Seiko Epson Corporation and Epson America, Inc. v Chiu Tien Fu and Tien Fu Chiu
Claim Number: FA1003001314017
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 <epson.com>, registered with Name.com, LLC.
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 March 18, 2010.
On March 19, 2010, Name.com, LLC confirmed by e-mail to the National Arbitration Forum that the PUNYCODE equivalent of the <爱普生.com > domain name that translates to <epson.com> is [<xn--tkvs5xlkc.com>] domain name is registered with Name.com, LLC and that Respondent is the current registrant of the name. Name.com, LLC has verified that Respondent is bound by the Name.com, LLC 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 March 23, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 12, 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 firstname.lastname@example.org. Also on March 23, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 14, 2010 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 (the "Rules") "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 <爱普生.com> domain name as translated is identical to Complainant’s ESPSON mark.
2. Respondent does not have any rights or legitimate interests in the <爱普生.com> domain name.
3. Respondent registered and used the <爱普生.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, is a multinational
manufacturer of the design, production, and distribution of high technology
products, including printers, scanners, digital cameras, and video projectors. Complainant, Epson America, Inc., is the North and Latin American sales, marketing, and
customer service subsidiary of Seiko Epson.
Respondent registered the <爱普生.com> domain name on September 26, 2007. The <爱普生.com> domain name is an internationalized domain name (“IDN”) with the PUNYCODE translation of [<xn--tkvs5xlkc.com>]. The disputed domain name currently resolves to an inactive website, which leads to a Google search page, but is the transliteration of “EPSON” in Chinese categories.
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.
The domain name in dispute, <爱普生.com>, is an internationalized domain name (“IDN”) with the PUNYCODE translation of [<xn--tkvs5xlkc.com>]. An IDN is a domain name that contains non-traditional characters, such as letters with diacritics or other non-ASCII characters. In order to display characters or symbols in a domain name, the terms of the domain name are encoded into a scheme such as PUNYCODE. For Complainant to display the letters properly in the <爱普生.com> domain name, it first had to encode it into the [<xn--tkvs5xlkc.com>] domain name.
In the past, panels have found IDNs and their PUNYCODE translations to be equivalent. See Damien Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding an internationalized domain name, <têtu.com>, and its PUNYCODE translation, <xn--ttu-fma.com>, to be one and the same under the Policy); see also Württembergische Versicherung AG v. Emir Ulu, D2006-0278 (WIPO May 4, 2006) (finding that the <xn--wrttembergische-versicherung-16c.com> should be considered as equivalent to the <württembergische-versicherung.com> domain name, based on previous panel decisions recognizing the relevance of I-nav software for translating German letters such as “ä” or “ü” into codes such as <xn--[name]-16c> and similar); see also Fujitsu Ltd. v. tete and Lianqiu Li, D2006-0885 (WIPO Oct. 12, 2006) (finding the <xn--zqsv0e014e.com> domain name to be an exact reproduction of the complainant’s Chinese trademark in a domain name). This Panel finds that the <爱普生.com>domain name is the same as its PUNYCODE translation, [<xn--tkvs5xlkc.com>], for purposes of this proceeding.
Respondent registered the <爱普生.com> domain name on September 26, 2007.
Complainant asserts rights in the EPSON mark through its registration of this mark with the USPTO (e.g., Reg. No. 1,134,004 registered April 29, 1980). The Panel finds this registration establishes Complainant’s rights in the EPSON mark under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues Respondent’s <爱普生.com> domain name is identical to Complainant’s EPSON mark. Respondent copies Complainant’s mark in its
entirety in the disputed domain name and then adds the generic top-level
domain (“gTLD”) “.com” to Complainant’s mark in the disputed domain name. This addition does not distinguish
Respondent’s disputed domain name from Complainant’s mark. Therefore, the Panel finds Respondent’s
disputed <爱普生.com> domain name is identical to its EPSON
mark under Policy ¶ 4(a)(i). See
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant claims that Respondent lacks rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(c), Complainant must present a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name. The burden then shifts to Respondent to demonstrate it has rights and legitimate interests in the disputed domain name. The Panel may presume Respondent has no rights or legitimate interests in the disputed domain name if Respondent fails to respond. However, the Panel will still examine the record in consideration of the factors listed in 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).”). Although Respondent’s did not submit a response, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts it has not licensed or otherwise authorized Respondent to use the EPSON mark in a domain name. In addition, the WHOIS information does not indicate Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes Respondent is not commonly known by the <爱普生.com> domain name pursuant to Policy ¶4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the 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).
The disputed domain name does not resolve to an active webpage. The Panel finds that failing to make active use of a disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Respondent’s failure to associate content with its disputed domain name evinces a lack of rights and legitimate interests pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive and the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii). See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).
As previously discussed, Respondent’s disputed domain name is identical to Complainant’s mark and Respondent has failed to make active use of the disputed domain name. The Panel finds Respondent’s failure to make active use of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
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 <爱普生.com > domain name as expressed through its PUNYCODE translation <xn--tkvs5xlkc.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: April 16, 2010
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