national arbitration forum

 

DECISION

 

Seiko Epson Corporation and Epson America, Inc. v. Mint

Claim Number: FA1206001449525

 

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <epson-support.us>, registered with GoDaddy.com, LLC.

 

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.

 

David P. Miranda, Esq., as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on June 19, 2012; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2012.

 

On June 20, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <epson-support.us> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name.  GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 July 2, 2012, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of April 25, 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”).

 

A timely Response was received and determined to be complete on July 23, 2012.

 

On July 31, 2012, 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’s Additional Submission was received on August 13, 2012, Respondent’s additional Submission on August 20, 2012.  Both were considered by the Panel.  The supplemental correspondence of Complainant dated August 22, 2012 and Respondent dated August 23, 2012 is untimely and not relied upon.

 

RELIEF SOUGHT

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

 


Preliminary Issue: Multiple Complainants

 

There are two Complainants in this matter: Seiko Epson Corporation and Epson America, Inc. Complainant Seiko Epson Corporation is an international manufacturer of the design, production, and distribution of high technology products. Complainant Epson America, Inc. is the North and Latin American sales, marketing, and customer services subsidiary of Seiko Epson. Further, Complainant asserts that Epson America, Inc. is a licensee of the EPSON trademark and the Complainants have been using the mark around the world for over 30 years.

 

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 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.

 

Panels have already addressed the issue of Complainants Seiko Epson Corporation and Epson America, Inc., jointly filing a complaint and have concluded there is sufficient nexus or link between the Complainants. Seiko Epson Corp. v. Mihaljevi, FA 438102 (Nat. Arb. Forum May 16, 2012); see also Seiko Epson Corp. v. Hypernet Group, FA 437882 (Nat. Arb. Forum May 6, 2012); see also Seiko Epson Corp. v. Wisnuwardhana Prasastajati, FA 427764 (Nat. Arb. Forum March 15, 2012) (“Complainant Epson America, Inc., is a subsidiary of Complainant, Seiko Epson Corporation, which establishes a sufficiently close relationship between them to permit them to act as one Complainant in this matter.”); see also Seiko Epson Corp. v. KATCOMP Consulting, FA 418328 (Nat. Arb. Forum Jan. 20, 2012).

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends that Complainant has rights in the EPSON mark, which it uses in connection with high technology products and services related to printers, scanners, digital cameras, and video projectors.  Complainant asserts that it has rights to multiple United States Patent and Trademark Office (“USPTO”) registrations for the EPSON mark (including, Reg. No. 1,917,610 registered September 12, 1995 which identifies “Seiko Epson Kabushiki Kaisha (Japan Joint Stock Company), d/b/a Seiko Epson Corporation”; and Reg. No. 2,266,760 registered August 3, 1999 which identifies “Seiko Epson Kabushiki (Japan Joint Stock Company) a/k/a Seiko Epson).  Complainant contends the <epson-support.us> domain name is confusingly similar to the EPSON mark, Respondent is not commonly known by the <epson-support.us> domain name, and Respondent is using the <epson-support.us> domain name to sell services that directly compete with Complainant.  Complainant contends Respondent’s bad faith is evident by its willingness to transfer the disputed domain name to Complainant for a price.  Complainant contends the <epson-support.us> domain name is disruptive to Complainant’s business, the disputed domain name takes commercial advantage of Internet users’ mistakes, and Respondent registered the <epson-support.us> domain name with knowledge of Complainant’s rights in the EPSON mark.

 

B. Respondent

Respondent contends Complainant has not established that it has exclusive rights to the EPSON mark.  Complainant does not have the authority to give or deny authorization to a third party regarding the use of the EPSON mark.  Respondent’s services are limited to providing diagnostic and technical help to customers whose printers or scanners are malfunctioning.  Respondent’s delay in transferring the disputed domain name in exchange for reimbursement of its out-of-pocket costs was due solely to its request that Complainant provide proof of its ownership of the trademark or that it was acting on behalf of the trademark owner so that the disputed domain name was transferred to the correct entity.  Respondent’s services offered do not compete with any services offered by Complainant.  Respondent is not using the disputed domain name in a bad faith attempt to mislead customers.  The disputed domain name includes disclaimers to ensure clarity of its independence from Complainant.

 

C. Additional Submissions

Complainant’s and Respondent’s Additional Submissions of August 13, 2012 and August 20, 2012 respectively were also considered by the Panel.

 

FINDINGS

Complainant has established that the domain name at issue <epson-support.us> registered by Respondent is identical or confusingly similar to federal registered trademarks in which Complainant has rights, that Respondent has no rights or legitimate interests in respect to the domain name and the domain name has been registered and is being used in bad faith.  Thus, having established all three elements required under the UDRP Rules, the domain name is directed to be transferred to Complainant.

 

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."

 

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.

 

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 alleges that it has rights in the EPSON mark.  Complainant claims ownership interest to USPTO registrations for the EPSON mark (e.g., Reg. No. 1,134,004 registered April 29, 1980), used in connection with high technology goods and services such as repair services for printers, cameras, etc.  The registration of a mark with a federal trademark authority is evidence of rights in the 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 UDRP ¶ 4(a)(i)); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001).

