Seiko Epson Corporation and Epson America, Inc. v. Advance Image / Tony Galasso
Claim Number: FA1211001469603
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complain-ant”), represented by David A. Jones of Maschoff Gilmore & Israelsen, Utah, USA. Respondent is Advance Image / Tony Galasso (“Respondent”), Maryland, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsoninkjetsupply.com>, registered with ENOM, INC.
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 November 1, 2012; the National Arbitration Forum received payment on November 1, 2012.
On November 5, 2012, ENOM, INC. confirmed by e-mail to the National Arbitra-tion Forum that the <epsoninkjetsupply.com> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. has verified that Respondent is bound by the ENOM, 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 November 12, 2012, the Forum served the Complaint and all Annexes, in-cluding a Written Notice of the Complaint, setting a deadline of December 3, 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, adminis-trative, and billing contacts, and to postmaster@epsoninkjetsupply.com. Also on November 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 in compliance with the require-ments of the Policy and its associated rules, the National Arbitration Forum trans-mitted to the parties a Notification of Respondent Default.
On December 14, 2012, 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 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
Epson America, Inc. is the North American 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, printer products, and other peripheral devices and electronic components in North America, Central America, and South America.
Epson America, Inc. is a licensee of the EPSON trademark and service mark for the distribution and sale of products and services offered throughout North Amer-ica, Central America, and South America, including printers, scanners, digital cameras, video projectors, and supplies for these products.
Epson America, Inc. and Seiko Epson Corporation therefore appear in this pro-ceeding as a single Complainant.
Complainant uses the EPSON trademark in the United States, Canada, and around the world in connection with the marketing of printers, scanners, digital cameras, video projectors and supplies for such products, including replacement ink cartridges.
Complainant holds registrations, on file with the United States Patent and Trade-mark Office ("USPTO"), for the EPSON trademark (including Reg. No. 1,134,004, registered April 29, 1980).
Respondent’s <epsoninkjetsupply.com> domain name is confusingly similar to Complainant’s EPSON mark.
Respondent is not a licensee of or associated with Complainant in any way.
Respondent has not been commonly known by the <epsoninkjetsupply.com> domain name.
Respondent uses the disputed domain name for its commercial benefit by divert-ing Internet users attempting to reach Complainant’s website to a website that sells EPSON products without authorization from Complainant, as well as other products in competition with the business of Complainant.
This use of the domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s unauthorized employment of the EPSON mark in its domain name, from which respondent profits, causes confusion among Internet users as to the possibility of Complainant’s sponsorship or endorsement of, or affiliation with, the resolving website.
Respondent has registered and is using the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding in compliance with the requirements of the Policy and its associated rules.
(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.”
Preliminary Issue: Multiple Complainants
Epson America, Inc. and Seiko Epson Corporation appear in this proceeding as a single Complainant. The Complaint alleges that Epson America, Inc. is the North American and Latin American sales, marketing, and customer service subsidiary of Seiko Epson Corporation, that Epson America, Inc. is responsible for the sale and distribution of EPSON brand computer products, printer products, and other peripheral devices and electronic components in North America, Central Amer-ica, and South America, that Epson America, Inc. is a licensee of the EPSON trademark and service mark for the distribution and sale of products and services offered in North America, Central America, and South America, including print-ers, scanners, digital cameras, video projectors and supplies for these products. These contentions are not disputed by Respondent.
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 Supple-mental 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.”
It is well established under the Forum’s Supplemental Rule 1(e) that multiple parties may appear as one party in a UDRP proceeding where they can show a sufficient link to one another. See, for example, Vancouver Organizing Comm. for the 2010 Olympic and Paralympic Games and Int’l Olympic Comm. v. Malik, FA 666119 (Nat. Arb. Forum May 12, 2006), where a panel found that:
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 part-nership or an affiliation that would establish the reason for the parties bringing the complaint as one entity.
On the undisputed facts before us, we are satisfied that the two appearing enti-ties have demonstrated a sufficient nexus between them to justify their appear-ance as a single Complainant. Accordingly, Epson America, Inc. and Seiko Epson Corporation will be referred to throughout this decision as a unitary Complainant.
Complainant has rights in the EPSON trademark under Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that a UDRP complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks for purposes of the Policy by registering the marks with the USPTO).
Turning to the central arising under Policy ¶ 4(a)(i), we conclude from our review of the record that Respondent’s <epsoninkjetsupply.com> domain name is con-fusingly similar to Complainant’s EPSON trademark. The domain name contains the entire EPSON mark, with the addition of the descriptive phrase ‘inkjetsupply,” which describes an aspect of Complainant’s business, and of the generic top level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the domain name, fail to distinguish the domain name from the mark under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding that a respondent’s <amextravel.com> domain name was confusingly similar to a UDRP complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of a domain name such as “.net” or “.com” does not affect the domain name for purposes of determining whether it is identical or confusingly similar to the mark of another from which it is derived).
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 disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent 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 a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will ex-amine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respond-ent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny,
that Respondent is not a licensee of or associated with Complainant in any way, and that Respondent has not been commonly known by the domain name <epsoninkjetsupply.com>. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Advance Image / Tony Galasso,” 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 demonstrated that it has rights to or legitimate interests in the domain name within the contemplation of Policy ¶ 4(c)(ii). See, for example, M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the domain name <cigaraficionada.com>, and so had failed to show that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record).
We next observe that Complainant asserts, without objection from Respondent, that Respondent, for its commercial benefit, uses the disputed domain name to divert Internet users who are attempting to reach Complainant’s website by forwarding them to a website that, without authorization from Complainant, sells EPSON products as well as other products in competition with the business of Complainant. Such use 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 Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that the unauthorized use of a UDRP complainant’s mark in a domain name to sell that complainant’s perfume, as well as other brands of perfume, is not bona fide use).
The Panel therefore finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded from the evidence that Respondent registered the domain name <epsoninkjetsupply.com> for the purpose of using it to forward Internet users to a website which sells Complainant’s goods without authorization, as well as to sell competing products. This disrupts Complainant’s business, and there-fore stands as evidence of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See, for example, G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002):
Unauthorized use of Complainant’s … mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).
Further, because Respondent’s <epsoninkjetsupply.com> domain name is con-fusingly similar to Complainant’s EPSON trademark, so that Internet users searching for Complainant’s goods or services will likely be confused as to the possibility of Complainant’s sponsorship or endorsement of the website resolving from the domain name, and because Respondent presumably profits from this use of the domain name, we conclude that Respondent registered and uses the domain name in bad faith within the meaning of Policy ¶ 4(b)(iv). See Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that a respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell a UDRP complainant’s goods); see also Hewlett-Packard Co. v. Ali, FA 353151 (Nat. Arb. Forum Dec. 13, 2004):
Respondent [used the mark of another in its domain name] to bene-fit from the goodwill associated with Complainant’s … marks and us[ed] the … domain name, in part, to provide products similar to those of Complainant. Respondent’s practice of diversion, motiv-ated by commercial gain, constitutes bad faith registration and use pursuant to Policy ¶ 4(b)(iv).
For these reasons, 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 <epsoninkjetsupply.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: December 28, 2012
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