Seiko Epson Corporation and Epson America, Inc. v. H.M., LLC
Claim Number: FA1008001341798
PARTIES
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by James B. Belshe, of Workman Nydegger, Utah, USA. Respondent is H M LLC (“Respondent”), represented by Drew Mouton, Louisiana, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsoninkcartridges.com>, registered with Godaddy.com, Inc.
PANEL
The undersigned, Daniel B. Banks, Jr., 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.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2010.
On August 18, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsoninkcartridges.com> domain name is registered with Godaddy.com, Inc. and that the 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 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@epsoninkcartridges.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.
A timely Response was received and determined to be complete on September 7, 2010.
On September 23, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Daniel B. Banks, Jr., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant Seiko Epson Corporation (Seiko Epson) is a multinational manufacturer of, and world leader in, the design, production, and distribution of high technology products, including printers, scanners, digital cameras, and video projectors. It has registered the EPSON mark numerous times with the U.S Patent and Trademark Office and the Canadian Intellectual Property Office.
Complainant Epson America, Inc., is the North and Latin American sales, marketing and customer service subsidiary of Seiko Epson and is responsible for the sale and distribution of EPSON brand products in various countries throughout North America, Central America and South America.
Complainants have been using the EPSON trademark and service mark in the United States, Canada and around the world for more than 30 years and have invested substantially in the trademark and service mark. EPSON has become synonymous with quality products such as printers and scanners and supplies for these products, including ink cartridges.
Respondent registered the domain name "epsoninkcartridges.com" on March 19, 2010. Complainants have not licensed or otherwise authorized Respondent to use the EPSON trademarks for any purpose. The website is currently nothing more than a forwarding page which links internet users to an Amazon.com site for Office Products listing multiple Epson Ink Cartridges.
On June 3, 2010, Complainants sent a cease-and-desist letter to Respondent. Respondent responded on June 8, 2010 stating their intentions were to use the EPSON mark without authorization. On June 18, 2010, Complainants received an additional correspondence on behalf of Respondent asking for monies in exchange for the domain.
Respondent has registered the disputed domain name which is confusingly similar to the EPSON mark. Respondent has no rights or legitimate interests in the domain name. Respondent has registered and is using the domain name in bad faith in that Respondent is attempting to attract Epson customers to its website through the use of the Epson trademark. Respondent was well aware of Complainant's Epson mark since the mark is registered multiple times and Complainants have been using the mark in the United States, Canada and around the world for more than 30 years. Respondent's use of the domain name containing Complainants' mark is likely to redirect internet users to their website causing a disruption of Complainants' business. Also, the use of the domain name is likely to create confusion as to Complainants' sponsorship and affiliation with the disputed domain name. It can be inferred that Respondent registered the domain name for the purpose of attracting internet users to the website through the unlicensed and unauthorized use of Complainants' EPSON mark.
Complainants’ rights in the EPSON mark are confirmed by multiple federal trademark registrations. Previous panels have already so held with regard to a number of formatives of Complainants' registered EPSON trademarks and service marks. Specifically, Complainants have previously procured transfer through the UDRP process of some 38 domain names which contain some formative of EPSON.
B. Respondent
Respondent claims that Complainant has acted in bad faith; has mischaracterized Respondent's communications; and has fraudulently misrepresented Respondent's use of the disputed domain. Respondent acknowledges that Complainant sent a notice of dispute and that Respondent sent a response. Respondent then sent a second response requesting further correspondence and repeated its assertion that it did not "intend to infringe on any rights held solely by others." Respondent is in the business of selling branded ink cartridges obtained through legal channels. Complainant is in the business of producing ink cartridges which it sells to thousands of resellers, each of whom use a Complainant "trademark" in advertising these products for sale. Complainant could easily have accepted Respondent's invitation to enter into discourse regarding what it might consider to be an acceptable method in which to sell its products.
