Seiko Epson Corporation v. Shen Tao
Claim Number: FA1808001803023
Complainant is Seiko Epson Corporation (“Complainant”), represented by Rachel Jacques of Maschoff Brennan, Utah, USA. Respondent is Shen Tao (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <epson-stores.com>, registered with Shanghai Meicheng Technology Information Development Co., Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 23, 2018; the Forum received payment on August 23, 2018.
On August 28, 2018, Shanghai Meicheng Technology Information Development Co., Ltd. confirmed by e-mail to the Forum that the <epson-stores.com> domain name is registered with Shanghai Meicheng Technology Information Development Co., Ltd. and that Respondent is the current registrant of the name. Shanghai Meicheng Technology Information Development Co., Ltd. has verified that Respondent is bound by the Shanghai Meicheng Technology Information Development Co., Ltd. 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 September 4, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 24, 2018 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@epson-stores.com. Also on September 4, 2018, 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 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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.
LANGUAGE OF THE PROCEEDING
The Panel notes that Complainant requests that the language of this administrative proceeding proceed in the English language pursuant to UDRP Rule 11(a). Complainant makes this request in light of the Chinese language Registration Agreement. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties. Factors which previous panels have seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent’s understanding of the Chinese language included in the Registration Agreement. See The Argento Wine Company Limited v. Argento Beijing Trading Company, D2009-0610 (WIPO July 1, 2009) (panel exercising discretion in deciding that the language of the proceedings advance in English, contrary to the Registration Agreement, based on evidence that respondent has command of the language). Further, the Panel may weigh the relative time and expense in enforcing the Chinese language agreement, which would result in prejudice toward either party. See Finter Bank Zurich v. Shumin Peng, D2006-0432 (WIPO June 12, 2006) (deciding that the proceeding should be in English, stating, “It is important that the language finally decided by the Panel for the proceeding is not prejudicial to either one of the parties in his or her ability to articulate the arguments for the case.”).
Pursuant to UDRP Rule 11(a), the Panel finds that persuasive evidence has been adduced by Complainant to suggest the likely possibility that the Respondent is conversant and proficient in the English language. After considering the circumstance of the present case, the Panel decides that the proceeding should be in English.
A. Complainant
Complainant made the following contentions.
Complainant, Seiko Epson Corporation, 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 uses its EPSON mark to promote its products and services and established rights in the mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,187,440, registered Jan. 26, 1982). See Compl. Annex B. Respondent’s <epson-stores.com> domain name is confusingly similar to Complainant’s EPSON mark as it merely adds a hyphen, the generic term “stores,” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <epson-stores.com> domain name. Complainant has not licensed or otherwise authorized Respondent to use its EPSON mark in any fashion. Respondent is also not commonly known by the disputed domain name as the WHOIS information of record lists “Shen Tao” as the registrant. See Compl. Annex C. Respondent is not using the <epson-stores.com> domain name in connection with any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the <epson-stores.com> website to offer products that directly compete with Complainant’s business. Further, Respondent uses the domain name to pass itself off as Complainant by resolving to a website featuring Complainant’s EPSON mark.
Respondent registered and is using the disputed domain name in bad faith. Respondent uses the <epson-stores.com> domain name to create confusion with Complainant’s EPSON mark for commercial gain by resolving to a website featuring Complainant’s EPSON mark and products that directly compete with Complainant’s technology business. Further, Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the EPSON mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a Japanese company that 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.
2. Complainant has established its trademark rights to the EPSON mark by registration of the mark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,187,440, registered Jan. 26, 1982).
3. Respondent registered the <epson-stores.com> domain name on July 12, 2018.
4. Respondent uses the <epson-stores.com> domain name to resolve to a website that offer products that directly compete with Complainant’s business, and to pass itself off as Complainant by resolving to a website featuring the EPSON mark.
