Seiko Epson Corporation and Epson America, Inc. v. Edicus Pius / Tom Mboya
Claim Number: FA1307001509858
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by David A. Jones of Maschoff Brennan, Utah, USA. Respondent is Edicus Pius / Tom Mboya (“Respondent”), Kenya.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsonclinic.com>, registered with DOMAIN.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 electronically on July 16, 2013; the National Arbitration Forum received payment on July 16, 2013.
On July 16, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <epsonclinic.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the registration agreement of DOMAIN.COM, LLC 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 July 17, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 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@epsonclinic.com. Also on July 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 that was compliant with the requirements of the Policy and its attendant rules, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 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 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 has used the EPSON mark in commerce since 1975 for the sales and distribution of products under the EPSON brand, including printers, scanners, cameras and video projectors.
Complainant’s EPSON mark is registered with the United States Patent and Trademark Office (“USPTO”) as Reg. No. 1,134,004, registered April 29, 1980.
Respondent registered the <epsonclinic.com> domain name on May 14, 2013.
Respondent’s <epsonclinic.com> domain name is confusingly similar to Complainant’s EPSON trademark.
Respondent has not been commonly known or identified by the domain name <epsonclinic.com>.
Complainant has not authorized or licensed Respondent to use its EPSON trademark.
Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
For commercial gain, Respondent uses the domain name to resolve to a website unrelated to Complainant’s website.
Respondent has no rights to or legitimate interests in the <epsonclinic.com> domain name.
Respondent’s use of the <epsonclinic.com> domain name confuses Internet users as to the possibility of Complainant’s sponsorship of the domain name and its resolving website.
Respondent’s use of the domain name disrupts Complainant’s business.
Respondent was well aware of Complainant and it’ EPSON trademark when it registered the disputed domain name.
Respondent has registered and is using the <epsonclinic.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding which was compliant with the requirements of the Policy and its attendant rules. However, in an e-mail message addressed to the National Arbitration Forum, Respondent has recited that: “I discontinue the domain name… [and]… am not opposed to blocking of the use of the name.”
Preliminary Issue: Multiple Complainants
The Complaint identifies two Complainants, Epson America, Inc. and Seiko Epson. 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.”
Supplemental Rule 1(e) has been interpreted to allow multiple parties to proceed as one 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), a panel concluded:
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.
The Complaint here asserts that Epson America, Inc. is the North and Latin American sales, marketing and customer service subsidiary of Seiko Epson, and that Epson America, Inc. is a licensee of the EPSON trademark and service mark for the distribution and sale of services and products offered throughout North America, Central America, and South America. This undisputed evidence is sufficient to permit us to accept the two entities as a single Complainant for all purposes in this proceeding, as other panels have done. See Seiko Epson Corporation and Epson America, Inc. v. Danica Mihaljevi, FA 438,102 (Nat. Arb. Forum May 16, 2012); and Seiko Epson Corporation and Epson America, Inc. v. Hypernet Group, FA 437,882 (Nat. Arb. Forum May 6, 2012). Accordingly, the two enterprises, Epson America, Inc. and Seiko Epson will be described throughout this decision as a single Complainant.
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, Complainant must prove each of the following to obtain from a Panel an order that a domain name be transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
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 by Respondent in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Further, Paragraph 14(b) of the Rules provides that, where a party fails to comply with requirements laid on by the Rules, the Panel may draw such inferences from that failure as it considers appropriate.
DECISION
It appears from the record that Respondent does not contest the material allegations of the Complaint. It further appears that Respondent does not object to Complainant’s request for the transfer to it of the subject domain name as prayed for in the Complaint, so that the parties have tacitly agreed to the transfer of the domain name from Respondent to Complainant without the need for further proceedings. In the exceptional circumstances here presented, we conclude that no worthwhile purpose would be served by a rendition of findings otherwise customary in proceedings of this sort.
Accordingly, it is Ordered that the domain name <epsonclinic.com> be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 28, 2013
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