national arbitration forum

 

DECISION

 

Seiko Epson Corporation and Epson America, Inc. v. Ace Photo c/o Jalai, Mohsen

Claim Number: FA1008001341759

 

PARTIES

Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by James B. Belshe, of Workman Nydegger, Utah, USA.  Respondent is Ace Photo c/o Jaliali, Mohsen (“Respondent”), Virginia, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <epsonvirginia.com>, registered with GoDaddy.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2010.

 

On August 18, 2010, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <epsonvirginia.com> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name.  GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 19, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 8, 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@epsonvirginia.com by e-mail.  Also on August 19, 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 September 23, 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.      Respondent’s <epsonvirginia.com> domain name is confusingly similar to Complainant’s EPSON mark.

 

2.      Respondent does not have any rights or legitimate interests in the <epsonvirginia.com> domain name.

 

3.      Respondent registered and used the <epsonvirginia.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Seiko Epson Corporation, manufactures, designs, products, and distributes technology products, including printers, scanners, digital cameras, and video projectors.  Complainant, Epson America, Inc., is a subsidiary of Seiko Epson Corporation.  Epson America, Inc. is also a licensee of the EPSON trademark.  Hereinafter, these Complainants will be collectively referred to as “Complainant.”  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (e.g., Reg. No. 1,134,004 registered April 29, 1980).

 

Respondent, Ace Photo c/o Jalai, Mohsen, registered the <epsonvirginia.com> domain name on June 18, 2010.  The disputed domain name resolves to a website that features hyperlinks to third-party websites, including links to Complainant’s competitors. 

 

DISCUSSION

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.

 

Preliminary Issue: Multiple Complainants

 

Previous panels have interpreted the Forum’s Supplemental Rule 1(e) to allow multiple parties to proceed as one party where they can show a sufficient link to each other.  For example, in Vancouver Organizing Committee for the 2010 Olympic and Paralymic Games and International Olympic Committee v. Hardeep Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), the panel stated:

 

It has been accepted that it is permissible for two complainants to submit a single complaint if they can demonstrate a link between the two entities such as a relationship involving a license, a partnership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.

 

In Tasty Baking, Co. & Tastykake Investments, Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), the panel treated the two complainants as a single entity where both parties held rights in trademarks contained within the disputed domain names.  Likewise, in American Family Health Services Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), the panel found a sufficient link between the complainants where there was a license between the parties regarding use of the TOUGHLOVE mark.  But see AmeriSource Corp. v. Park, FA 99134 (Nat. Arb. Forum Nov. 5, 2001) (“This Panel finds it difficult to hold that a domain name that may belong to AmerisourceBergen Corporation (i.e., the subject Domain Names) should belong to AmeriSource Corporation because they are affiliated companies.”). 

 

In this case, Complainant, Epson America, Inc., is the North and Latin American sales, marketing, and customer service subsidiary of Complainant, Seiko Epson Corporation.  Epson America, Inc. is also a licensee of the EPSON trademark and service mark for the distribution and sale of products and services offered throughout North America, Central America, and South America.  The Panel finds there is a sufficient nexus or link between the Complainants.  Therefore, the Panel will treat them as a single entity in this proceeding.

 

Identical and/or Confusingly Similar

 

Complainant asserts rights in the EPSON mark through its numerous registrations of the mark with the USPTO (e.g., Reg. No. 1,134,004 registered April 29, 1980).  The Panel finds these trademark registrations sufficiently prove Complainant’s rights in the EPSON mark pursuant to Policy ¶ 4(a)(i).  See Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office); see also Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark).

 

Complainant avers Respondent’s <epsonvirginia.com> domain name is confusingly similar to its EPSON mark.  Respondent replicates Complainant’s mark in the disputed domain name.  Respondent merely attaches the geographically descriptive term “virginia” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark.  The Panel finds these additions do not render Respondent’s domain name distinct from Complainant’s mark.  See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”); see also Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding that the <indiaticketmaster.com> domain name was confusingly similar to the complainant’s TICKETMASTER mark); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).  Accordingly, the Panel finds Respondent’s <epsonvirginia.com> domain name is confusingly similar to its EPSON mark pursuant to Policy ¶ 4(a)(i). 

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must initially establish Respondent lacks rights and legitimate interests in the <epsonvirginia.com> domain name.  The burden then shifts to Respondent to demonstrate it has rights or legitimate interests in the disputed domain name.  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.”).  The Panel may infer Respondent lacks rights or legitimate interests in the domain name based on Respondent’s failure to submit a Response.  See 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, the Panel will examine the record to determine whether Respondent possesses rights or legitimate interests under Policy ¶ 4(c).

 

Complainant states it has not licensed or authorized Respondent to use its EPSON mark in a domain name.  Additionally, the WHOIS information lists “Ace Photo c/o Jalai, Mohsen” as the registrant of the disputed domain name, which the Panel finds is not similar to the <epsonvirginia.com> domain name.  The Panel finds, based on Complainant’s assertions combined with the WHOIS registrant information, that Respondent is not commonly known by the <epsonvirginia.com> domain name under Policy ¶ 4(c)(ii).  See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also 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).

 

Complainant contends the <epsonvirginia.com> domain name resolves to a website that features hyperlinks to third-party websites, including links to Complainant’s competitors.  A screen shot of the resolving website shows hyperlinks with titles like “Ask Epson Tech Support,” “Epson Driver Downloads,” and “Printek Sales and Service.”  The screen shot also shows a link to Complainant’s official website.  Moreover, the Panel presumes Respondent receives a “click-through” fee each time an Internet user clicks on one of these hyperlinks.  Therefore, the Panel finds Respondent does not use the disputed domain name to make a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See Royal Bank of Scotland Grp plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (finding that the operation of a commercial web directory displaying various links to third-party websites was not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii), as the respondent presumably earned “click-through” fees for each consumer it redirected to other websites); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (concluding that using a confusingly similar domain name to divert Internet users to competing websites 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)).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds the <epsonvirginia.com> domain name redirects Internet users seeking Complainant’s products and services to third-party websites that offer competing products and services.  Consequently, the Panel finds the <epsonvirginia.com> domain name disrupts Complainant’s business, which constitutes registration and use in bad faith under Policy ¶ 4(b)(iii).  See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).

 

The Panel also finds Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of its website.  As previously discussed, the <epsonvirginia.com> domain name is confusingly similar to Complainant’s EPSON mark.  Furthermore, Respondent most likely profits from this confusion by redirecting Internet users to its resolving website in order to generate click-through fees.  Therefore, Respondent’s behavior constitutes registration and use in bad faith 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 MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <epsonvirginia.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  September 30, 2010

 

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