national arbitration forum

 

DECISION

 

Seiko Epson Corporation and Epson America, Inc. v. Danica Mihaljevic

Claim Number: FA1204001438102

 

PARTIES

Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, USA.  Respondent is Danica Mihaljevic (“Respondent”), Australia.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <epson-workforce-610.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 April 4, 2012; the National Arbitration Forum received payment on April 4, 2012.

 

On April 5, 2012, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <epson-workforce-610.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 5, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 25, 2012 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@epson-workforce-610.com.  Also on April 5, 2012, 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 May 2, 2012, 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 Electronic and Written Notices, as defined in Rule 1 and Rule 2.

 

RELIEF SOUGHT

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

 

PARTIES' CONTENTIONS

A. Complainant

Complainant makes the following contentions:

a)    Complainant has rights in the EPSON mark which it uses in connection with the design, production, and distribution of high technology products, including printers;

b)    Complainant has registrations through the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (e.g., Reg. No. 1,134,004 registered April 29, 1980);

c)    Complainant has rights in the WORKFORCE mark which it also uses in connection with the design, production, and distribution of high technology products, including printers;

d)    Complainant has USPTO registrations for the WORKFORCE mark (e.g., Reg. No. 3,573,669 registered February 10, 2009);

e)    Respondent registered the <epson-workforce-610.com> domain name on December 17, 2011;

f)     The <epson-workforce-610.com> domain name is confusingly similar to the EPSON mark;

g)    Respondent is not commonly known by the <epson-workforce-610.com> domain name;

h)    The <epson-workforce-610.com> domain name resolves to a website which provides product information for Complainant’s EPSON WORKFORCE 610 printer as well as links to the competing third-party website <amazon.com> where the EPSON WORKFORCE 610 printer may be purchased;

i)      The <epson-workforce-610.com> domain name is disruptive;

j)      The <epson-workforce-610.com> domain name was meant to divert Internet users seeking Complainant so that Respondent may profit from confusion regarding the source of the disputed domain name.

 

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Complainant has rights in its EPSON and WORKFORCE marks.

2.    Respondents domain name, <epson-workforce-610.com>, is confusingly similar to Complainant’s marks.

3.    Respondent has no rights to or legitimate interests in the disputed domain name.

4.    Respondent registered and used the domain name in bad faith.

 

DISCUSSION

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, 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 throughout these regions. Complainant, Epson America, Inc., is additionally a licensee of the EPSON trademark and service mark. As such, Complainants contend that they should be considered a single entity for the purposes of the present dispute.

 

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.).

 

The Panel accepts that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants, it treats them all as a single entity in this proceeding, the Complainants will be collectively referred to as “Complainant.”

 

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.

 

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.”).

 

Identical and/or Confusingly Similar

 

Complainant contends that it has rights in the EPSON mark. Complainant argues that it has USPTO registrations for the EPSON mark (e.g., Reg. No. 1,134,004 registered April 29, 1980). Panels have found that, regardless of the location of the parties to a dispute, the registration of a mark demonstrates rights in a mark. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)); 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). The Panel finds that Complainant has rights in the EPSON mark under Policy ¶ 4(a)(i).

 

Complainant asserts that it also has rights in the WORKFORCE mark. Complainant provides that it has rights in the WORKFORCE mark by way of USPTO trademark registrations (e.g., Reg. No. 3,573,669 registered February 10, 2009). Panels have found that rights in a mark are evident after registration with a trademark authority regardless of the location of the parties. See Metro. Life Ins. Co. v. Bonds, supra; see also Williams-Sonoma, Inc. v. Fees, supra. Therefore, the Panel finds that Complainant has rights in the WORKFORCE mark pursuant to Policy ¶ 4(a)(i).

 

Complainant asserts that the <epson-workforce-610.com> domain name is confusingly similar to the EPSON mark. The Panel finds that the addition of WORKFORCE,  also a mark of Complainant’s, increases confusing similarity rather than mitigating it. 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. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”). The Panel also finds that the addition of the descriptive term “610” does not distinguish the <epson-workforce-610.com> domain name from the EPSON mark. See Am. Online, Inc. v. Karandish, FA 563833 (Nat. Arb. Forum Nov. 2, 2005) (finding that the addition of the descriptive term “talk” to a registered mark does not sufficiently distinguish a domain name under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). Additionally, the Panel finds that Respondent’s addition of hyphens and the generic top-level domain (“gTLD”) in the disputed domain name is irrelevant. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark). Therefore, the Panel finds that the <epson-workforce-610.com> domain name is confusingly similar to the EPSON mark pursuant to Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

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 <epson-workforce-610.com> domain name. Complainant contends that it has not licensed or otherwise authorized Respondent to use its marks in a domain name. Complainant asserts that Respondent, having only registered the disputed domain name within the last six months, has not generated a reputation relating to the <epson-workforce-610.com> domain name by which it could claim it is commonly known by. Additionally, the WHOIS record Complainant provides for the <epson-workforce-610.com> domain name lists “Danica Mihaljevic” as the domain name registrant. Panels have previously found that a complainant’s contentions and the WHOIS record for a domain name are strong evidence of whether a Respondent is commonly known by a disputed domain name. 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).

 

Complainant asserts that the <epson-workforce-610.com> domain name is not used in a way which provides Respondent with rights or legitimate interests. Complainant asserts that the <epson-workforce-610.com> domain name provides information on Complainant’s WORKFORCE 610 printer and links to competing websites where the printer, and others, are sold. 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. See ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be 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)); see also Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not 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)).

 

 

Registration and Use in Bad Faith

 

Complainant contends that Respondent’s registration and use of the <epson-workforce-610.com> domain name was done in bad faith. Complainant asserts that the disputed domain name displays information about one of Complainant’s products, as well as links to competing websites selling similar products. Previously, panels have found that websites which display competing links are disruptive. See 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).”); 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). Therefore, the Panel finds that Respondent acted in bad faith as the registration and use of the <epson-workforce-610.com> domain name are disruptive to Complainant’s business under Policy ¶ 4(b)(iii).

 

Complainant also argues that bad faith is evident due to the <epson-workforce-610.com> domain name being registered and used in order to divert Internet users from Complainant’s website and to confuse them regarding the source of the <epson-workforce-610.com> domain name so that Respondent may profit from their mistakes. Complainant contends that the <epson-workforce-610.com> domain name resolves to a website which displays information about a product of Complainant’s, as well as links to a competing third-party website.  The Panel infers that Respondent profits from this content display. Therefore, the Panel finds that Respondent registered and is using the disputed domain in bad faith as it attempted to divert Internet users from Complainant’s website in order to confuse them as to the source of the disputed domain name and then to take commercial advantage of the mistakes they make in connection with this confusion. See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes); see also 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).”).

 

 

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 <epson-workforce-610.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Tyrus R. Atkinson, Jr., Panelist

Dated:  May 16, 2012

 

 

 

 

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