Seiko Epson Corporation and Epson America, Inc. v. Elizabeth Miller
Claim Number: FA1308001516344
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complain-ant”), represented by David A. Jones of Maschoff Brennan, Utah, USA. Re-spondent is Elizabeth Miller (“Respondent”), Wisconsin, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonbuyback.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on August 23, 2013; the National Arbitration Forum received payment on August 23, 2013.
On August 26, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <epsonbuyback.com> 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 ICANN’s Uniform Domain Name Dis-pute Resolution Policy (the “Policy”).
On August 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 16, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all en-tities and persons listed on Respondent’s registration as technical, administrat-ive, and billing contacts, and to postmaster@epsonbuyback.com. Also on Aug-ust 27, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Re-spondent 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 September 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 Not-ices, 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.
Preliminary Issue: Multiple Complainants
In the instant proceedings, there are two named 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 each of whom can claim to have rights to all domain names listed in the Complaint.
According to the Complaint, Epson America, Inc. is the wholly-owned North and Latin American sales, marketing and customer service subsidiary of Seiko Epson Corporation responsible for the sale and distribution of EPSON-brand products throughout North America, Central America and South America. Epson America, Inc. is also alleged to be a licensee of the EPSON trademark and service mark for the distribution and sale of products and services offered throughout its assigned territory.
The Forum’s Supplemental Rule 1(e) has been interpreted to allow multiple parties to proceed as one party where they can show a sufficient link to one another. See, for example, Vancouver Org. Comm. for the 2010 Olympic and Paralymic Games & Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006):
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 partner-ship or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
And, in Tasty Baking, Co. & Tastykake Invs., Inc. v. Quality Hosting, FA 208854 (Nat. Arb. Forum Dec. 28, 2003), a panel treated two complainants as a single entity where both parties held rights in trademarks contained within disputed do-main names. Likewise, in Am. Family Health Srvs. Group, LLC v. Logan, FA 220049 (Nat. Arb. Forum Feb. 6, 2004), a panel found a sufficient link between two complainants where there was a license between them regarding use of the TOUGHLOVE mark there in issue.
Consistent with these interpretations, Seiko Epson Corporation and Epson Amer-ica, Inc. have been deemed to be a single entity for purposes of bringing a UDRP complaint in several UDRP proceedings. See Seiko Epson Corp. and Epson Am., Inc. v. Danica Mihaljevi, FA 438102 (Nat. Arb. Forum May 16, 2012); Seiko Epson Corp. and Epson Am., Inc. v. Hypernet Group, FA 437882 (Nat. Arb. Forum May 6, 2012); Seiko Epson Corp. and Epson Am., Inc. v. Wisnuwardhana Prasastajati, FA 427764 (Nat. Arb. Forum March 15, 2012); Seiko Epson Corp. and Epson Am., Inc. v. KATCOMP Consulting, FA 418328 (Nat. Arb. Forum Jan. 20, 2012); Seiko Epson Corp. and Epson Am., Inc. v. jm / joerg Mueller, FA 411960 (Nat. Arb. Forum Dec. 5, 2011).
The facts before us are sufficient to establish a nexus between the two identified Complainants to permit them to proceed as a single Complainant for all purposes in this proceeding. Accordingly, Seiko Epson Corporation and Epson America, Inc. will be referred to collectively in this Decision as “Complainant.”
A. Complainant
Complainant is a world leader in the design, production and distribution of high technology products, including printers, scanners, digital cameras and video projectors.
Complainant holds a registration for the EPSON trademark, which is on file with the United States and Patent and Trademark Office (“USPTO”) as Registry No. 1,134,004, registered April 29, 1980).
Respondent registered the contested <epsonbuyback.com> domain name on May 28, 2013.
Respondent’s <epsonbuyback.com> domain name is confusingly similar to Complainant’s EPSON mark.
Respondent has not been commonly known by the <epsonbuyback.com> domain name.
Respondent does not hold rights as a licensee of complainant to use the EPSON mark, and Respondent is not associated with Complainant or its business.
Respondent uses the disputed domain name to divert Internet users to a website that is unrelated to Complainant’s business.
This employment of the domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The disputed domain name currently resolves to a website which advertises that Respondent buys various EPSON printer products from consumers.
Respondent benefits financially from using the disputed domain name to advertise and operate its own website.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent’s use of the <epsonbuyback.com> domain name disrupts Complain-ant’s business.
At the time Respondent registered the <epsonbuyback.com> domain name, Respondent was well aware of Complainant and its EPSON trademark.
Respondent registered and uses the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the EPSON trademark for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a USPTO trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).
And, from a review of the record, we conclude that the <epsonbuyback.com> domain name is confusingly similar to Complainant’s EPSON trademark. The domain name contains the entire EPSON mark, with the addition of the term “buyback,” which relates to an aspect of Complainant’s business, plus the gen-eric top-level domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save the domain name from the realm of confusing similarity under the standards of the Policy. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001), finding confusing similarity where a domain name contained the entire mark of a UDRP complainant combined with a generic term.
Likewise see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002):
[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has not been commonly known by the <epsonbuyback.com> domain name, and that Respondent does not hold any right as a licensee to use the EPSON mark and is not associated with Complainant. Moreover, the pertin-ent WHOIS information identifies the registrant of the domain name only as “Elizabeth Miller,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that a respondent failed to establish rights or legitimate interests in the <emitmortgage.com> domain name where that respondent was not authorized to register domain names featuring a UDRP complainant’s mark and also failed to submit evidence that it was com-monly known by the domain name).
we next observe that Complainant asserts, without objection from Respondent, that Respondent has not used the <epsonbuyback.com> domain name in con-nection with a bona fide offering of goods or services or a legitimate noncommer-cial or fair use, in that Respondent uses the domain name to divert Internet users to a website that is unrelated to Complainant’s business, and that the domain name resolves to a website that advertises that Respondent buys EPSON printer products from consumers. In the circumstances here presented, we may com-fortably presume that Respondent profits from this employment of the domain name. Such a use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Golden Bear Int’l, Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003), the panel there finding that a respondent's use of a domain name which was confusingly similar to a UDRP complainant’s mark to divert Internet users to websites unrelated to that complainant's business did not represent either a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the contested <epsonbuyback.com> domain name, which is confusingly similar to Complain-ant’s EPSON trademark, to profit as alleged in the Complaint demonstrates bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See, for example, MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006), finding, under Policy ¶ 4(b)(iv), that a respondent registered and used a disputed domain name in bad faith by diverting Internet users seeking a UDRP complainant’s website to respondent’s own website if respondent likely profits from this diversion scheme.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the EPSON trademark at the time Respondent registered the <epsonbuyback.com> domain name. This is independent proof of bad faith registration of the domain name. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that that respondent knew of a UDRP complainant's rights in the UNIVISION mark when registering the disputed domain name).
Accordingly, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <epsonbuyback.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 9, 2013
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