Seiko Epson Corporation v. Eppson Support
Claim Number: FA1611001702646
Complainant is Seiko Epson Corporation (“Complainant”), represented by Rachel Jacques of Maschoff Brennan, Utah, United States. Respondent is Eppson Support (“Respondent”), Alabama, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <epsonsupport.xyz>, <supportepson.xyz>, <epsondrivers.xyz>, and <driversepson.xyz>, registered with Tucows.Com Co.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 11, 2016; the Forum received payment on November 11, 2016.
On November 14, 2016, Tucows.Com Co. confirmed by e-mail to the Forum that the <epsonsupport.xyz>, <supportepson.xyz>, <epsondrivers.xyz>, and <driversepson.xyz> domain names are registered with Tucows.Com Co. and that Respondent is the current registrant of the names. Tucows.Com Co. has verified that Respondent is bound by the Tucows.Com Co. 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 15, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 5, 2016 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@epsonsupport.xyz, postmaster@supportepson.xyz, postmaster@epsondrivers.xyz, postmaster@driversepson.xyz. Also on November 15, 2016, 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 December 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it is an international manufacturer of, and world leader in, the design, production, and distribution of high technology products, including printers, scanners, digital cameras, video projectors, and related services. Complainant registered the EPSON mark in the United States in 1980, and it has been registered in other countries around the world. Complainant and its licensees have been using the EPSON trademark and service marks in the United States, Canada and around the world for over 30 years and have invested substantially in the trademark and service marks associated with the goods and services marketed under the EPSON brand name. As a result, the EPSON trademarks and service marks, together with Complainant’s name and reputation, have become synonymous with quality products such as printers, scanners, digital cameras, video projectors, and supplies and services for such products. Accordingly, Complainant has established substantial goodwill in the minds of consumers in connection with the EPSON trademarks and service marks.
According to Complainant, the disputed domain names are confusingly similar to Complainant’s mark as they wholly incorporate the EPSON mark and merely add the descriptive term “support” or “drivers” and the “.xyz” generic top-level domain (“gTLD”).
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known or identified by the domain names, and Respondent is not authorized by Complainant to register domain names or run websites that incorporate any of Complainant’s EPSON marks. Additionally, Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to promote and advertise its own services, services that are directly competitive with Complainant’s business. Further, Respondent has failed to respond to Complainant’s cease and desist letters.
Further, says Complainant, Respondent registered and is using the disputed domain names in bad faith. First, Respondent uses the domain names to promote competing services. Second, Respondent has failed to respond to Complainant’s cease and desist letters. Finally, because of the fame of Complainant’s mark, it is clear that Respondent registered the domain names with actual knowledge of the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark EPSON dating back to 1980. The mark is famous.
The disputed domain names were registered in 2016.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
Respondent is using the disputed domain names to promote and advertise its own services, services that are directly competitive with Complainant’s business.
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(f), 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 (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.”).
The disputed domain names are confusingly similar to Complainant’s mark as they wholly incorporate the EPSON mark and merely add the descriptive term “support” or “drivers” and the “.xyz” gTLD. See Am. Express Co. v. MustNeed.com, FA 257901 (Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to 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 Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel finds that Respondent’s disputed domain names are confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
Respondent is not authorized by Complainant to register domain names or run websites that incorporate any of Complainant’s EPSON marks. The WHOIS information lists “Eppson Support” as registrant, but Respondent has failed to provide any evidence for the Panel’s consideration. Accordingly, the Panel finds no basis in the available record to find Respondent commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Forum May 20, 2007) (finding that, although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name.)
Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain names to promote and advertise its own services, services that are directly competitive with Complainant’s business. Panels have held that a respondent’s use of a domain name to promote and advertise services that are directly competitive with a complainant’s business does not constitute 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). See Alcon, Inc. v. ARanked, FA 1306493 (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).”). Therefore, the Panel finds that Respondent is not using the domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent uses the disputed domain names to promote competing services. Panels have routinely held that a respondent’s use of a domain name to promote and advertise services that are directly competitive with a complainant’s business is evidence of bad faith registration and use under Policy ¶¶ 4(b)(iii) and (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (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).”); see also Scholastic Inc. v. Applied Software Solutions, Inc., D2000-1629 (WIPO Mar. 15, 2001) (finding bad faith under Policy ¶ 4(b)(iv) because the respondent initially used the disputed domain name to sell educational services that targeted the complainant’s market). Accordingly, the Panel finds that Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsonsupport.xyz>, <supportepson.xyz>, <epsondrivers.xyz>, and <driversepson.xyz> domain names be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: December 7, 2016
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