Seiko Epson Corporation and Epson America, Inc. v. Citizen News Network
Claim Number: FA1105001389991
Complainants are Seiko Epson Corporation and Epson America, Inc. (“Complainants”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is Citizen News Network (“Respondent”), Canada.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonprinters.org>, registered with GoDaddy.com
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.
Judge Harold Kalina (Ret.) as Panelist.
Complainants submitted a Complaint to the National Arbitration Forum electronically on May 20, 2011; the National Arbitration Forum received payment on May 20, 2011.
On May 25, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <epsonprinters.org> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 May 31, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 2011 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@epsonprinters.org. Also on May 31, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 June 21, 2011, pursuant to Complainants’ request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) 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.
Complainants requests that the domain name be transferred from Respondent to Complainants.
A. Complainants makes the following assertions:
1. Respondent’s <epsonprinters.org> domain name is confusingly similar to Complainants’ EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsonprinters.org> domain name.
3. Respondent registered and used the <epsonprinters.org> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Epson America, Inc., is the North and Latin American sales, marketing, and customer service subsidiary of Complainant Seiko Epson Corporation. The Panel finds that based on the relationship between the two entities, they will be treated as a single Complainant for the remainder of these proceedings. Complainant owns the EPSON mark which it uses in connection with a variety of goods and services, one of which is printers. Complainant has multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,134,004 registered April 29, 1980) as well as the Canadian Intellectual Property Office (“CIPO”) (e.g., TMA289441).
Respondent, Citizen News Network, registered the disputed domain name on June 24, 2010. The <epsonprinters.org > domain name resolves to an inactive web page.
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."
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainants’ 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.”).
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.
Complainants contend that it has established rights in the EPSON mark through registration with federal trademark authorities. Previous panels have found this to be sufficient to establish rights in a mark. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). Because Complainant has provided evidence of trademark registration with the USPTO and the Canadian Intellectual Property Office (e.g., Reg. No. 1,134,004 issued April 29, 1980; Reg. No. TMA289441 issued April 6, 1984), the Panel finds that, as required under Policy ¶ 4(a)(i), Complainant has established rights in the EPSON mark.
Complainant next contends that the <epsonprinters.org> domain name is confusingly similar to its EPSON mark. Respondent’s addition of a generic top-level domain and the descriptive term “printers” is not enough to differentiate the disputed domain name from Complainants’ mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark”); see also 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). As such, the Panel finds that the <epsonprinters.org> domain name is confusingly similar to Complainants’ EPSON mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent lacks rights and legitimate interests in the disputed domain name. After having supported their allegations with a prima facie case, the burden shifts from Complainant to Respondent to prove that it does have rights or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names”). The Panel finds that Complainant has made a prima facie case and that the burden now shifts to Respondent. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lack rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). The Panel will review the evidence in spite of this to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Complainants asserts that Respondent is not commonly known by the <epsonprinters.org> domain name. Prior panels have determined that where the WHOIS information and other facts fail to establish a basis by which it could be inferred that a respondent is commonly known by a disputed domain name, the panel may find that they are not. 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); see also Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation”).
Complainant has not given Respondent authorization to use its mark and are in no way affiliated with Respondent. In addition, Respondent’s WHOIS information provides no information which would suggest that it is commonly known as the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <epsonprinters.org> domain name under Policy ¶ 4(c)(ii).
Respondent’s domain name resolves to an inactive web page. Previous panels have found that this is evidence that the disputed domain name is not being used for a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or 4(c)(iii). See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii)”). As such, the Panel finds that Respondent’s failure to make an active use out of the <epsonprinters.org> domain name is neither 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).
The Panel finds that the elements of Policy ¶ 4(a)(ii) are satisfied.
Complainants contend that Respondent’s registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(a)(iii). When considering bad faith registration and use, the Panel may look at the totality of the circumstances rather than simply to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive”); see also Twentieth Century Fox Film Corp. v. Risser, FA 93761 (Nat. Arb. Forum May 18, 2000) (“The requirement in the ICANN Policy that a complainant prove that domain names are being used in bad faith does not require that it prove in every instance that a respondent is taking positive action. Use in bad faith can be inferred from the totality of the circumstances even when the registrant has done nothing more than register the names”).
Previous panels have held that the failure to do more than hold an inactive domain name often suffices as evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith). Respondent has failed to make an active use of the <epsonprinters.org> domain name since the time of its registration. As such, the Panel thus finds that Respondent’s registration use of the disputed domain name to maintain an inactive web page is evidence of bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonprinters.org> domain name be TRANSFERRED from Respondent to Complainants.
Judge Harold Kalina (Ret.), Panelist
Dated: June 30, 2011
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