Seiko Epson Corporation and Epson America, Inc. v. Mohd Hariri Abdullah
Claim Number: FA1007001337657
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 <iepsonink.info>, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 27, 2010.
On July 28, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <iepsonink.info> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, 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 August 2, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@iepsonink.info by e-mail. Also on August 2, 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 August 31, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <iepsonink.info> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <iepsonink.info> domain name.
3. Respondent registered and used the <iepsonink.info> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation and Epson America, Inc., utilizes its EPSON mark to sell computer products, printer products, and other peripheral devices and electronic components. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its EPSON mark (e.g., Reg. No. 1,134,004 issued April 29, 1980).
Respondent, Mohd Hariri Abdullah, registered the <iepsonink.info> domain name on May 18, 2010. The disputed domain name resolves to a website that contains a personal blog and hyperlinks to websites offering products that compete with Complainant’s computer and printing products.
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 its EPSON mark based on its trademark registrations with the USPTO (e.g., Reg. No. 1,134,004 issued April 29, 1980). In Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) and Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panels determined that a trademark registration with the USPTO was sufficient to establish rights in a mark for the purposes of Policy ¶ 4(a)(i). Moreover, in Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001), the panel concluded that a complainant is not required to register a mark within a country that a respondent resides in. Thus, the Panel finds that Complainant has established rights in its EPSON mark under Policy ¶ 4(a)(i).
Complainant claims that Respondent’s <iepsonink.info> domain name is confusingly similar to Complainant’s EPSON mark. The disputed domain name contains Complainant’s entire mark and simply adds the letter “i,” the descriptive term “ink,” which describes Complainant’s printing business, and the generic top-level domain (“gTLD”) “.com.” In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel found that the addition of a single letter to a complainant’s mark did not remove the confusing similarity between the mark and disputed domain name. Furthermore, in Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006), the panel determined that the addition of a descriptive term failed to sufficiently distinguish a disputed domain name from a complainant’s mark. Finally, the panel in Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) held that the addition of a gTLD is irrelevant to a Policy ¶ 4(a)(i) analysis as a top-level domain is required in every domain name. Based on the evidence in the record and the findings of previous panels, the Panel concludes that Respondent’s <iepsonink.info> domain name is confusingly similar to Complainant’s EPSON mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant must first demonstrate Respondent lacks rights and legitimate interests in the <iepsonink.com> domain name pursuant to Policy ¶ 4(a)(ii). After Complainant establishes this prima facie case, the burden shifts to Respondent to show it has rights or legitimate interests in the disputed domain name. The Panel may infer Respondent lacks rights and legitimate interest based on Respondent’s failure to submit a Response. 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 Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests under Policy ¶ 4(c).
Complainant contends that Respondent is not commonly known by the <iepsonink.info> domain name. Complainant asserts that Respondent is not licensee of Respondent and that Complainant has not authorized Respondent to use Complainant’s EPSON mark in a domain name. The WHOIS information identifies the domain name registrant as, “Mohd Hariri Abdullah,” which the panel determines is not similar to Respondent’s <iepsonink.info> domain name. Respondent has failed to respond to the Complaint and has failed to provide any evidence to contradict Complainant’s assertions or the WHOIS information. In IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006), the panel found that the respondent was not commonly known by the disputed domain name because the respondent was not authorized to use the complainant’s mark and failed to submit evidence that it was commonly known by the domain name. In Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the panel determined that the respondent was not commonly known by the disputed domain name based on the WHOIS information and the complainant’s assertion that the respondent was not authorized to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the <iepsonink.info> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant alleges that Respondent’s use of the <iepsonink.info> domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent uses the <iepsonink.info> domain name to resolve to a website that contains a blog and hyperlinks to Complainant’s competitors in the computer and printing industry. Respondent likely receives click-through fees from these hyperlinks. In Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) and Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007), the panels concluded that a respondent’s use of a disputed domain name to resolve to a website containing hyperlinks to competitors of a complainant was not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). The Panel finds accordingly.
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Complainant claims that Respondent’s use of the <iepsonink.info>
domain name disrupts Complainant’s computer and printing products
business. Internet users interested in
Complainant’s computer and printing products may have purchased products from a
competitor of Complainant due to Respondent’s registration and use of the
confusingly similar disputed domain name and the featuring of hyperlinks to
Complainant’s competitors. In St. Lawrence Univ. v.
Nextnet Tech, FA 881234 (Nat.
Arb. Forum Feb. 21, 2007) and Am. Airlines, Inc. v.
Complainant argues that Respondent has created a likelihood
of confusion among Internet users as to Complainant’s sponsorship of, or
affiliation with, the disputed domain name.
The Panel infers that Respondent receives click-through fees from the
aforementioned hyperlinks. In
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 <iepsonink.info> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: September 8, 2010
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