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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant contends it has rights in its EPSON mark to promote its products and services and established rights in the mark through registration with the USPTO (e.g., Reg. No. 1,187,440, registered Jan. 26, 1982). See Compl. Annex B. a mark. See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that the complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). As such, the Panel holds that Complainant established rights in the EPSON mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s EPSON mark. Complainant submits that Respondent’s <epson-stores.com> domain name is confusingly similar to Complainant’s EPSON mark as it merely adds a hyphen, the generic term “stores,” and the gTLD “.com.” The addition of a hyphen, generic term, and gTLD may not sufficiently distinguish a disputed domain name from a mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis.). Therefore, the Panel finds that Respondent’s <epson-stores.com> domain name is confusingly similar to Complainant’s EPSON mark.
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s EPSON trademark and to use it in its domain name, adding the generic word “stores” which does not negate the confusing similarity with Complainant’s trademark;
(b) Respondent registered the <epson-stores.com> domain name on July 12, 2018;
(c) Respondent uses the <epson-stores.com> domain name to resolve to a website that offer products that directly compete with Complainant’s business and to pass itself off as Complainant by resolving to a website featuring the EPSON mark;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant submits that Respondent does not have rights or legitimate interests in the disputed domain name, as Respondent is not commonly known by the domain name and Complainant has not licensed or otherwise authorized Respondent to use its EPSON mark in any fashion. Absent contradicting evidence in the record that a respondent was authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights and legitimate interests in the domain name. See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Under Policy ¶ 4(c)(ii), WHOIS information can be used to support a finding that a respondent is not commonly known by a disputed domain name. See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). The WHOIS information of record for the <epson-stores.com> domain name lists “Shen Tao” as the registrant. Therefore, the Panel finds that Respondent is not commonly known by the <epson-stores.com> domain name;
(f) Complainant submits that Respondent uses the <epson-stores.com> domain name to resolve to a website offering products that directly compete with Complainant’s business. Under Policy ¶ 4(c)(i) or (iii), use of a domain name to resolve to a website offering competing products may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly 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).”). Complainant provided screenshots of the <epson-stores.com> website, which show that the site purports to offer projectors and printers for purchase. See Compl. Annex D. The Panel notes that the site features pictures of Complainant’s products and Complainant’s competitors’ products. Id. Therefore, the Panel finds that Respondent failed to use the disputed domain name within the boundaries of Policy ¶ 4(c)(i) or (iii);
(g) Complainant argues that Respondent uses the <epson-stores.com> domain name to pass itself off as Complainant or Complainant’s affiliate. Under Policy ¶ 4(c)(i) or (iii), use of a domain name to pass off as a complainant may not be considered a bona fide offering of goods or services or legitimate noncommercial or fair use. Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).). Complainant provided screenshots of the disputed domain name’s resolving website, which indicate that the site features Complainant’s EPSON mark and logo and pictures of Complainant’s products. Accordingly, the Panel concludes that Respondent uses the <epson-stores.com> domain name to pass off as Complainant and holds that Respondent failed to use the domain name for a legitimate Policy ¶ 4(c)(i) or (iii) use.
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent uses the <epson-stores.com> domain name to create confusion with Complainant’s EPSON mark for commercial gain by resolving to a website featuring Complainant’s EPSON mark and products that directly compete with Complainant’s technology business. Per Policy ¶ 4(b)(iv), use of a domain name to attract Internet users and create confusion as to the source, sponsorship, affiliation or endorsement of the content therein for commercial gain may evidence bad faith. See Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). Complainant provided screenshots of the <epson-stores.com> website, which indicate that the site features Complainant’s EPSON mark and logo, pictures of Complainant’s products and Complainant’s competitors’ products, and purports to offer competing technology products for purchase. See Compl. Annex D. Further, Complainant argues that Internet users do not receive products ordered from the website. See Amend. Compl. p. 10. Therefore, the Panel concludes that Respondent registered and used the <epson-stores.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Secondly, Respondent registered the disputed domain name with full knowledge of Complainant’s rights in the EPSON mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). A respondent may be presumed to have actual knowledge of a complainant’s rights in a mark when a complainant’s mark is famous. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Here, Complainant’s EPSON mark has created significant good will and consumer recognition around the world and has been used in commerce for over 30 years. See Compl. p. 10. Therefore, due to the fame of Complainant’s mark, the Panel finds that Respondent had actual knowledge of Complainant’s rights when the <epson-stores.com> domain name was registered and subsequently used.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the EPSON mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epson-stores.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: September 27, 2018
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