Seiko Epson Corporation and Epson America, Inc. v. Advantage S & G Inc. c/o John Foley
Claim Number: FA1006001329762
Complainant is Seiko Epson Corporation and Epson
America, Inc. (“Complainant”),
represented by James B. Belshe, of Workman Nydegger,
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <epsonreplacementink.com> and <epsonbulkink.com>, registered with Tucows, 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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2010.
On Jun 14, 2010, Tucows, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsonreplacementink.com> and <epsonbulkink.com> domain names are registered with Tucows, Inc. and that the Respondent is the current registrant of the names. Tucows, Inc. has verified that Respondent is bound by the Tucows, Inc. 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 June 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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 and firstname.lastname@example.org Also on June 16, 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.
A timely Response was received and determined to be complete on July 6, 2010.
Complainant’s Additional Submission was received on July 12, 2010 in compliance with Supplemental Rule 7.
On July 14, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Complainants request that the domain names be transferred from Respondent to Complainants.
Complainants allege that the domain names <epsonreplacementink.com> and <epsonbulkink.com> should no longer be registered with the Respondent, but that they should be transferred to the Complainants.
It contends that this should be done because, within the meaning of paragraph 4 of the Policy, the domain names are confusingly similar to Complainants’ registered EPSON trademarks, that Respondent has no rights or legitimate interests in the domain names and that the domain names have been registered and subsequently used in bad faith. Complainants maintain that they can prove all three of these requirements and that the appropriate remedy is to transfer the domain names to Complainants.
In support of its case on the first of these three elements, Complainants rely on the registered EPSON trademarks to which reference has already been made. They then say that the domain names <epsonreplacementink.com> and <epsonbulkink.com> are confusingly similar to the EPSON trademarks as the spelling of that word in the domain names is the same as the spelling of the same word in the trademarks with the only additions to the domain names being the words “replacement ink” in the first domain name and the words “bulk ink” in the second. The Complainants contend that those additions suggest that the domain names relate to Complainants’ ink products and also that Respondent is not an authorized licensee or affiliated with Complainants.
Complainants then contend, to establish the second element, that Respondent has no rights or interests in the domain names because the facts show an obvious intention by Respondent to benefit from the reputation of the well-known EPSON mark and to use them in an illegitimate way, namely to use them on inactive websites, which clearly is not a bona fide offering of goods or services or a legitimate non-commercial or fair use
of the domain names within the meaning of paragraph 4 (c) of the Policy.
Moreover, Complainants contend that they have never authorized Respondent to use their trademarks in domain names and that Respondent is not known by the domain names or under the name Epson or any similar expression.
Finally, Complainants contend that the domain names were registered and are being used in bad faith. With respect to the registration of the domain names, Complainants submit that the EPSON trademark is famous and that, as Respondent has registered domain names using that trademark, the only conclusion open is that Respondent registered the domain names in bad faith. Complainants also submit that further evidence of bad faith registration is to be found in the fact that Respondent has registered 51 other domain names, many of which are prominent companies that specialize in the business of printing, scanning and the production of supplies for those products.
With respect to the use of the domain names, Complainants submit that this also was in bad faith because the Respondent has used them to attract internet users to its website through the unlicensed use of Complainants’ EPSON trademark. It is submitted that Respondent does so by using the EPSON mark to attract customers looking for EPSON products, only to direct them to a website that is not authorized or affiliated with Complainants.
Respondent contends that, for several reasons, the Complaint should be dismissed.
First, it is submitted that the addition to the EPSON mark of the words “replacement ink” and “bulk ink” makes the use of the EPSON mark a fair one and one that is not confusing to the consumer. This is supported by the fact that Epson does not sell bulk ink and claims to void it warranty if bulk ink is used in its printers, for this signifies that the website will not be selling Epson ink but rather an outside, replacement ink.
Secondly, Respondent submits that it has a right or legitimate interest in the domain names because it is using them for a legitimate business purpose which is demonstrated by the fact that, since the Complaint was served, the domain names lead to active websites where Respondent’s business is demonstrated. That legitimate business comes from the fact that Respondent has an interest in Digital Ink Supply, Inc, a distributor of Ink Tec Ink’s products and is in the business of selling bulk and/or replacement and compatible inks for many wide format printers including those sold by Complainants. The manufacturers, including Complainants, it is said, do not sell ink in bulk, which enables them to charge higher prices than if they sold in bulk; they thus have a vested interest in keeping their customers buying only their brand of ink and at high prices and are likely to have brought the present Complaint so that consumers will not learn that they have alternatives to buying small quantity, high priced inks from the manufacturers of the printers themselves.
