national arbitration forum

 

DECISION

 

Seiko Epson Corporation and Epson America, Inc. v. Amarit Phayangay

Claim Number: FA1109001409613

 

PARTIES

Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA.  Respondent is Amarit Phayangay (“Respondent”), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <buyepsonprinter.us>, registered with Godaddy.com, Inc.

 

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 September 29, 2011; the Forum received a hard copy of the Complaint on September 29, 2011.

 

On September 30, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <buyepsonprinter.us> 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 disputes brought by third-parties in accordance with the U.S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).

 

On September 30, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of October 20, 2011 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).

 

Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On October 26, 2011, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules.  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <buyepsonprinter.us> domain name is confusingly similar to Complainant’s EPSON mark.

 

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

 

3.    Respondent registered and used the <buyepsonprinter.us> domain name in bad faith.

 

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

 

FINDINGS

Complainant, Seiko Epson Corporation, is the international manufacturer of high technology products, including printers, that it markets and sells under its EPSON mark.  Complainant, Epson America, Inc., is the North and Latin American sales, marketing, and customer service subsidiary of Complainant, Seiko Epson Corporation.  The Panel finds that the two are substantially connected and for the rest of this decision will refer to the Complainants as the singular “Complainant.”  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its EPSON mark (e.g., Reg. No. 1,134,004 registered April 29, 1980).

 

Respondent, Amarit Phayangay, registered the <buyepsonprinter.us> domain name on May 22, 2010.  The disputed domain name resolves to a website that sells Complainant’s printer products and the products of 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 or is being used in bad faith.

 

Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.

 

Identical and/or Confusingly Similar

 

Complainant has presented evidence that it owns trademark registrations with the USPTO for its EPSON mark (e.g., Reg. No. 1,134,004 registered April 29, 1980).  The Panel has analyzed this evidence and determines that Complainant does, in fact, own trademark registrations with the USPTO.  Past UDRP panels have concluded that a complainant may establish UDRP ¶ 4(a)(i) rights in a mark by proving that it owns a USPTO trademark registration for the mark.  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 [UDRP] ¶ 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).  The Panel finds that Respondent does not reside or operate in the United States, where Complainant’s mark is registered, as the WHOIS information lists Thailand as the country Respondent resides or operates in.  Previous UDRP panels have found that a complainant is not required to register a mark within the country a respondent resides or operates and that a single trademark registration with any national trademark authority is sufficient to establish rights in a mark.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).  In accordance with this precedent, the Panel holds that Complainant has established Policy ¶ 4(a)(i) rights in its EPSON mark.

 

Complainant claims that the <buyepsonprinter.us> domain name is confusingly similar to Complainant’s EPSON mark because the only differences between the two is the additions of the generic term “buy,” the descriptive term “printer,” and the country-code top-level domain (“ccTLD”) “.us.”  The Panel finds that Complainant’s descriptions of the alterations to Complainant’s mark in the domain name are accurate.  Prior UDRP panels have determined that the additions of a generic term and a descriptive term fail to adequately distinguish a disputed domain name from a complainant’s mark.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”).  Previous panels have also found that the addition of the ccTLD “.us” is irrelevant to a Policy ¶ 4(a)(i) analysis.  See Check Into Cash, Inc. v. Questar, FA 1024235 (Nat. Arb. Forum Aug. 13, 2007) (holding that the addition of the ccTLD “.us” did not distinguish the disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)).  Consequently, the Panel concludes that Respondent’s <buyepsonprinter.us> domain name is confusingly similar to Complainant’s EPSON mark for the purposes of Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant has alleged that Respondent does not have any rights or legitimate interests in the <buyepsonprinter.us> domain name.  Past UDRP panels have found that the burden shifts to the respondent to prove it does have rights or legitimate interests when the complainant makes a prima facie case in support of its allegations under UDRP ¶ 4(a)(ii).  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 [UDRP].”).  The Panel in this case finds Complainant made a sufficient prima facie case.  Prior UDRP panels have held that the respondent’s failure to respond to the complaint allows the panel to infer that the respondent does not have rights or legitimate interests in the disputed domain name.  See Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed.  In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 

 

Complainant has failed to make any allegations under Policy ¶ 4(c)(i) and Respondent has failed to respond and present any evidence that it owns a service mark or trademark for the <buyepsonprinter.us> domain name.  Thus, the Panel chooses to examine the record and finds that there is no evidence that would allow the Panel to conclude that Respondent owns any service marks or trademarks that reflect the <buyepsonprinter.us> domain name.  Past panels have determined that the lack of evidence of a respondent’s ownership of trademark or service marks reflecting a disputed domain name is evidence that the respondent does not own rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i).  See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002 (finding that there was no evidence that Respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.com> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sep. 3, 2002) (holding that because Respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).  Therefore, the Panel finds that Respondent does not have rights and legitimate interests pursuant to Policy ¶ 4(c)(i). 

