Seiko Epson Corporation and Epson America, Inc. v. KATCOMP Consulting
Claim Number: FA1112001418328
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is KATCOMP Consulting (“Respondent”), Pennsylvania, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonsux.com>, 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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 5, 2011; the National Arbitration Forum received payment on December 5, 2011.
On December 5, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <epsonsux.com> 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 8, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 28, 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@epsonsux.com. Also on December 8, 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.
A timely Response was received and determined to be complete on December 22, 2011.
On December 30, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant Seiko Epson Corporation and Epson America, Inc. of Long Beach, California (“Complainant”) seeks transfer of the domain name <epsonsux.com> from Respondent KATCOMP Consulting of Dallas, Pennsylvania (“Respondent”). Complainant contends that it has eleven registrations with the United States Patent and Trademark Office for the EPSON mark with the use in commerce dating back to as early as 1975. (Reg. No. 1,134,004, first used in interstate commerce on April 8, 1975 and registered April 29, 1980; (2) 1,187,440, first used in interstate commerce in January 1976 and registered January 26, 1982; (3) 1,917,610, registered September 12, 1995; (4) 2,144,386, first used in interstate commerce in November 1987 and registered March 17, 1998; (5) 2,266,760, first used in interstate commerce in May 1975 and registered August 3, 1999; (6) 2,949,374, first used in interstate commerce on April 1, 1975 and registered May 10, 2005; (7) 3,044,202, first used in interstate commerce on April 1, 2004 and registered January 17, 2006; (8) 3,066,469, first used in interstate commerce on May 1, 2001 and registered on March 7, 2006; (9) 3,092,025, first used in interstate commerce in January 2004 and registered May 16, 2006; (10) 3,385,803, registered February 19, 2008; and (11) 3,520,274, first used in interstate commerce on March 31, 1988, and registered October 21, 2008.
Complainant’s registrations are for goods and services related to printers and various related technologies. Complainant has used the EPSON marks in the United States and around the world, for over thirty years and contend to have substantial goodwill in the minds of consumers in connection with the mark EPSON. Complainant contends that its trademark EPSON is entirely reproduced in the disputed domain and said domain is confusingly similar to its mark. Complainant further contends that the addition of the suffix “sux” may cause further confusion with Complainant. Complainant further contends that Respondent has no rights or legitimate interests in the disputed domain name, that Respondent does not hold any right as a Licensee to use the EPSON mark, is not associated with the Complainant and that Respondent is not commonly known or identified by the domain name. Furthermore, Respondent’s non-use of the disputed domain name does not infer any rights or legitimate interests. Complainant contends that Respondent has registered and is using the domain name at issue in bad faith, by using it to draw EPSON consumers to the Respondent’s website, through the unauthorized use of the EPSON mark. Complainant further contends bad faith based upon a lack of active use of the domain name. Complainant contends that it is reasonable to infer that Respondent’s purpose of registration and use was either to disrupt or create confusion for Complainant’s business in bad faith.
B. Respondent
Respondent contends that it is not a competitor of Epson, does not sell any goods that can be used with Epson products, but rather as a consumer of Epson products, it purchased the domain name for the express purpose of putting up a website to disseminate information regarding the poor customer service Epson provides to their customers. Respondent contends that the domain name is currently inactive because of some difficulties with website registrar GoDaddy which prevents Respondent from activating the website. Respondent contends it does not have control over the domain name, that it is not profiting from the use of the domain, and it is the Respondent’s intention to use the website to disseminate information regarding the poor customer service of Epson as soon as the registrar permits his access. Respondent further contends that the domain has not been offered for sale or auction and is not used to steer customers to a competitor’s website.
Complainant has established that the domain name registered by Respondent is identical or confusingly similar to the trademark or service mark in which Complainant has rights; that the domain has been registered and used in bad faith, and as such the domain name should be transferred.
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."
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
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 asserts that Epson America, Inc. is the North and Latin American sales, marketing, and customer service subsidiary of Seiko Epson Corporation, and therefore that the entities are sufficiently linked to bring this Complaint as one.
Complainant claims rights in the EPSON mark based on its multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”). Registration of a mark with the USPTO is sufficient to establish rights in a mark under Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also 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). Complainant has established rights in the EPSON mark under Policy ¶ 4(a)(i).