Complainant also mischaracterizes Respondent's actions and communications. Complainant says that the website is currently nothing more than a forwarding page which links users to an Amazon.com site for Office Products. In fact, there is no "forwarding page" in place that refers visitors to another site. Visitors are referred without intermediary to an authorized Web Store that sells legally obtained EPSON brand ink cartridges. Also, the assertion that Respondent stated their intentions to "use the EPSON mark without authorization" is factually untrue. Respondent stated that it would welcome Complainant's "further comments while we discuss this matter with our team and advisors." In the same section of the Complaint, Respondent states that Respondent's communication of June 18, 2010 entailed "Respondent asking for monies in exchange for the domain." This is factually untrue. Respondent expressed concern to mitigate any economic losses, but any number of possible solutions could have been suggested by Complainant: a license agreement, shared ownership, or transfer to a third party, etc.
Complainant fraudulently misrepresents Respondent's use of the disputed domain name. Complainants' representation of the domain - shown in Complainants' Annex D - is an outright fabrication. This Annex displays a page of Epson ink products for sale with a simple header of "Epson Ink Cartridges," and no marks to distinguish the actual seller. Respondent submits its Annex A which contains the clear and unavoidable branding by "Amazon" at both the top and the bottom of the page. This serves to unquestionably define the seller as "not" Epson.
Complainants fail to demonstrate that Respondent's use of the disputed domain meets all three requirements of the UDRP Policy. Complainants' assertion of "confusingly similar" is invalid because the actual site makes a clear distinction between the Complainants and the site owner. Complainants rely on improper and irrelevant precedent in the assertion that "Respondent has no rights" in the domain. In the cases relied on my Complainants, the infringing party was willfully redirecting visitors to a page that displayed a series of links, some of which were to Complainants' competitors. That is not the case here where the domain directs to an authorized fulfillment partner of the site owner. Lastly, Complainant relies on faulty precedent to attempt to prove usage in "Bad Faith." In each case cited, a domain name was used to redirect visitors to the site of a competitor of the mark holder. Here, the domain name was used to sell legal and authorized products as produced by the Complainant.
Complainants' assertion that it has prevailed in numerous UDRP disputes fails to disclose that most of those disputes were uncontested. That should in no way be an indication of Complainants rightness in this action.
Respondent then presents two recent cases, one a UDRP proceeding, Steinway, Inc. v. Simon, FA 1318229 (Nat. Arb. Forum June 2, 2010) holding that there is no infringement where the user 1) actually offers the goods and services at issue; 2) the site is used to offer those goods; 3) the site accurately reveals the lack of affiliation on all relevant domain names, and 4) the user is not trying to corner the market on all relevant domain names. The other is a Federal Court trademark case, Toyota Motor Sales USA, Inc. v. Tabari (Ninth Circuit, US Court of Appeals, July 2010) holding in favor of Tabaris, an auto-broker who owned the domain name BuyOrLeaseLexus.com. The Court stated:
1 - "When customers purchase a Lexus through the Tabaris, they receive a genuine Lexus car sold by an authorized Lexus dealer, and a portion of the proceeds ends up in Toyota's bank account. Toyota doesn't claim the business of brokering Lexus cars is illegal or that it has contracted with its dealers to prohibit selling through a broker. Instead, Toyota is using trademark lawsuit to make it more difficult for consumers to use the Tabaris to buy a Lexus."
2 - "The Tabaris are using the term Lexus to describe their business of brokering Lexus automobiles; when they say Lexus, they mean Lexus. We've long held that such a use of the trademark is a fair use, namely nominative fair use. And fair use is, by definition, not infringement. The Tabaris did in fact present a nominative fair use defense to the district court."
3 - "Trademarks are part of our common language, and we all have some right to use them to communicate in truthful, non-misleading ways."
When a customer purchases an Epson Ink Cartridge through the EspsonInkCartridges.com website, the customer receives a genuine Epson product and a portion of the sale ends up in Epson's bank account.
FINDINGS
1 - The disputed domain name is identical and/or confusingly similar to a trademark in which the Complainant has rights.
2 - The Respondent has no rights or legitimate interests in respect of the domain name.
3 - The domain name has been registered and is being used in bad faith.
DISCUSSION
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 the 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 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.
