Seiko Epson Corporation and Epson America, Inc. v. Scott Shores
Claim Number: FA1106001392830
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is Scott Shores (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonworkforce.com>, registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 9, 2011; the National Arbitration Forum received payment on June 9, 2011.
On June 9, 2011, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsonworkforce.com> domain name is registered with Enom, Inc. and that Respondent is the current registrant of the name. Enom, Inc. has verified that Respondent is bound by the Enom, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 13, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 2011 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@epsonworkforce.com. Also on June 13, 2011, 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 July 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <epsonworkforce.com> domain name is confusingly similar to Complainant’s EPSON and WORKFORCE marks.
2. Respondent does not have any rights or legitimate interests in the <epsonworkforce.com> domain name.
3. Respondent registered and used the <epsonworkforce.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, owns the EPSON and WORKFORCE marks which is uses in connection with the design, production, and distribution of high technology products, including printers. Complainant, Epson America, Inc., is a sales, marketing, and customer service subsidiary of Seiko Epson. The Panel elects to treat the two as a single entity for the purposes of this proceeding. Complainant has federal trademark registrations for the EPSON (e.g., Reg. 1,134,004 issued April 29, 1980) and WORKFORCE (e.g., Reg. No. 3,573,669 issued February 10,2009) marks with the United States Patent and Trademark Office (“USPTO”).
Respondent, Scott Shores, registered the disputed domain name on April 26, 2011. The disputed domain name resolves to a website which contains product reviews of various Epson Workforce printers, including links to competing third party websites where the products can be purchased.
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 contends that it has established rights in both the EPSON and WORKFORCE marks. Panels have found that registration with a federal trademark authority is sufficient to establish rights in a mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations). Proof of registration of Complainant’s EPSON mark has been provided to the Panel (e.g., Reg. 1,134,004 issued April 29, 1980). Proof of registration of Complainant’s WORKFORCE mark has likewise been provided e.g., Reg. No. 3,573,669 issued February 10,2009). As such, the Panel finds that Complainant has established rights in the EPSON and WORKFORCE marks under Policy ¶ 4(a)(i).
Respondent’s domain name may not be confusingly similar to Complainant’s marks. Panels have found that the addition of a generic top-level domain (“gTLD”) is of no significance when conducting a Policy ¶ 4(a)(i) analysis. See Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003) (“It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”) Additionally, combining two of a complainant’s marks fails to relieve the confusion regarding a disputed domain name, rather, it increases the confusion. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Respondent joined two of Complainants’ marks, EPSON and WORKFORCE, and followed them with a gTLD. Without more, the Panel finds that the <epsonworkforce.com> domain name is confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Once a complainant has made a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”). Where a respondent fails to respond to a Complaint, the panel may presume that the respondent lacks rights and legitimate interests in the disputed domain name. 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.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”). The Panel finds that Complainant has made a prima facie case, and it will now review the record to determine if Respondent has rights or legitimate interests in the disputed domain name.
Complainant claims that Respondent is not commonly known by the disputed domain name. WHOIS listings and additional information demonstrate whether a respondent is commonly known by a disputed domain name. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The WHOIS information for the disputed domain name fails to indicate that Respondent is commonly known by the <epsonworkforce.com> domain name. In addition, Complainant contends that it has in no way authorized Respondent to use either of its marks in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Panels have found that the use of a domain name to display links to third-party web pages which compete with a complainant’s business demonstrates a lack of rights and legitimate interests in a domain name. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (concluding that the use of a confusingly similar domain name to operate a portal with hyperlinks to various third-party websites, some of which may be in direct competition with a complainant, does not constitute 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 also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”). Upon reaching Respondent’s <epsonworkforce.com> domain name, Internet users are provided with information on Complainant’s products and given links to third-party websites which sell the products. Therefore, the Panel finds that Respondent’s use of the disputed domain name is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
When a respondent registers and uses a disputed domain name to display links to a complainant’s competitors and thus disrupt the complainant’s business, panels have found that the respondent acted in bad faith. 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 Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)). Respondent’s webpage offers commentary on Complainants’ products and provides links to third-party websites which sell the products discussed. Internet users who reach Respondent’s website as a result of the confusing similarity of the domain name will likely follow through the links and potentially purchase Complainant’s products from one of Complainant’s competitors rather than going to Complainant’s website and purchasing the products directly. Therefore, the Panel finds that Respondent’s use of the disputed domain name disrupts Complainant’s business under Policy ¶ 4(b)(iii).
Complainant contends that the attraction for commercial gain was a factor in Respondent’s decision to register and use the disputed domain name, thus demonstrating bad faith. Panels in the past have agreed that the use of a domain name to display links to third-party websites, from which the respondent is likely profiting, is evidence of bad faith. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Respondent’s domain name resolves to a page which offers product reviews on Complainant’s products and then displays links to third-party sites which offer the products for sale. Respondent likely receives compensation for displaying these links in connection with the goods that can be purchased through them. Therefore, the Panel finds that, pursuant to Policy ¶ 4(b)(iv), Respondent’s registration and use of the disputed domain name was done in bad faith as a result of the attraction for commercial gain in using it thusly.
The Panel finds that Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonworkforce.com> domain name be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: July 11, 2011
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