 

Complainant contends that Respondent is not commonly known by the <buyepsonprinter.us> domain name. Complainant asserts that Respondent does not hold any right as a trademark owner or licensee to use the EPSON mark.  The Panel accepts Complainant’s allegations as true in light of Respondent’s failure to respond and present conflicting evidence.  The Panel notes that the WHOIS information lists “Amarit Phayangay” as the registrant of the <buyepsonprinter.us> domain name.  Previous UDRP panels have held that a respondent is not commonly known by a disputed domain name when the complainant has not authorized the respondent to use the complainant’s mark, the WHOIS information does not indicate that the respondent is commonly known by the domain name, and there is no evidence in the record of such a fact.  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).  Thus, the Panel holds that Respondent is not commonly known by the <buyepsonprinter.us> domain name pursuant to Policy ¶ 4(c)(iii).

 

Complainant presents screen shot evidence that Respondent uses the <buyepsonprinter.us> domain name to resolve to a website that sells Complainant’s printers and the printers of Complainant’s competitors.  The Panel has reviewed the screen shots and determines that Respondent is selling Complainant’s printer products as well as competing products through the disputed domain name.  Past UDRP panels have determined that such a use is neither a bona fide offering of goods or services under UDRP ¶ 4(c)(i) nor a legitimate noncommercial or fair use of a disputed domain name under UDRP ¶ 4(c)(iii).  See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use); see also 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).  The Panel finds accordingly under Policy ¶¶ 4(c)(ii) and (iv).

 

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

 

Registration or Use in Bad Faith

 

The Panel has previously determined that Respondent is using the <buyepsonprinter.us> domain name to resolve to a website that sells both Complainant’s printers and the printers of Complainant’s competitors.  Prior UDRP panels have concluded that such a use disrupts a complainant’s business and is evidence of both UDRP ¶ 4(b)(iii) bad faith registration and use.  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under [UDRP] ¶ 4(b)(iii).”).  Based on the evidence in the record, this Panel presumes that Respondent registered the <buyepsonprinter.us> domain name for the purpose of making Respondent’s disruptive use.  Therefore, while the Panel is not required to find both bad faith registration and use, the Panel does in fact determine that Respondent registered and uses the <buyepsonprinter.us> domain name in bad faith under Policy ¶ 4(b)(iii).

 

Complainant argues that Respondent commercially benefits from the sale of printers on the website resolving from the <buyepsonprinter.us> domain name.  The Panel accepts Complainant’s arguments as true based on Respondent’s failure to contradict them and based on the Panel’s own examination of the record.  Previous UDRP panels have concluded that a respondent’s registration and use of a disputed domain name to sell competing products for commercial gain is evidence of bad faith registration and use under UDRP ¶ 4(b)(iv).  See Utensilerie Assoc. S.p.A. v. C & M, D2003-0159 (WIPO Apr. 22, 2003) (“The contents of the website, offering Usag products, together with the domain name may create the (incorrect) impression that Respondent is either the exclusive distributor or a subsidiary of Complainant, or at the very least that Complainant has approved its use of the domain name.”); see also Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to [UDRP] ¶ 4(b)(iv)”).  As the Panel has previously determined that Respondent registered the <buyepsonprinter.us> domain name for the purpose of using the domain name to sell competing products, the Panel again finds both bad faith registration and use pursuant to Policy ¶ 4(b)(iv).

 

Complainant also contends that Respondent could not have registered and used the disputed domain name without actual or constructive knowledge of Complainant and its rights in the EPSON mark.  While constructive notice has not been generally held to suffice for a finding of bad faith registration and use by UDRP panels, past UDRP panels have nonetheless found that a respondent registered and used a disputed domain name in bad faith under UDRP ¶ 4(a)(iii) if the respondent is found to have had actual notice of the complainant’s trademark rights.  See Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).  Based on Respondent’s use of the disputed domain name to sell Complainant’s printers and competing printers, the Panel finds that Respondent had actual notice of Complainant’s rights in its EPSON mark, which is further evidence of both bad faith registration and use.

 

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

 

DECISION

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

 

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

 

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  October 31, 2011

 

 

 

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