Thirdly, Respondent denies it is a cybersquatter as in registering multiple domain names it has done no more than Complainants have done. Moreover, if it were a cybersquatter it would have registered more domain names and sold them, whereas in reality it has never intended to use them to divert internet users away from Complainants or to squat on the names and sell them to Epson. Rather, Respondent wants to use the domain names in its growing ink business and it has therefore had the intention to use the domain names to alert the business public to options open to it and enable businesses to save costs by buying bulk ink.
For these reasons it is contended that the Panel should find that Respondent’s use of the domain names is based on a legitimate and bona fide business interest which allows customers to have choices concerning their ink supply and is not in bad faith merely to hurt Epson or its mark.
Respondent also contends that the use of the disclaimer on its website alerts the customer that the ink it is purchasing is not Epson ink or affiliated with the Epson mark but rather it is compatible for Epson printers.
For this reason, Respondent contends, Respondent is not pretending to be Epson and is allowing the consumer to make an informed choice; registering the domain names was one simple way in which Respondent was able to connect with its customers and those searching for its products.
Respondent also contends that it is selling a product, namely bulk ink, which is not sold by Epson; accordingly, a customer purchasing ink from Respondent would not be confused that it is buying an Epson product. In any event, the website promotes ink only for wide format printers which are not common household printers used by the general public, but are used almost exclusively by businesses whose purchasing agents are sophisticated buyers who would not mistakenly assume they were buying Epson ink.
In summary Respondent contends that the domain names are not identical or confusingly similar to the EPSON trademark, Respondent has a right or legitimate interest in the domain names because of its bona fide business and the domain names are being used in good faith.
C. Additional Submissions
In a timely Additional Submission received on July 12, 2010, Complainants submit, first, that the use made by Respondent of the EPSON mark is not a fair use. That is so because the facts of the present case do not accord with the requirements of fair use; what is happening in reality in the present case, it is submitted, is that Respondent is using Complainants’ trademarks and the goodwill and name recognition that go with them, to sell, not Complainants’ products, but Respondent’s own products, which is improper and not a fair use.
Secondly, it is contended that Respondent’s use of the EPSON marks creates initial interest confusion that is not ameliorated by the products offered by Respondent, its alleged disclaimer or the alleged sophistication level of potential purchasers.
Thirdly, it is submitted that Respondent has not shown a legitimate business interest and has failed to refute the bad faith use of the domain names contended for by Complainants.
Respondent has also made an Additional Submission and the Panel has considered it and taken it into account in reaching its decision.
Respondent contends, first, that it has made a fair use of the EPSON mark as the only way it could tell potential customers that it has ink for their printers is to use the names of the printers themselves, in this case Epson. The use of the trademark EPSON in the domain name is to convey that Respondent is not Epson and it is necessary to use the name Epson to convey that the ink being sold is made for use in Epson printers.
Secondly, Respondent argues that it is not misleading consumers or creating consumer confusion. That is so because Respondent is offering what the domain names claim, namely replacement ink for Epson printers and bulk ink for Epson printers. Moreover, nothing on the website suggests that the ink is Epson ink. UDRP decisions, properly interpreted, support the contentions of Respondent.
Thirdly, Respondent argues that it has a legitimate business interest and has acted in good faith. That is so because it has had a business plan for its venture, the multiple domain names it has registered show an intention to find commonly used search phrases used by potential customers looking for replacement, compatible or bulk ink and the brand names used show the printers that Respondent would like to serve. Moreover, Complainants have misdirected themselves on the applicable law, as Respondent does not need to be licensed by Complainants to sell its, i.e. Respondent’s, own products.
(a) Complainant, Seiko Epson Corporation, operates a business selling technology products, such as printers, scanners, digital cameras, and video projectors under its EPSON mark.
(b) Complainant Epson America, Inc. is the North and Latin American sales, marketing and customer service subsidiary of the First Complainant.
