Seiko Epson Corporation and Epson America, Inc. v. Epson Energy
Claim Number: FA1301001480264
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is Epson Energy (“Respondent”), Greece.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epson-energy.com> registered with TUCOWS, INC.
The undersigned certifies that he has acted independently and impartially and to the best of his 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 January 15, 2013; the National Arbitration Forum received payment on January 15, 2013.
On January 15, 2013, TUCOWS, INC. confirmed by e-mail to the National Arbitration Forum that the <epson-energy.com> domain name is registered with TUCOWS, INC. and that Respondent is the current registrant of the name. TUCOWS, INC. has verified that Respondent is bound by the TUCOWS, 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 January 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 6, 2013 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-energy.com. Also on January 17, 2013, 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 February 12, 2013, 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 registered the EPSON mark with the United States Patent & Trademark Office (“USPTO”) and uses the mark in connection with the design, production, and distribution of electronic products. See Reg. No. 1,134,004 registered on Apr. 29, 1980; Reg. No. 1,187,440 registered on Jan. 26, 1982; Reg. No. 1,917,610 registered on Sept. 12, 1995.
Respondent registered the <epson-energy.com> domain name on November 27, 2012.
Although the domain name adds the generic and non-distinctive term “energy” to the mark, the addition is inconsequential given the fame and distinctiveness of Complainant’s EPSON mark. The further adding of the generic top-level domain name “.com” also fails to add distinction to the domain name.
Complainant lacks rights and legitimate interests in the domain name.
Respondent is not commonly known or identified by the domain name because EPSON is a trademarked term with no meaning apart from identifying Complainant. Respondent does not hold any rights as a licensee to use the EPSON mark.
Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the disputed domain name. The domain name resolves to Respondent’s unrelated business which is profiting and attracting business solely due to the fame of the EPSON mark. Respondent is presumably seeing a financial gain by using the disputed domain name containing the EPSON mark to market its own unrelated business.
Complainant registered and is using the domain name in bad faith.
Respondent is attempting to disrupt Complainant’s business by using the confusingly similar <epson-energy.com> domain name to lure Internet users to its own website.
Respondent’s domain name creates confusion among Internet users, thereby diverting them from Complainant’s websites to the <epson-energy.com> domain name’s resolving website for commercial gain. The disputed domain name offers heating panel services as well as other services unrelated to Complainant’s EPSON mark. Internet users are likely to comprehend the confusingly similar domain name and mistakenly conclude that Complainant sponsors or is in some way affiliated with Respondent.
Respondent had actual knowledge of Complainant’s rights in the EPSON mark when it registered the <epson-energy.com> domain name. Complainant has been using the EPSON mark around the world for over thirty years. The EPSON name and mark has become synonymous with ink, printers, and other related products.
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.
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 has addressed an active website that offered Respondent’s heating panel services as well as other services unrelated to Complainant’s EPSON mark.
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 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 Corp. & Epson Am., 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 Corp. &Epson Am., 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 the Co-complainants (herein throughout “Complainant”) 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 Greece) is outside the jurisdiction of the domain name’s 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 <epson-energy.com> domain name is confusingly similar to Complainant’s EPSON mark under Policy ¶ 4(a)(i). Although the <epson-energy.com> domain is formed by adding a hyphen and the generic term “energy” to Complainant’s mark, such additions are inconsequential for the purposes of Policy ¶4(a)(i). Likewise, appending the top level domain name “.com” also fails to distinguish the at-issue domain name from Complainant’s EPSON mark. See nnomed 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 Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element); 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 at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information for <epson-energy.com> identifies the domain name’s registrant as “Epson Energy.” Although, the nominal registrant is essentially identical to the at-issue domain name, Respondent’s decision to register the domain name and identify the registrant as it did was initiated and controlled exclusively by Respondent. Therefore, the WHOIS record does little to persuade the Panel that Respondent is commonly known by the domain name especially where, as here, the domain name contains another’s fanciful trademark. Importantly, the record before the Panel contains no additional evidence that might tend to prove that Respondent is commonly known by the at-issue domain name. Given the foregoing, the Panel 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).
The at-issue domain name addresses, or for a time addressed, a website serving Respondent’s business. Respondent was attempting to profit, or actually profiting, from the improper inclusion of Complainant’s trademark in the at-issue domain name for the purpose of attracting Internet users to the EPSON trademark and ultimately to Respondent’s <epson-energy.com> website. Thus, Respondent was intending to financially gain by using the confusingly similar at-issue domain name to market its own business and services. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a noncommercial or fair use under Policy ¶ 4(c)(iii). 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).”).
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 at-issue domain name.
The at-issue domain name was registered and used in bad faith. As discussed below, 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 at-issue domain name to capitalize on confused Internet users who desire to reach Complainant, but who are instead redirected to Respondent’s <epson-energy.com> website. The result of said confusion is that Internet users are diverted from Complainant’s website(s) to the <epson‑energy.com> website for Respondent’s intended financial benefit. These circumstances demonstrate bad faith registration and use pursuant to Policy ¶4(b)(iv) See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website).
Finally, Respondent had actual knowledge of Complainant’s rights in the EPSON mark when it registered the confusingly similar <epson-energy.com> domain name. Respondent’s prior knowledge of EPSON is evident because of the inescapable notoriety of Complainant’s well-known EPSON trademark, a mark that has no meaning apart from its trademark usage and has been used worldwide for over 30 years. Registering and using an at-issue domain name 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 <epson-energy.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: February 13, 2013
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