Seiko Epson Corporation and Epson America, Inc. v. Dung Tien
Claim Number: FA1205001443653
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, California, USA. Respondent is Dung Tien (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsoninc.com>, registered with Name.com.
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.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 11, 2012; the National Arbitration Forum received payment on May 11, 2012.
On May 14, 2012, Name.com confirmed by e-mail to the National Arbitration Forum that the <epsoninc.com> domain name is registered with Name.com and that Respondent is the current registrant of the name. Name.com has verified that Respondent is bound by the Name.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 May 17, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 6, 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@epsoninc.com. Also on May 17, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 June 8, 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. 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.
1. Complainant designs, produces, and distributes high technology products under the EPSON mark.
2. Complainant owns trademark registrations for the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390 registered April 28, 1987).
3. Respondent registered the <epsoninc.com> domain name on February 10, 2012.
4. The disputed domain name is confusingly similar to Complainant’s EPSON mark.
5. Respondent is not common known by the disputed domain name.
6. The <epsoninc.com> domain names resolve to a website which advertises and sells kitchen appliances, kitchen-related goods, outdoor grills, and furniture.
7. Respondent commercially benefits from the operation of its website.
8. Respondent had constructive notice of Complainant’s rights in the EPSON mark at the time Respondent registered the <epsoninc.com> domain name.
9. Complainant designs, produces, and distributes high technology products under the EPSON mark.
10. Complainant owns trademark registrations for the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,438,390 registered April 28, 1987).
11. Respondent registered the <epsoninc.com> domain name on February 10, 2012.
12. The disputed domain name is confusingly similar to Complainant’s EPSON mark.
13. Respondent is not common known by the disputed domain name.
14. The <epsoninc.com> domain names resolve to a website which advertises and sells kitchen appliances, kitchen-related goods, outdoor grills, and furniture.
15. Respondent commercially benefits from the operation of its website.
16. Respondent had constructive notice of Complainant’s rights in the EPSON mark at the time Respondent registered the <epsoninc.com> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its EPSON mark.
2. Respondent’s <epsonic.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name in bad faith.
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.”).
Complainant claims rights in the EPSON mark based on its registrations of the mark with the USPTO (e.g., Reg. No. 1,134,004 registered April 29, 1980). The Panel holds that Complainant’s registration of the EPSON mark with the USPTO is sufficient to confer rights in the mark pursuant to Policy ¶ 4(a)(i), despite the fact that Respondent resides in a country other than that in which Complainant has registered its mark. 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 Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction).
Complainant urges that Respondent’s <epsoninc.com> domain name is confusingly similar to its EPSON mark under Policy ¶ 4(a)(i). The Panel notes that the disputed domain name includes Complainant’s EPSON mark, the generic term “inc,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a generic term like “inc” is not sufficient to distinguish the disputed domain name from Complainant’s mark. See Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). Additionally, the Panel finds that the inclusion of a gTLD has no effect on the determination of whether a domain name is confusingly similar to Complainant’s mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). Accordingly, the Panel holds that Respondent’s <epsoninc.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 alleges that Respondent is not commonly known by the <epsoninc.com> domain name for the purposes of Policy ¶ 4(c)(ii). Complainant also claims that Respondent is not affiliated with Complainant in any way and has not been licensed by Complainant to use the EPSON mark. The Panel notes that the WHOIS information identifies the domain name registrant as “Dung Tien,” which the Panel finds bears no similarity to the <epsoninc.com> domain name. The Panel finds that Respondent has failed to meet its burden of producing a Response. Absent any evidence supporting the idea that Respondent is commonly known by the disputed domain name, the Panel concludes that Respondent is not commonly known by the disputed domain name for the purposes of 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).
Complainant further alleges that Respondent’s use of the disputed domain name to advertise and sell kitchen appliances, kitchen-related goods, outdoor grills, and furniture is 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). Past panels have found that Respondent’s use of a confusingly similar domain name to divert Internet users to its own website to sell goods or services unrelated to Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds accordingly. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant further alleges that Respondent’s use of the disputed domain name to advertise and sell kitchen appliances, kitchen-related goods, outdoor grills, and furniture is 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). Past panels have found that Respondent’s use of a confusingly similar domain name to divert Internet users to its own website to sell goods or services unrelated to Complainant does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. The Panel finds accordingly. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant contends that Respondent’s registered and uses the <epsoninc.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv)by attempting to attract Complainant’s customers to Respondent’s unrelated website for its own commercial gain. Complainant argues that Respondent’s selection of a confusingly similar domain name demonstrates an intent to misdirect Internet users seeking Complainant’s site, and that Respondent seeks to benefit from the goodwill that Complainant’s mark has garnered. The Panel notes that greater user traffic to Respondent’s site will likely result in greater sales of Respondent’s goods, thereby allowing Respondent to generate a commercial gain from the registration and use of the disputed domain name. The Panel holds that Respondent’s registration and use of the <epsoninc.com> domain name evidences attraction for commercial gain, which supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in the EPSON mark when Respondent registered the disputed domain name. The Panel disregards Complainant's arguments concerning constructive knowledge as past panels have held that constructive knowledge is not sufficient evidence of bad faith. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). The Panel finds that Respondent had actual knowledge of Complainant’s mark. The Panel concludes that Respondent registered the <epsoninc.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under 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 <epsoninc.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: June 20, 2012
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