Seiko Epson Corporation and Epson America, Inc. v. N/A / Andrey Ushakov
Claim Number: FA1304001492913
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Brennan, Utah, USA. Respondent is N/A / Andrey Ushakov (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <epson730.com>, <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com>, registered with DomainContext, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 3, 2013; the National Arbitration Forum received payment on April 3, 2013.
On April 5, 2013, DomainContext, Inc. confirmed by e-mail to the National Arbitration Forum that the <epson730.com>, <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com> domain names are registered with DomainContext, Inc. and that Respondent is the current registrant of the names. DomainContext, Inc. has verified that Respondent is bound by the DomainContext, 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 April 9, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 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@epson730.com, postmaster@epson30.com, postmaster@epson4020.com, postmaster@epson7510.com, postmaster@epson7520.com, postmaster@epsonxp200.com, postmaster@epsonxp400.com, and postmaster@epsonxp600.com. Also on April 9, 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 May 7, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 names be transferred from Respondent to Complainant.
A. Complainant
a. Complainant owns multiple federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (e.g., Reg. No. 1,134,004 registered Apr. 29, 1980) for its computer printers and related products.
b. Respondent registered the <epson730.com> domain name on October 22, 2012, and the <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com> domain names on January 30, 2013.
c. The disputed domain names contain Complainant’s mark in its entirety, with the addition of product numbers which are descriptive of Complainant’s products.
d. The addition of the generic top-level domain (“gTLD”) is irrelevant to the Policy ¶ 4(a)(i) confusing similarity comparison.
e. Respondent is not commonly known by the disputed domain names, based on the WHOIS information and the fact that Complainant did not authorize Respondent to use its mark.
f. Respondent’s use of the disputed domain names to divert Internet users to Respondent’s webpages, which purport to sell Complainant’s products, is not a bona fide offering or a legitimate noncommercial or fair use.
g. By diverting Internet users’ away from Complainant’s official website, Respondent is disrupting Complainant’s business, which is bad faith under Policy ¶ 4(b)(iii).
h. Respondent is attracting consumers away from Complainant for Respondent’s commercial gain, which is bad faith under Policy ¶ 4(b)(iv).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the EPSON mark. Respondent’s <epson730.com>, <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com> domain names are confusingly similar to Complainant’s EPSON mark. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <epson730.com>, <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com> domain names, and that Respondent registered and uses the domain names 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.”).
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two Complainants. 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.”
There are two Complainants in this matter: Seiko Epson Corporation and Epson America, Inc. Complainants contend that Epson America, Inc., is a wholly-owned subsidiary and licensee of Seiko Epson, responsible for its North and Latin American sales, marketing, and customer service. Accordingly, the Complainants proceed as a single Complainant.
The Forum’s Supplemental Rule 1(e) allows multiple parties to proceed as one party where they can show a sufficient link to each other. For example, in Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. 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 Invs., 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 Am. Family Health Srvs. 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.”).
Accordingly, the Panel finds that the evidence in the Complaint is sufficient to establish a sufficient nexus or link between the Complainants and therefore they will be treated as a single entity in this proceeding.
Complainant claims rights in the EPSON trademark based on its registrations of the mark with the USPTO (e.g., Reg. No. 1,134,004 registered Apr. 29, 1980) for its computer printers and related products. A complainant’s registration of a mark with the USPTO is sufficient to confer rights in the mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”). Further, a complainant need not register its mark in the country of a respondent to demonstrate rights in the mark. 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 and it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Therefore, the Panel finds that Complainant has established rights under ¶ 4(a)(i) in the EPSON mark.
Complainant claims that the <epson730.com>, <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com> domain names are confusingly similar to its EPSON mark. The addition of a gTLD such as “.com” is irrelevant to a Policy ¶ 4(a)(i) confusing similarity comparison. 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). Complainant notes that the disputed domain names contain Complainant’s EPSON mark in its entirety, with only the addition of product numbers, which are descriptive of Complainant’s products. The addition of such descriptive terms are not sufficient to distinguish a disputed domain name from a complainant’s mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel holds that the <epson730.com>, <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com> domain names are confusingly similar to Complainant’s EPSON mark.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant argues that Respondent has not been commonly known by the disputed domain names and has therefore not demonstrated rights or legitimate interests in the disputed domain names under Policy ¶ 4(c)(ii). Complainant notes that the WHOIS information identifies “N/A / Andrey Ushakov” as the registrant of the disputed domain names. Complainant also notes that it is not affiliated with Respondent and has not authorized Respondent to use the EPSON mark. Such nominally unsupportive WHOIS information and a lack of authorization are strong evidence that a respondent is not commonly known by a disputed domain name. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names.
Complainant further contends that Respondent is using the disputed domain names to divert Internet users to Respondent’s webpages, which purport to sell Complainant’s products, and that this is not a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii). The sale of a complainant’s products does not amount to a bona fide offering or legitimate use. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use). Therefore, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶¶ 4(c)(i) and 4(c)(iii).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is diverting users away from Complainant’s own official site for Respondent’s commercial gain, and that this disrupts Complainant’s business, representing bad faith under Policy ¶ 4(b)(iii). The sale of a complainant’s products constitutes evidence of bad faith disruption under Policy ¶ 4(b)(iii). See G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”). Therefore, the Panel holds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant also argues that Respondent has demonstrated bad faith by creating confusion with Complainant’s mark to attract customer’s for Respondent’s own commercial gain. The sale of a complainant’s products at a domain name that is confusingly similar to complainant’s mark is evidence of bad faith under Policy ¶ 4(b)(iv). See Fanuc Ltd v. Mach. Control Servs., FA 93667 (Nat. Arb. Forum Mar. 13, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by creating a likelihood of confusion with the complainant's mark by using a domain name identical to the complainant’s mark to sell the complainant’s products). Moreover, by incorporating Complainant’s mark in its entirety in the domain names it is apparent that Respondent had actual knowledge of the mark. Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv).
The Panel finds Complainant has satisfied 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 <epson730.com>, <epson30.com>, <epson4020.com>, <epson7510.com>, <epson7520.com>, <epsonxp200.com>, <epsonxp400.com>, and <epsonxp600.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: May 20, 2013
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