Seiko Epson Corporation and Epson America, Inc. v. Hendy Mahardhika / SMP Negeri 1 Sutojayan
Claim Number: FA1210001466069
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is Hendy Mahardhika / SMP Negeri 1 Sutojayan (“Respondent”), Indonesia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <buyepsonstyluspro.info>, registered with GoDaddy.com LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 5, 2012; the National Arbitration Forum received payment on October 5, 2012.
On October 10, 2012, GoDaddy.com LLC confirmed by e-mail to the National Arbitration Forum that the <buyepsonstyluspro.info> domain name is registered with GoDaddy.com LLC and that Respondent is the current registrant of the names. 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 ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On October 12, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 1, 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@buyepsonstyluspro.info. Also on October 12, 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 November 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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.
A. Complainant
Complainant contends as follows:
Complainant, Seiko Epson Corporation, is an international manufacturer of the design, production, and distribution of technology products including printers, scanners, digital cameras, and video projectors. Co-complainant, Epson America, Inc., is the North and Latin American sales, marketing, and customer service subsidiary of Seiko Epson Corporation. Epson America, Inc. is responsible for the sale and distribution of EPSON brand computer products and other technology products in various countries throughout North America, Central America, and South America. Complainant owns several trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (e.g., Reg. No. 1,134,004, registered April 29, 1980).
Epson America is a licensee of the EPSON trademark and service mark for the distribution and sale of products and services offered throughout North America, Central America, and South America, including printers, scanners, digital cameras, video projectors, and supplies for these products.
Respondent’s <buyepsonstyluspro.info> domain name is confusingly similar to Complainant’s EPSON marks as merely adding the generic term “buy” and the descriptive term “styluspro” does not distinguish Respondent’s domain name from Complainant’s EPSON mark. Further, the addition of the generic top-level domain “.info” has been found to be irrelevant to a Policy ¶4(a)(i) analysis.
Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the EPSON mark.
Respondent is using the disputed domain name to divert Internet users from reaching Complainants’ website, for Respondent’s commercial benefit. Additionally, Respondent’s website facilitates sales of EPSON products that directly compete with Complainants’ website by encouraging Internet users to purchase EPSON products from third parties instead of directly from Complainants. These are not bona fide offerings of goods or services under Policy ¶ 4(c)(i) nor legitimate noncommercial or fair uses under Policy ¶ 4(c)(iii).
Respondent has registered and is using the disputed domain name in bad faith.
The at-issue domain name currently addresses an active website that provides product information and reviews for various EPSON products including, but not limited to, the EPSON Stylus series of printers, the EPSON WORKFORCE® series of printers, the EPSON ARTISAN® series of printers, and other related products such as EPSON ink printer cartridges. The website also contains various links entitled “Order Now” or “Shop Printers & Ink” which forward Internet users to Amazon.com where the advertised EPSON products may be purchased.
Respondent is using the disputed domain name to draw Internet users to Respondent’s website, for Respondent’s own commercial gain. Respondent’s use of the disputed domain name constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii).
Respondent is attempting to profit through “click-through” fees from the confusion caused by the similarities between Respondent’s domain name and Complainants’ mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Seiko Epson Corporation owns several trademark registrations with the USPTO for the EPSON mark.
Epson America Inc. is a subsidiary of Co-complainant Seiko Epson Corporation and licensee of the EPSON mark. (The Complaints are collectively referred to as Complainant herein after).
Respondent registered the at-issue domain name after Complainant acquired rights in the EPSON mark.
Respondent is not licensed or otherwise entitled to use Complainant’s trademark.
The at-issue domain name currently addresses an active website that provides product information and reviews for various EPSON products including, but not limited to, the EPSON Stylus series of printers, the EPSON WORKFORCE® series of printers, the EPSON ARTISAN® series of printers, and other related products such as EPSON ink printer cartridges. The website also contains various links entitled “Order Now” or “Shop Printers & Ink” which forward Internet users to Amazon.com where the advertised EPSON products may be purchase.
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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings there are two Complainants, Seiko Epson Corporation and Epson America, Inc. Paragraph 3(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that “[a]ny 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.” (Emphasis added)
Seiko Epson is the nominal registrant of the EPSON mark. Epson America Corporation is the wholly owned subsidiary and licensee of Seiko Epson. Numerous prior UDRP panels have found that these two complainants maintain a sufficient legal connection to one another to be treated singularly. For example: see Seiko Epson Corporation and Epson America, Inc. v. Hypernet Group, FA 437882 (Nat. Arb. Forum May 6, 2012) (“There is a sufficient legal connection between the parties to treat them commonly under Supp. Rule 1(e) since the later entity is a subsidiary of the former and a licensee of the former’s at-issue trademarks.”); see also Seiko Epson Corporation and Epson America, Inc. 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.”) The Panel finds accordingly and will treat Complainants as a common entity for purposes of the instant proceeding.