(c) Complainant Seiko Epson Corporation owns a large number of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (e.g. the trademark Reg. 1,134,004 issued April 29, 1980) (collectively “ the Epson mark”).
Complainant Epson America,
Inc. is a licensee of the Epson mark for North America, Central America and
(e) Respondent registered the <epsonreplacementink.com> domain name on April 7, 2010 and the <epsonbulkink.com> domain name on March 17, 2010. The disputed domain names resolve to a website at www.wideformatprinterink.com promoting printer ink for Epson and other brands of printers.
(f) The disputed domain names are confusingly similar to trademarks in which the Complainants have rights.
(g) The Respondent has no rights or legitimate interests in the disputed domain names.
(h) The disputed domain names were registered and are 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 Complainants 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.
that they have provided printers under its EPSON mark for thirty years, having
registered the EPSON mark with the United States Patent and Trademark Office
(“USPTO”) (for example, by trademark Reg. No. 1,134,003 issued April 29,
1980). Complainants also assert that they
have provided ink, toner, filled ink cartridges, and related supplies under the
EPSON mark due to the registration of the mark for those commercial purposes
with the USPTO (Reg. No. 2,144,386 issued March 17, 1998). Extensive evidence
has been submitted of those trademarks, that the Complainant Seiko Epson
Corporation is their registered owner, that the Complainant Epson America, Inc. is a licensee of the Epson mark for
North America, Central America and
Accordingly, the Panel finds Complainants have sufficiently established their rights in the EPSON mark due to its numerous registrations with the USPTO pursuant to Policy ¶ 4(a)(i). See Metro. Life Ins. Co. v. Glu, FA 874496 (Nat. Arb. Forum Feb. 13, 2007) (finding that the complainant had rights in the METLIFE mark as a result of its registration of the mark with the United States federal trademark authority); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Next, Complainants contend that Respondent’s <epsonreplacementink.com> and <epsonbulkink.com> domain names are confusingly similar to its EPSON mark, as the names incorporate the EPSON mark in its entirety. Complainants further argue that the additions of descriptive and/or generic terms, such as “replacement,” “ink,” and “bulk,” and a generic top-level domain (“gTLD”) “.com” do not distinguish Respondent’s disputed domain names under Policy ¶ 4(a)(i). Previous panels have held that such minor and descriptive additions to a complainant’s mark were insufficient to distinguish the respondent’s disputed domain names under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names, which incorporated the complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity); see also 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 AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Nat. Arb. Forum Mar. 27, 2007) (“The Panel also finds that […the] addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”).
The Panel finds that such minor alterations to Complainants’ mark do not negate a finding that Respondent’s disputed domain names are confusingly similar to Complainants’ EPSON mark under Policy ¶ 4(a)(i).
Respondent argues that the addition of the words “replacement ink” to one of the domain names and the addition of the words “bulk ink” to the other domain name shows that neither domain name can be confusingly similar to the EPSON mark.
It is argued that, in the case of the first domain name, <epsonreplacementink.com>, it is not confusingly similar because the very use of the words “replacement ink” means that the ink being promoted is ink to replace Epson ink and hence could not be Epson ink itself.
It is also argued that the second domain name, <epsonbulkink.com>, is not confusingly similar because Epson does not sell bulk ink and voids its warranty if bulk ink is used in its printers.
They are both interesting arguments and have been developed in Respondent’s additional submission. But the Panel is unable accept them, because the EPSON mark is being used in the domain name and is so well known in its field that the objective bystander would naturally think that it was Epson itself that was offering replacement ink and bulk ink via the domain names and that the domain names promoting those products were official Epson domain names leading to Epson products. This would be particularly so in the case of the first domain name, for the EPSON trademark is registered with respect to replacement ink cartridges.
In any event, the plain meaning of the domain names is that they are dealing with Epson replacement and bulk ink and that they are in fact Epson domain names. It will be seen that this, in the opinion of the Panel the only meaning that can be given to the wording of the domain names, will take on a particular importance later in this decision.
The domain names are thus, by definition, confusingly similar to the EPSON mark.
Complainants have therefore made out the first of the three elements that they must establish.
