Seiko Epson Corporation and Epson America, Inc. v. Paper-Net, Inc. c/o Julian Hemmati
Claim Number: FA1003001312049
Complainant is Seiko Epson Corporation and Epson
America, Inc. (“Complainant”),
represented by James A. Belshe, of Workman Nydegger,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonpaper.net>, registered with GoDaddy.com, Inc.
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.
Complainant submitted a Complaint to the National Arbitration Forum
On March 11, 2010, the Forum served the Complaint and all Annexes,
including a Written Notice of the Complaint, setting a deadline of March 31,
2010 by which Respondent could file a Response to the Complaint, via e-mail to
all entities and persons listed on Respondent’s registration as technical,
administrative, and billing contacts, and to email@example.com. Also on
A timely Response was received and determined to be complete on
Complainant requests that the domain name be transferred from Respondent to Complainant.
The First Complainant, Seiko Epson Corporation, is a multi-national manufacturer and distributor of high technology products, including printers, scanners, digital cameras and video projectors. Its products are used by consumers worldwide in businesses and offices.
First Complainant has numerous registrations for the trademark EPSON with the
US Patent & Trademark Office. The
first registration dates back to
Second Complainant, Epson America, Inc., is the North and Latin American
Complainants have been using the EPSON trademark in the
Respondent registered the disputed domain name on
The disputed domain name currently resolves to a parked website provided by the Registrar, GoDaddy.com, Inc. Internet users are directed through “click-through” links to retailers of products competing with Epson products.
The Respondent uses the disputed domain name for commercial gain by creating confusion amongst internet users directing internet traffic away from the Complainants and towards the Complainants’ competitors via the Respondent’s website and, in the process, disrupting the businesses of the Complainants.
The disputed domain name is confusingly similar to trademarks in which the Complainants have rights.
The Complainants have previously procured through the
UDRP process, transfer of numerous domain names containing some form of the
word Epson. The Complainants provided a list of decisions
of the National Arbitration Forum between
The Respondent has no rights or legitimate interests in the disputed domain name since it was not given any by the Complainants and has not set up any situation contemplated by Paragraph 4(c) of the Policy.
The Respondent has registered and is using the
disputed domain name in bad faith to attract consumers of Complainant’s
products to the website. At the time of
registration of the disputed domain name, the Respondent must have been well
aware of the fame of the Complainants’ trademarks which have been used in the
The use of the disputed domain name by the Respondent of a “click-through” service is likely to redirect internet users to the Respondent’s website. It constitutes disruption of the Complainants’ business and is evidence of bad faith registration and use under Paragraph 4(b)(iii) of the Policy.
In addition, the use of the disputed domain name is likely to create confusion as to the Complainants’ sponsorship of or affiliation with the disputed domain name and, as such, is evidence of bad faith registration and use. It can only be inferred that the Respondent registered the disputed domain name for the purpose of attracting internet users to the website for the unlicensed and unauthorised use of the Complainants’ mark.
In an informal response, the Respondent maintained that it had not used the disputed domain name. The reason behind the domain name’s selection was that the words “epsonpaper.net” stood for “Electronic Payment Solutions on Paper.net” which was going to be launched in three months. The Respondent claimed to be the authorised vendor of Epson products.
In response to the Complainants’ “cease and desist” letters, the Respondent had no problem with deactivating the disputed domain name but sought compensation of $3,300 spent on the design phase. The Respondent considered that the Complainants were bullying it and were wanting to add another winning case to the long list of cases won over small companies “out there”. “They have proudly embedded those cases in all their communications”.
(a) The disputed domain name is confusingly similar to trademarks in which the Complainants have rights.
(b) The Respondent has no rights or legitimate interests in the disputed domain name.
(c) The disputed domain name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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 Complainants have had rights in a registered trademark for 30 years. The First Complainant established worldwide as a provider of technology products, including printers, scanners, etc. The disputed domain name incorporates the entirety of the Complainants’ mark and adds the descriptive term “paper”.
A combination of a trademark with a generic
word which has an obvious relationship to the Complainants’ business clearly
makes the disputed domain name confusingly similar to the Complainants’
mark. See Space Imaging LLC v. Brownell AF( – 0298 e‑Resolution
The Complainants have clearly established that the Respondent lacks rights and legitimate interests in the disputed domain name. The burden then shifts to the Respondent to show that he did have rights and legitimate interests. It has not set up any defence under Paragraph 4(c) of the Policy which sets out instances where a defence under this part of the Policy might be established.
There is no way in which the Respondent’s use of the disputed domain name could be said to be a bona fide offering of goods and services when it is using the disputed domain name to link internet users seeking the Complainants’ products to a parked page featuring links to products which directly compete with the Complainants.
The Respondent’s use of a confusingly similar domain name to link internet users to websites featuring goods that directly compete with the Complainant clearly constitutes a disruption of the Complainants’ business. Redirecting internet users seeking the Complainants’ goods to third party sites from which the Respondent presumably receives “click-through” fees is evidence of bad faith registration and use.
There can be no doubt that, as at
Accordingly, the Complainants have satisfied all three of the requirements of Paragraph 4(a) of the Policy.
Accordingly, it is Ordered that the <epsonpaper.net> domain name be TRANSFERRED from the Respondent to the Complainants.
Hon. Sir Ian Barker, Panelist
Dated: April 27, 2010