Complainant urges that the <epsonsux.com> domain name is confusingly similar to Complainant’s EPSON mark under Policy ¶ 4(a)(i). The disputed domain name wholly includes Complainant’s mark, while adding the term “sux” and the generic top-level domain (“gTLD”) “.com.” Respondent’s addition of the term “sucks” does not defeat confusing similarity. See ADT Servs. AG v. ADT Sucks.com, D2001-0213 (WIPO Apr. 23, 2001) (exploring the difference of opinion among panels on "sucks" domain name disputes and concluding that use of the "sucks" suffix does not defeat the complainant's confusing similarity argument). Respondent’s addition of the term “sux” is sufficiently similar to “sucks” to warrant similar treatment, thereby defeating a claim of non-confusing similarity. The <epsonsux.com> domain name is confusingly similar to Complainant’s EPSON mark under Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends that Respondent is not commonly known by the <epsonsux.com> domain name for the purposes of Policy ¶ 4(c)(ii). The WHOIS information identifies the domain name registrant as “KATCOMP Consulting” providing evidence that Respondent lacks rights or legitimate interests in the disputed 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). Complainant provides that it has not licensed or otherwise authorized Respondent’s registration of a domain name that incorporates Complainant’s mark. Respondent does not present any evidence to refute Complainant’s assertion that Respondent is not commonly known by the disputed domain name. The Panel finds that Respondent is not commonly known by the <epsonsux.com> domain name for the purposes of ¶ 4(c)(ii). 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 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 further contends that Respondent’s registration and use of the disputed domain name does not represent a bona fide offering of goods or services under ¶ 4(c)(i) or a legitimate noncommercial or fair use under ¶ 4(c)(iii). Complainant contends that the disputed domain name resolves to a parked website featuring links to third-party sites, some of which offer ink and printing products which directly compete with Complainant’s business. See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with 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)); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services).
Respondent contends that its registration of the disputed domain name for the purpose of creating a criticism site of Complainant’s products represents a legitimate right or interest in the disputed domain name. While a respondent may be entitled to create this type of criticism site, that does not grant a respondent the right to use a complainant’s mark in the disputed domain name. See Name.Space Inc. v. Network Solutions, Inc., 202 F.3d 573, 585 (2d Cir. 2000) (finding that although the content of the respondent’s site may be entitled to First Amendment protection, the respondent’s use of the complainant’s trademark in the domain name of its site is not protected.); see also Weekley Homes, L.P. v. Fix My House Or Else?, FA 96609 (Nat. Arb. Forum Apr. 18, 2001) (finding that establishment of a website containing criticism is not a legitimate use of the <davidweekleyhome.com> domain name because the disputed domain name is confusingly similar to the complainant's DAVID WEEKLEY HOMES mark). Respondent offers no proof of its effort to use the domain for noncommercial purposes or as a criticism site.
Complainant alleges that Respondent’s registration and use of the disputed domain name constitutes bad faith disruption of Complainant’s business under Policy ¶ 4(b)(iii). Complainant contends that Respondent’s use of a confusingly similar domain name increases the likelihood that visitors to Respondent’s site will have intended to visit Complainant’s site. Misdirected visitors are exposed to advertisements for products that compete with Complainant’s, and may ultimately end up purchasing competing products. This constitutes bad faith disruption of Complainant’s business 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 St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes that by redirecting Internet users seeking information on Complainant’s educational institution to competing websites, Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant further alleges that Respondent’s registration and use of the disputed domain name constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). Respondent increases traffic to its website through the use of a confusingly similar domain name. This type of use constitutes bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also 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).
Respondent has alleged that it is not in control of the content of the resolving website, but offers no further evidentiary support. Respondent is ultimately responsible for how its domain name is used, and its argument does not prevent a finding of bad faith under Policy ¶ 4(a)(iii). See State Farm Mut. Auto. Ins. Co. v. Pompilio, FA 1092410 (Nat. Arb. Forum Nov. 20, 2007) (“As a rule, the owner of a parked domain name does not control the content appearing at the parking site. Nevertheless, it is ultimately [the] respondent who is responsible for how its domain name is used.”); see also Express Scripts, Inc. v. Windgather Invs. Ltd., D2007-0267 (WIPO Apr. 26, 2007) (finding that it makes no difference that a respondent contends that the advertisements in this case were “generated by the parking company,” the respondent still registered and used the disputed domain name in bad faith).
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. Respondent does not contest this claim. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii) if Respondent is found to have had actual notice of 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonsux.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: January 20, 2012
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