Under paragraph 4(a) (ii), Complainants have the burden of establishing that Respondent has no rights or legitimate interests in respect of the domain names. But by virtue of paragraph 4(c) of the Policy, it is open to a respondent to establish its rights or legitimate interests in a domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Thus, if Respondent proves any of these elements or indeed anything else that shows that it has a right or interest in the domain names, Complainants will have failed to discharge their onus and the Complaint will fail.
It is now generally accepted that Complainants must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then, if it does so, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
The Panel finds that Complainants have made out a prima facie case. That prima facie case is based on the following facts established by Complainants on the evidence:
(i) the EPSON mark is clearly a famous trademark;
indicates one of the most famous suppliers of office and printer equipment in
the world including in the
(iii) Respondent chose this prominent trademark as part of its domain names and made additions to them implying that the “replacement ink” and “bulk ink” that constituted the additions were products of the famous EPSON brand, so that the resulting domain names emphasised the confusing similarity that automatically arose from using the EPSON mark in the domain names;
(iv) Respondent then linked the domain names to a website that promoted, not Epson replacement and bulk inks, but Respondent’s own replacement and bulk inks;
(v) the same website promoted those replacement and bulk inks as being compatible with the printers of Complainants and those of several of its competitors;
(vi) Respondent is not an authorised distributor of Complainants’ products and has not been authorized by Complainants to make such a use of the EPSON mark or name in a domain name or anywhere else , to use it to advertise Respondent’s products or to assert that its products were compatible with Complainants’ printers.
Accordingly, the prima facie case has been made out. That being so, the next question is whether Respondent has rebutted the prima facie case.
Respondent relies on the argument that it has a right or legitimate interest in the domain names because it is using them for a legitimate business purpose. That legitimate business purpose is that Respondent has an interest in Digital Ink Supply, Inc, a distributor of Ink Tec Ink’s products and is in the business of selling bulk and/or replacement and compatible inks for many wide format printers including those sold by Complainants. The manufacturers, including Complainants, it is said, do not sell ink in bulk, which enables them to charge higher prices than if they sold in bulk; they thus have a vested interest in keeping their customers buying only their brand of ink and at high prices and are likely to have brought the present Complaint so that consumers will not learn that they have alternatives to buying the small quantity, high priced inks from the manufacturers of the printers themselves.
In reply, Complainants say that a case for a legitimate business interest has not been made out, because in conducting its business, Respondent is making an unauthorised use of Complainants’ EPSON mark which cannot legitimise its activities.
Respondent has returned to the argument in its additional submission and has argued well in support of its contentions. The Panel has given particular attention to those submissions.
The Panel finds that Respondent has not rebutted the prima facie case against it. That is so for the following reasons.
First, the Panel is unable to accept that Respondent registered the domain names and used them in connection with its website for a legitimate business purpose. The reasons Respondent has given for setting up its business are of course interesting and it may well be that they give rise to a useful public benefit, namely increased competition, greater choice for consumers and lower prices. Indeed, there may well be no legal obstacle to Respondent’s promoting its wares and claiming that they are suitable for use with Complainants’ printers. However, even if that is so, where Respondent has erred is in using Complainants’ trademark in its domain names and by that means falsely implying that the bulk and replacement inks being promoted are those of Complainants when they clearly are not. Indeed, they are Respondent’s own products, in effect being promoted under false colours as Epson products
A useful analogy to make the point clearer might be the point that arises in free speech cases, illustrated by Monty and Pat Roberts, Inc. v. Bill Keith, WIPO Case No. D2000-0299 where the panellist had to consider the legitimacy of the domain name <montyroberts.net> that was used for a website critical of Monty Roberts and all his works. The Panel decided that it was not legitimate and observed that:
One may be perfectly free to express his or her views about the quality or characteristics of the reporting of the New York Times or Time Magazine. That does not, however, translate into a right to identify one’s self as the New York Times or Time Magazine. (emphasis added).
The reason given as to why this is so is that: “By using Complainant’s mark, Respondent diverts Internet traffic to its own site, thereby potentially depriving Complainant of visits by Internet users.”
Thus, it could be said by analogy that (subject to the general law) you are free to use a domain name to promote your products by saying they are compatible with Epson’s products and that they are cheaper to buy in bulk, but you may not identify yourself as Epson or say that they are Epson products when you know that they are not.
