and use by
using a domain name that was confusingly similar to the complainant’s mark to
offer links to third-party websites that offered services similar to those
offered by the complainant); see also
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 <epsonphotoprinter.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: October 5, 2009
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