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant has rights in the EPSON mark since Complainant registered the mark with the USPTO. Registration with a recognized trademark authority conclusively demonstrates that a complainant has rights in the registered mark under Policy ¶ 4(a)(i). See 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). Such is the case regardless of whether or not Respondent’s location (here Indonesia) is outside the jurisdiction of the registrant. 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).
Respondent’s <buyepsonstyluspro.info> domain name is confusingly similar to Complainant’s EPSON marks since merely adding the generic term “buy” as a prefix and the term “styluspro,” a popular brand of Epson printers, does not distinguish Respondent’s domain name from Complainant’s EPSON mark. Furthermore, the addition of the top level domain name “.com” is irrelevant to Policy ¶4(a)(i) analysis. 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”); see also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”)
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in respect of the the at-issue domain names, Complainant’s prima facie showing acts conclusively.
The WHOIS information for <buyepsonstyluspro.info> identifies the domain name’s registrant as “Hendy Mahardhika / SMP Negeri 1 Sutojayan.” The documentation before the Panel contains no evidence that tends to prove that Respondent is commonly known by the at-issue domain name, notwithstanding the WHOIS information. The Panel therefore concludes that Respondent is not commonly known by the domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent is using the disputed domain name to divert Internet users to Respondent’s own website for commercial benefit. The Panel presumes Respondent’s intent is to confuse Internet users because of the familiarity of the EPSON mark, the similarity of Respondent’s domain name to Complainant’s mark, and the fact that the domain name incorporates both the EPSON mark and the name of a popular series of EPSON printers, Stylus Pro. Moreover, Respondent’s website facilitates sales of EPSON products that directly compete with Complainant’s website by encouraging Internet users to purchase EPSON products from third parties, such as <amazon.com>, instead of directly from Complainant. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates, pursuant to Policy ¶4(a)(ii), Respondent’s lack of rights and lack of interests in respect of the each of the at-issue domain names.
The at-issue domain name was registered and used in bad faith. As discussed below, multiple Policy ¶4(b) bad faith circumstances are present and there is additional non-Policy ¶4(b) evidence from which the Panel may conclude that Respondent acted in bad faith in registering and using the at-issue domain name.
Respondent is using the disputed domain name to capitalize on confused Internet users who try to reach Complainant, and who are instead redirected to Respondent’s <buyepsonstyluspro.info> website. Respondent attempts to divert its website’s visitors to third-party vendors by advertising Complainant’s products for sale and directing visitors to purchase Complainant’s products through such third parties, rather than directly from Complainant. Using the domain name in this manner constitutes a disruption of Complainant’s business under Policy ¶ 4(b)(iii). See Univ. of Texas Sys. v. Smith, FA 1195696 (Nat. Arb. Forum July 7, 2008) (finding that using the resolving website to divert Internet users to the complainant’s competitors constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Additionally, Respondent is attempting to profit through “click-through” fees designed to be enhanced by the confusion caused by the similarities between Respondent’s domain name and Complainant’s well-known mark. Respondent’s website features pictures and product descriptions for printing products and, as alluded to above, website visitors are provided with clickable links to printer vendors such as <amazon.com>. The Panel presumes that Respondent expects compensation via pay-per-click fees or otherwise for sending web traffic to third party printer vendors. The intent to collect “click-through” fees under the instant circumstances constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 16, 2007) (concluding that Internet users would likely be confused as to the source or sponsorship of the <blackstonewine.com> domain name with the complainant because the respondent was redirecting Internet users to a website with links unrelated to the complainant and likely receiving click-through fees in the process).
Finally, Respondent apparently had actual knowledge of Complainant’s rights in the EPSON mark when it registered the confusingly similar <buyepsonstyluspro.info> domain name. Respondent’s prior knowledge of EPSON is evident by Respondent’s indirect offering of Complainant’s products for sale via the <buyepsonstyluspro.info> website and because of the inescapable notoriety of Complainant’s well-known EPSON trademark. Registering and using a domain with knowledge of a complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buyepsonstyluspro.info> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: November 18, 2012
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