The Panel therefore accepts the submission of Complainants that even if the ink sold by Respondent was designed for use in Complainant’s printers, that does not legitimise the unauthorised use that Respondent has made of Complainants’ trademark and the cases it has cited in support of that submission: Daimler-Chrysler AG v. Autoparts Web Solutions, FA 676663 ( Nat. Arb. Forum May 25, 2006), Caterpillar, Inc v. Huth, FA 169056 (Nat. Arb.Forum, Sept 2, 2003) and Ultimate Elecs. Inc. V. Nichols, FA 195683 (Nat. Arb.Forum Oct. 27, 2003).
Nor does the alleged disclaimer do anything to dispel the notion that the domain names and the website to which they lead are in fact those of Complainants themselves. See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain name consists of the complainant’s well-known trademark, does not counter the expectation of Internet users that the domain name is sponsored by the complainant); see also AltaVista Co. v. AltaVisa, FA 95480 (Nat. Arb. Forum Oct. 31, 2000) (finding that since a disclaimer does not, and could not, accompany the domain name, then the “domain name attracts the consumer’s initial interest and the consumer is misdirected long before he/she has the opportunity to see the disclaimer”).
It is true that in some cases a disclaimer will achieve its objective. It is also true, as Respondent says, that there are decisions tending to give disclaimers considerable force. So that Respondent may be satisfied that the Panel has carefully considered all that it has put to the Panel, it should be added that in Al-Anon Family Group Headquarters, Inc., v. Don Reid, WIPO Case No. D2000-0232 (June 5, 2000) there was a finding that Complainant had not shown that Respondent had no right or legitimate interest in the domain name or that Respondent had registered or used the domain name in bad faith; in neither Caterpillar Inc., v. Off Road Equip., FA 95947 ( Nat. Arb. Forum Oct.10, 2000) and Caterpillar Inc. v Neal McKean d/b/a/ Machineworks, Inc FA97302 (Nat.Arb. Forum August 6, 2001) was there a suggestion that goods were being offered falsely as Complainant’s goods; and the Panel considers that Respondent may have misread the other decision relied on, Accu-Find Internet Services v. AccuFind, FA 94831( Nat. Arb. Forum June 19, 2000).
In any event, none of the cases cited is authority for the proposition that a domain name registrant may register a domain name implying that the domain name is that of a trademark owner and imply that the goods to be promoted are those of the trademark owner, knowing that they are not and then escape liability by means of a disclaimer.
Respondent’s additional submission has raised at least one of the most important issues about the internet, namely that, to flourish, it should be given the maximum liberality consistent with the terms of the Policy. This Panel’s view is that if it were at all possible to allow the domain names in the interests of free trade and expression, greater choice and more competition, it would facilitate that result. That is the basis on which Respondent has submitted in its additional submission that it should be allowed to retain the domain names, for it says that “the only way” to achieve its objective to promote its ink for Epson printers in the interests of the public is to use the name Epson as it has and, again, that it is “necessary” to use the Epson name n this way to achieve that end (emphasis added).
That is the main argument of Respondent, but having given careful consideration to it and particularly to the arguments advanced in Respondent’s additional submission, the Panel is unable to accept it.
Using the EPSON trademark in the domain name is one way, but not the only way, of conveying to internet users that Respondent sells ink that is compatible with Epson printers; other domain names can accurately reflect Respondent’s name and its business of selling its own brand of ink without trespassing on the trademark. Likewise, it is not “necessary” to use Complainants’ mark in the domain names, for using Respondent’s own name and business will achieve the same end. It is then open to Respondent to use its website to expand on the issue of compatibility of its inks with various brands of printers.
What is not open to Respondent is to create a domain name, the dominant feature of which is a trademark, used without the consent of the trademark owner and a domain name that implies it is the domain name of the trademark owner promoting its own products, when that is not the case.
Nor can a right or legitimate interest be established under any other of the criteria set out in paragraph 4(c) of the Policy. The evidence does not support an argument that Respondent is commonly known by either of the disputed domain names and both the commercial nature of the site and the misleading nature of the domain names make it plain that the case does not fall within paragraph 4(c).
The Panel therefore finds that Complainants have made out the second of the three elements that they must establish.