Preliminary Issue: Multiple Complainants
The relevant rules governing multiple complainants are UDRP Rule 3(a) and the National Arbitration Forum’s Supplemental Rule 1(e). UDRP Rule 3(a) states, “Any person or entity may initiate an administrative proceeding by submitting a complaint.” The National Arbitration Forum’s Supplemental Rule 1(e) defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”
There are two Complainants in this matter: Seiko Epson Corporation and Epson America,
Inc. Complainant submits evidence to show that Complainant Seiko Epson Corporation is the owner of the EPSON marks and manufacturer of goods under that mark. Complainant further submits evidence showing that Epson America, Inc. is the North and Latin American sales, marketing, and customer service subsidiary of Seiko Epson Corporation. Complainant contends that both Complainants have been using the EPSON trademark together in the United States, Canada and around the world for more than thirty years in order to develop the EPSON brand.
This panel finds a sufficient nexus to allow the Complainants to be treated as one in this proceeding.
Complainant submits evidence to show that it owns several 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). The Panel finds that such evidence establishes Complainant’s rights in its 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant contends that Respondent’s <epsoninkcartridges.com> domain name is confusingly similar to Complainant’s EPSON mark. Complainant argues that the disputed domain name contains its mark entirely while adding the descriptive terms “ink” and “cartridges” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s EPSON mark under Policy ¶ 4(a)(i). See Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the respondent’s domain name combines the complainant’s mark with a generic term that has an obvious relationship to the complainant’s business); 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 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.”).
Respondent is neither a licensee of Complainant or otherwise authorized to use Complainant’s mark in any way. Further, Respondent is not commonly known by the disputed domain name or its invented word mark of EPSON. The WHOIS information for the disputed domain name identifies “H M LLC” as the registrant of the domain name. There is no evidence that Respondent is 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name).
Respondent is currently using the domain name as a forwarding page which links Internet users to a third-party product page at <amazon.com> that sells Complainant’s products. Respondent admits that the domain is used to connect users to Web Stores that legally sell Plaintiff's products. However, it does not appear that Respondent is selling the product but is only using the domain as a forwarding page to others. Complainant alleges that Respondent’s forwarding of Internet users attempting to locate Complainant’s website to a website selling Complainant’s products without authorization is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel finds that Respondent’s use of the disputed domain name to redirect Internet users to a website that sells Complainant’s products without authorization is not 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). See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors); see also Nat’l Collegiate Athletic Ass’n v. Halpern, D2000-0700 (WIPO Dec. 10, 2000) (finding that domain names used to sell the complainant’s goods without the complainant’s authority, as well as others’ goods, is not bona fide use).
Complainant further supplies evidence to show that Respondent has attempted to sell the disputed domain name to Complainant for $988. Further, the Panel may find that the WHOIS information states, within the administrative contact information, “This Domain For Sale – Price on Request.” Therefore, the Panel finds that Respondent’s willingness to dispose of its rights in the domain name to the general public, and its offer to transfer the domain name to Complainant for compensation above its out-of-pocket expenses in acquiring the domain name indicates Respondent’s lack of right and legitimate interests in the domain name under Policy ¶ 4(a)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Complainant has supplied evidence to show that Respondent has attempted to sell the disputed domain name to Complainant for $988 through its correspondence with Complainant. Complainant offers a letter from Respondent into evidence that states, “on past occasions we have ‘caught’ domain names on behalf of and that are of interest to IP holders, and transferred them for a minimal transfer and service fee – typically US$988...” Further, the Panel finds that the WHOIS information states, within the administrative contact information, “This Domain For Sale – Price on Request.” This Panel finds such conduct by Respondent to constitute bad faith registration. See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("[w]hat makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Respondent’s use of the disputed domain name is likely to create confusion as to Complainant’s sponsorship or affiliation with the disputed domain name and is further evidence of bad faith registration and use. Respondent is benefiting commercially from its use of the confusingly similar domain name because it is selling Complainant’s goods without authorization, presumably for profit. The Panel finds that Respondent’s use of the disputed domain name is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Kmart v. Khan, FA 127708 (Nat. Arb. Forum Nov. 22, 2002) (finding that if the respondent profits from its diversionary use of the complainant's mark when the domain name resolves to commercial websites and the respondent fails to contest the complaint, it may be concluded that the respondent is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv)); see also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
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 <epsoninkcartridges.com> domain name be TRANSFERRED from Respondent to Complainant.
Daniel B. Banks, Jr.,
Panelist
Dated: October 5, 2010
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