Seiko Epson Corporation and Epson America, Inc. v. bradley mckeown
Claim Number: FA1003001312058
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by James
B. Belshe, of Workman Nydegger,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsonworkforceprinter.info>, 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
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 postmaster@epsonworkforceprinter.info. Also on
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 8, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 <epsonworkforceprinter.info> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonworkforceprinter.info> domain name.
3. Respondent registered and used the <epsonworkforceprinter.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation and Epson America, Inc, has registered its EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980). Complainant uses the mark in connection with printers, scanners, digital cameras, video projectors, and supplies for these products, including replacement ink cartridges.
Respondent, bradley mckeown,
registered the disputed domain name
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.
Respondent, bradley mckeown,
registered the disputed domain name
Complainant asserts it has rights in its EPSON mark due to its registration with the USPTO (Reg. No. 1,134,004 issued April 29, 1980). The Panel finds that Complainant’s registration of its EPSON mark with the USPTO is sufficient to establish Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”) ); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant asserts that Respondent’s disputed domain name is confusingly similar to Complainant’s EPSON mark. Respondent’s <epsonworkforceprinter.info> domain name incorporates the dominant feature of Complainant’s mark, adds descriptive terms related to Complainant’s business, and adds the generic top-level domain “.info.” The Panel finds that these are minor alterations to Complainant’s registered mark and, as such, finds Respondent’s domain name is confusingly similar to Complainant’s mark pursuant to Policy 4(a)(i). See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it).
The Panel finds that Policy ¶ 4(a)(i) is satisfied.
Complainant asserts that Respondent has no rights or
legitimate interests in the <epsonworkforceprinter.info>
domain name. Once Complainant has made a prima
facie case in support of this, the burden to establish that Respondent has
rights or legitimate interests in the disputed domain name shifts to the Respondent,
pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has established a
prima facie case, shifting the burden
to the Respondent. Due to Respondent’s failure to respond to the proceedings,
the Panel will analyze the record in light of Policy ¶ 4(c). See Domtar, Inc. v. Theriault, FA 1089426 (Nat. Arb. Forum
Jan 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its
allegations, the burden shifts to respondent to show that it does have rights
or legitimate interests pursuant to paragraph 4 (a)(ii) of the Policy.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum
The WHOIS information for the <epsonworkforceprinter.info> domain name lists “bradley mckeown” as the registrant, which indicates that Respondent is not commonly known by the disputed domain name. Complainant asserts no license or other authorization has been given to Respondent to use the EPSON mark. Furthermore, Respondent has not offered any evidence to suggest that Policy ¶ 4(c)(ii) applies in this case. Without affirmative evidence, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4 (c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly know by the disputed domain name); see also Foot Locker Retail, Inc. v. Gibson, FA 139693 (Nat. Arb. Forum Feb. 4, 2003) (“Due to the fame of Complainant’s FOOT LOCKER family of marks . . . and the fact that Respondent’s WHOIS information reveals its name to be ‘Bruce Gibson,’ the Panel infers that Respondent was not ‘commonly known by’ any of the disputed domain names prior to their registration, and concludes that Policy ¶ 4(c)(ii) does not apply to Respondent.”).
Respondent’s use of the <epsonworkforceprinter.info>
domain name resolves to a website providing advertising and services unrelated to
those provided by Complainant. The Panel
finds that Respondent’s diversion of Internet users to unrelated to
Complainant’s goods and services via the disputed domain name is further
evidence that Respondent lacks legitimate interests in the domain name pursuant
to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003) (“Respondent's use of a domain name confusingly
similar to Complainant’s mark to divert Internet users to websites unrelated to
Complainant's business does not represent 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
The Panel finds Policy ¶ 4(a)(ii)
has been satisfied.
Respondent’s disputed domain name resolves to a website providing advertising and services unrelated to those provided by Complainant. Complainant asserts that Internet users, searching for Complainant’s services, will be confused as to Complainant’s sponsorship or affiliation with the disputed domain name and that Respondent attempts to profit from this confusion, likely through the receipt of click-through fees. Therefore, the Panel finds Respondent’s use of the <epsonworkforceprinter.info> domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds 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 <epsonworkforceprinter.info> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY Ret.)
Dated: April 20, 2010
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