Complainants must prove on the balance of probabilities both that the domain names were registered in bad faith and that they being used in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
Further guidance on how to implement this requirement is to be found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which shall be evidence of the registration and use of a domain name in bad faith, although other circumstances may also be relied on, as the four circumstances are not exclusive.
The four specified circumstances are:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the site or location.
Complainants rely on paragraph 4(b)(iv) and also on the general notion of bad faith, which it is clearly entitled to do, for there have been many UDRP decisions that have held that bad faith is not limited to the factors set out in paragraph 4(b) of the Policy.
The Panel finds that the evidence submitted by Complainants makes out a case that Respondent both registered and is using the domain name in bad faith. In particular, the facts bring the case squarely within the provisions of paragraph 4(b) (iv) of the Policy. That is so for the following reasons.
First, the evidence shows that Respondent has registered as a domain name the Complainants’ famous EPSON trademark. Not only is the trademark well known but, as Complainants submit, several UDRP panels have recognised the notoriety of Complainants’ trademarks.
To this trademark, Respondent has added only the words “replacement ink” and “bulk ink”, thus suggesting that the domain names relate to replacement and bulk ink supplied or provided by Complainants. This raises the assumption that the domain names were registered for the illegitimate purpose of trading off the name and reputation of Complainants for commercial purposes and thus in bad faith, for Respondent clearly had Complainants and their EPSON brand in mind when it registered the domain names without their permission.
The case advanced by Respondent in its Response and its additional submission as to why it has used Complainants’ trademark has already been set out. Unfortunately, its basis is the misleading act of asserting that the domain names are Epson domain names and implying that the goods to be promoted by the domain names and on any website to which they may lead, are Epson products of Complainants, which clearly they were not and which Respondent knew and in fact asserts.
That description of what Respondent has done is a virtual paraphrasing of paragraph 4(b)(iv) of the Policy: it was intentional, was clearly done for commercial gain and its basis was to confuse potential customers into thinking that the source of the replacement and bulk ink being promoted by the use the domain names was Complainants themselves.
There is further confusion in that Respondent’s current use of the <epsonreplacementink.com> and <epsonbulkink.com> domain names must confuse Internet users seeking out Complainant and that Respondent’s profit from this confusion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant); see also Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant).
Again, the disclaimer relied on by Respondent does not negate any of these considerations. This Panel finds in the circumstances of this case set out in more detail above, that Respondent’s use of a disclaimer is not sufficient to alter the confusing similarity of the disputed domain names and their misleading nature and therefore does not mitigate bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Ciccone v. Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or misunderstood by Internet users. Second, a disclaimer does nothing to dispel initial interest confusion that is inevitable from Respondent’s actions. Such confusion is a basis for finding a violation of Complainant’s rights.”).
The Panel finds that the evidence shows that the Respondent has used the domain names to attract, for commercial gain, Internet users to its website by creating confusion with Complainants’ trademark as to the affiliation of the products on the site within the meaning of Paragraph 4(b)(iv) of the Policy.
As it must be shown specifically that the domain names were registered in bad faith, the Panel also finds that the modus operandi described above was conceived at the time of registration and that as a consequence the domain names were registered as well as used in bad faith.
In its Additional Submission, Complainants also submitted that Respondent’s current use of the disputed domain names creates a disruption to the business Complainants operate under their EPSON mark. Complainants argue that Internet users seeking Complainants’ printer and ink cartridge business may be diverted to Respondent’s website resolving from the <epsonreplacementink.com> and <epsonbulkink.com> domain names. Previous panels have found that using disputed domain names to divert Internet users to a respondent’s own competing website caused a disruption to a complainant’s business pursuant to Policy ¶ 4(b)(iii). This Panel finds that disruption of Complainants’ business by Respondent’s disputed domain names to a website that offers competing goods of Complainant’s business constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); see also EthnicGrocer.com, Inc. v. Latingrocer.com, FA 94384 (Nat. Arb. Forum July 7, 2000) (finding bad faith where the respondent’s sites pass users through to the respondent’s competing business).
All of these matters show registration and use of the domain names in bad faith.
The Complainants have thus made out the third of the three elements that they must establish under the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonreplacementink.com> and <epsonbulkink.com> domain names be TRANSFERRED from Respondent to Complainants.
The Honourable Neil Anthony Brown QC,
Dated: July 22, 2010
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