 

Complainant is attempting to establish its rights in the EPSON mark by virtue of its United States Patent and Trademark Office (“USPTO”) registrations for the mark, at least two of the registered marks upon which the Complaint is based identify Complainant in the registration. (Reg. No. 1,917,610 registered September 12, 1995 which identifies “Seiko Epson Kabushiki Kaisha (Japan Joint Stock Company), d/b/a Seiko Epson Corporation”; and Reg. No. 2,266,760 registered August 3, 1999 which identifies “Seiko Epson Kabushiki (Japan Joint Stock Company) a/k/a Seiko Epson).  Registration of a mark with a federal trademark authority, such as the USPTO, establishes a complainant’s rights in mark where there is no predating issue. The domain name at issue, <epson-support.us>, was registered on April 19, 2012.  As the EPSON mark was registered over 30 years prior to the registration of the disputed domain name, there is no predating issue that would render the trademark registration insufficient for a finding of rights under Policy ¶ 4(a)(i).  In the current dispute, the EPSON mark is registered with a federal trademark authority in the United States, and Respondent lives and/or operates in India. Where a respondent to a dispute lives or operates outside of the country that the trademark is registered in, the rights still satisfy the required showing of Policy ¶ 4(a)(i) and thus that the complainant still has rights in the mark. See Seiko Epson Corp. v. Dung Tien, FA 1443653 (Nat. Arb. Forum June 20, 2012) (finding that Complainant’s USPTO registrations for the EPSON mark were sufficient to confer rights to complainant in the mark despite respondent being located in Vietnam); see also Seiko Epson Corp. v. Mihaljevic, FA 1438102 (Nat. Arb. Forum May 16, 2012).

 

Complainant argues that the <epson-support.us> domain name is confusingly similar to the EPSON mark.  Respondent’s addition of a hyphen is irrelevant to a Policy ¶ 4(a)(i) analysis. See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000).  Finally, Respondent’s addition of the country-code top-level domain (“ccTLD”) “.us” does not negate a finding of confusing similarity. See Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). The Panel finds that the <epson-support.us> domain name is confusingly similar to the EPSON mark under Policy ¶ 4(a)(i).

 

Therefore, the Panel finds that Complainant has rights in the EPSON mark under 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).

 

Complainant asserts that there is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <epson-support.us> domain name.  Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002).

 

Complainant asserts that Respondent is not commonly known by the <epson-support.us> domain name.  Respondent is not identified by the disputed domain name in an individual or business capacity.  Complainant argues that the EPSON mark has no meaning apart from identifying Complainant and its products, and Respondent has not been licensed or otherwise authorized to use the EPSON mark.  Further, the WHOIS record for the <epson-support.us> domain name lists “Mint” as the domain name registrant.  Therefore, the Panel finds that Respondent is not commonly known by the <epson-support.us> domain name pursuant to Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007).

 

Complainant contends that Respondent has neither rights nor legitimate interests in the disputed domain name. Complainant notes that the <epson-support.us> domain name resolves to a website which offers technical support services for a variety of Epson products.  The operation of a competing business through a disputed domain name does not provide the respondent with rights and legitimate interests under Policy ¶¶ 4(c)(ii) and 4(c)(iv). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006).  Therefore, the Panel finds that Respondent’s use of the <epson-support.us> domain name is neither a Policy ¶ 4(c)(ii) bona fide offering of goods or services nor a Policy ¶ 4(c)(iv) legitimate noncommercial or fair use.

 

Registration or Use in Bad Faith

 

Complainant contends that Respondent registered and is using the <epson-support.us> domain name in bad faith.  Complainant alleges that Respondent’s <epson-support.us> domain name is disruptive to Complainant’s business. Complainant argues that the <epson-support.us> domain name resolves to a website where Respondent is operating a competing customer service and technical support services. In DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005), the panel held that bad faith is clear from the nature of directly competing services being offered via a disputed domain name’s resolving website.  The <epson-support.us> domain name offers a service in competition with Complainant using Complaint’s mark and that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iii).

 

Complainant argues that the <epson-support.us> domain name is meant to attract Internet users in order to take commercial advantage of their mistakes as a result of the confusion created by Respondent as to the source of the disputed domain name.  The <epson-support.us> domain name resolves to a website operating a competing business in the customer and technical support services industry.  Complainant contends that Respondent is trying to usurp the goodwill associated with the EPSON mark in order to attract Internet users to the <epson-support.us> domain name by allowing them to believe the disputed domain name is affiliated with Complainant.  Complainant alleges that Respondent registered and began using the <epson-support.us> domain name with knowledge of Complainant’s rights in the EPSON mark. Complainant states that the EPSON mark has been registered multiple times over and has been used for over 30 years world-wide.

 

The Panel finds that Respondent registered and is using the <epson-support.us> domain name in bad faith under Policy ¶ 4(b)(iv). See Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001).

 

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 <epson-support.us> domain name be TRANSFERRED from Respondent to Complainant.

 

 

David P. Miranda, Esq., Panelist

Dated:  August 24, 2012

 

 

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