Seiko Epson Corporation and Epson America, Inc. v. rahul kumar
Claim Number: FA1508001635393
Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by Rachel Jacques, Utah, USA. Respondent is rahul kumar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epsongroups.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 known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 27, 2015; the Forum received payment on August 27, 2015.
On August 28, 2015, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <epsongroups.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 Dispute Resolution Policy (the “Policy”).
On August 31, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 21, 2015 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@epsongroups.com. Also on August 31, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On September 24, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 registered the EPSON trademark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,134,004, registered Apr. 29, 1980). The mark is used in connection with the design, production, and distribution of high technology products, including printers, scanners, digital cameras, and video projectors. The <epsongroups.com> domain name is confusingly similar to the EPSON trademark because the domain name contains the entire mark and merely adds the generic term “groups” along with the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(iii). Respondent is not commonly known as the disputed domain name, nor is Respondent a licensee of Complainant. Further, Respondent is not making a bona fide offering or a legitimate noncommercial or fair use because the domain name resolves to a website that advertises competing goods and/or services.
Respondent has engaged in bad faith registration and use. By offering competing services at the resolving webpage, Respondent is trying to disrupt Complainant’s business and commercially profit from a likelihood of confusion. Further, Respondent had actual knowledge of Complainant’s rights in the mark due to the mark’s fame and notoriety.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Complainant is Seiko Epson Corporation and Epson America, Inc. of Long Beach, CA, USA. Complainant owns numerous domestic registrations for the mark EPSON and related marks which Complainant has continuously used since at least as early as 1975 in connection with the provision of goods and services in the computer printing, processing and products business.
Respondent is Rahul Kumar, of New Delhi, India. Respondent’s registrar’s address is indicated as Scottsdale, AZ, USA. The Panel notes that <epsongroups.com> was registered on or about June 26, 2015. The Panel further notes that Respondent submitted an email in this matter, stating, “In my last reply I already told you to cancel the domain, which I already done. And there is no ads going for the same website. My account got misused later on I came to know.”
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.”).
Complainant registered the EPSON trademark with the USPTO (e.g., Reg. No. 1,134,004, registered Apr. 29, 1980). The mark is used in connection with the design, production, and distribution of high technology products, including printers, scanners, digital cameras, and video projectors. The Panel finds that registration with the USPTO is sufficient to establish rights in a trademark 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.”).
Complainant argues that the <epsongroups.com> domain name is confusingly similar to the EPSON trademark. Complainant notes that the domain name contains the entire mark and merely adds the generic term “groups” along with the gTLD “.com.” As a general rule, the gTLD “.com” cannot distinguish a domain name from the trademark at issue. See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Also, prior panels have found confusing similarity where the domain name contains the entire mark and adds a generic term. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel here finds that Respondent has added a generic term to Complainant’s entire mark, and that the <epsongroups.com> domain name is confusingly similar to the EPSON trademark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
Complainant has proven this element.
The Panel recognizes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name). The Complainant has met this burden.
Complainant asserts that Respondent is not commonly known by the <epsongroups.com> domain name, nor is Respondent in possession of licensing rights that allow him to use the EPSON mark in domain names. The Panel notes that “rahul kumar” is listed as the registrant of record for the disputed domain name. The Panel also notes that the record is devoid of any evidence to indicate that Respondent is either commonly known by or as the disputed domain name or in possession of licensing rights to use the name. The Panel finds that due to the Respondent’s failure to provide any evidence to the contrary, Respondent cannot have rights or legitimate interests under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent’s use of the <epsongroups.com> domain name fails to consist of a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant claims that the domain name is being used to operate a competing business, presumably for profit. The Panel notes that the domain name resolves to a webpage that displays the EPSON mark as well as photographs of the goods offered under the EPSON mark. Further, the resolving webpage appears to offer support services for the goods offered under the EPSON mark. Past panels have analyzed such conduct and declined to grant the respondent rights under Policy ¶¶ 4(c)(i) or (iii), stating that the respondent was offering competing services or even, in some cases, attempting to pass itself off as the complainant. See Alcon, Inc. v. ARanked, FA 1306493 (Nat. Arb. Forum Mar. 18, 2010) (“The Panel finds that capitalizing on the well-known marks of Complainant by attracting internet users to its disputed domain names where Respondent sells competing products of Complainant is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).The Panel here finds that Respondent’s use of the disputed domain name to offer competing products, and/or attempt to pass itself off as Complainant, supports a conclusion that Respondent lacks any rights under Policy ¶¶ 4(c)(i) or (iii).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action, the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant contends that Respondent has engaged in bad faith registration and use. Complainant claims that Respondent has engaged in bad faith under Policy ¶ 4(b)(iii) by disrupting its business. Specifically, Complainant argues that its business is disrupted by the aforementioned use of the domain name to offer competing services. The Panel again notes that the domain name resolves to a webpage that displays the EPSON mark as well as photographs of the goods offered under the EPSON mark. Further, the resolving webpage appears to offer support services for the goods offered under the EPSON mark. Previous panels have found bad faith under Policy ¶ 4(b)(iii) where the domain name was used to offer competing services. See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”). The Panel here finds that Respondent is using the domain name to offer competing services which supports a finding of bad faith use and registration under Policy ¶ 4(b)(iii).
Complainant claims that Respondent has engaged in bad faith under Policy ¶ 4(b)(iv) by attempting to commercially profit from a likelihood of confusion. Complainant claims that a likelihood of confusion exists because the resolving webpage contains images of the EPSON mark as well as information related to the sale of support services for products offered under the EPSON mark. Further, Complainant argues that Respondent is presumably profiting from said use. The Panel recalls Complainant’s evidence presented regarding the content of the resolving webpage noted above. Prior panels have found bad faith under Policy ¶ 4(b)(iv) where the domain name resolved to a webpage that offered competing services and displayed images of the trademark at issue. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) by displaying the complainant’s mark on its website and offering identical services as those offered by the complainant). The Panel here finds that Respondent is apparently offering competing services and profiting in the process which supports a conclusion of bad faith use and registration under Policy ¶ 4(b)(iv).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <epsongroups.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: October 8, 2015
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