Seiko Epson Corporation and Epson America, Inc. v. Mats Elmstrom Spas
Claim Number: FA1003001314045
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by James
B. Belshe, of Workman Nydegger,
The domain name at issue is <epsonmoviemate.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
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
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <epsonmoviemate.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonmoviemate.com> domain name.
3. Respondent registered and used the <epsonmoviemate.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, is a multinational
manufacturer, designer, producer and distributor 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, Mats Elmstrom
Spas, registered the <epsonmoviemate.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 asserts rights in the EPSON mark through its
registration of this mark with the USPTO (e.g.,
Reg. No. 1,134,004 registered
Complainant argues Respondent’s disputed domain name is
confusingly similar to Complainant’s EPSON mark. In the disputed domain name, Respondent
incorporates Complainant’s mark in its entirety and then adds the generic terms
“movie” and “mate.” Respondent also
attaches the generic top-level domain (“gTLD”) “.com” to Complainant’s mark in
the disputed domain name. The Panel
finds these changes do not render Respondent’s disputed domain name distinct
from Complainant’s mark. Therefore, the
Panel finds Respondent’s disputed <epsonmoviemate.com>
domain name is confusingly similar to Complainant’s EPSON mark under Policy ¶
4(a)(i). See Arthur Guinness Son & Co. (Dublin)
Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing
similarity where the domain name in dispute contains the identical mark of the
complainant combined with a generic word or term); see also American Express Co. v.
MustNeed.com, FA 257901 (Nat. Arb.
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii),
Complainant must first make a prima facie
case showing Respondent lacks rights or legitimate interests in the disputed <epsonmoviemate.com> domain
name. After this initial showing, the
burden shifts to Respondent to prove it has rights or legitimate interests in
the disputed domain name. The Panel may
view Respondent’s failure to submit a Response as evidence that Respondent
lacks rights or legitimate interests. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum
Apr. 26, 2006) (finding the “complainant must first make a prima facie case
that [the] respondent lacks rights and legitimate interests in the disputed
domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the]
respondent to show it does have rights or legitimate interests.”); see also Do The Hustle, LLC v. Tropic
Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant
has asserted that the respondent has no rights or legitimate interests with
respect to the domain name, it is incumbent on the respondent to come forward
with concrete evidence rebutting this assertion because this information is
“uniquely within the knowledge and control of the respondent”); see also American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum
Complainant claims Respondent is neither affiliated with Complainant nor licensed to use the EPSON mark in a domain name. Furthermore, the WHOIS information does not indicate Respondent is commonly known by the disputed domain name. Without evidence to the contrary, the Panel finds Respondent is not commonly known by the disputed 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).
that Respondent’s disputed domain name resolves to a parked website displaying
links to third-party websites.
Complainant claims that Respondent likely profits from the use of the
disputed domain name in the form of “click-through” fees. The Panel finds Respondent’s use of a parked
website with third-party links is not a bona fide offering of goods or
services pursuant to Policy ¶ 4(c)(i) or a legitimate
noncommercial or fair use according to Policy ¶ 4(c)(iii). See State Farm Mutual Auto. Insr.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant alleges Respondent uses the <epsonmoviemate.com> domain name as a
parked website that provides links to third-party websites, some of which
directly compete with Complainant. The
Panel finds Respondent is using the disputed domain name to disrupt Complainant’s business
by diverting Internet users to the websites of Complainant’s competitors. Therefore, the Panel concludes Respondent’s
disruption constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See American Airlines, Inc. v.
Complainant also argues Respondent is using the disputed
domain name to intentionally attract, for commercial gain, Internet users to
the parked website by creating confusion as to Complainant’s sponsorship and
affiliation with the disputed domain name.
As previously discussed, Respondent’s disputed domain name is
confusingly similar to Complainant’s EPSON mark. In addition, Respondent presumably receives
click-through fees from the use of the <epsonmoviemate.com>
domain name. The Panel finds this
behavior constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See T-Mobile
USA, Inc. v. utahhealth, FA
697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of
a domain name confusingly similar to a complainant’s mark to direct Internet
traffic to a commercial “links page” in order to profit from click-through fees
or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also The Ass’n of Junior Leagues
Int’l Inc. v. This Domain Name My Be For
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 <epsonmoviemate.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: April 28, 2010
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