National Arbitration Forum

 

DECISION

 

Seiko Epson Corporation and Epson America, Inc. v. Domain Administrator

Claim Number: FA0508000544995

 

PARTIES

Complainant is Seiko Epson Corporation and Epson America, Inc. (“Complainant”), represented by Diana Torres, of O'Melveny & Myers LLP 400 South Hope Street, Los Angeles, CA, 90071.  Respondent is Domain Administrator (“Respondent”) 3890-B Tamiami Trail, Port Charlotte, FL 33952.

 

REGISTRAR AND DISPUTED DOMAIN NAMES 

The domain names at issue are <buyepson.net>, <epsoncart.com>, <epsoncart.net>, <picepson.com>, <picepson.net>, <qualityepson.com>, and <qualityepson.net>, registered with Go Daddy Software, Inc...

 

PANEL

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.

 

Judge Irving H. Perluss (Retired) is the Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on August 18, 2005; the National Arbitration Forum received a hard copy of the Complaint on August 22, 2005.

 

On August 22, 2005, Go Daddy Software, Inc. confirmed by e-mail to the National Arbitration Forum that the <buyepson.net>, <epsoncart.com>, <epsoncart.net>, <picepson.com>, <picepson.net>, <qualityepson.com>, and <qualityepson.net> domain names are registered with Go Daddy Software, Inc. and that the Respondent is the current registrant of the name.  Go Daddy Software, Inc. has verified that Respondent is bound by the Go Daddy Software, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On August 30, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of September 19, 2005 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@buyepson.net, postmaster@epsoncart.com, postmaster@epsoncart.net, postmaster@picepson.com, postmaster@picepson.net, postmaster@qualityepson.com, and postmaster@qualityepson.net by e-mail.

 

A timely Response was received and determined to be complete on September 19, 2005.

 

On September 27, 2005, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Irving H. Perluss (Retired) as Panelist.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES’ CONTENTIONS

A. Complainant

            1.            The EPSON trademark is registered with the U.S. Patent and Trademark Office under the following Registration Numbers:  (1) 1,134,004 for a term of 20 years from April 29, 1980, and renewed for 10 years on December 2, 2000; (2) 1,187,440 for a term of 20 years from January 26, 1982, and renewed for 10 years on March 5, 2002; (3) 1,917,610 for a term of 10 years from September 12, 1995; (4) 2,144,386 for a term of 10 years from March 17, 1998; and (5) 2,949,374 for a term of 10 years from May 10, 2005.

 

            2.            The EPSON service mark is registered with the U.S. Patent and Trademark Office under the following Registration Numbers:  (1) 2,090,289 for a term of 10 years from August 26, 1997; and (2) 2,266,760 for a term of 10 years from August 3, 1999.

 

            3.            The disputed domain names appear to have been first registered by Respondent on or about November 27, 1999.

 

            4.            Complainant Seiko Epson Corporation (“Seiko Epson”) is a multinational manufacturer of, and world leader in, the design, production, and distribution of high technology products, including printers, scanners, digital cameras, and video projectors.  Seiko Epson’s products are designed for a wide range of consumers in small and large business, government offices and home offices.

 

            5.            Complainant Epson America, Inc. (“Epson America”) is the North and Latin American sales, marketing, and customer service subsidiary of Seiko Epson.  Epson America is responsible for the sale and distribution of EPSON brand computer products, printer products, and other peripheral devices and electronic components in various countries throughout North America, Central America, and South America.

 

            6.            Complainants Seiko Epson and Epson America have been using the EPSON trademark and service mark in the United States and around the world for more than 30 years and have invested substantially in the trademark and service mark associated with the goods and services marketed under the EPSON brand name.  The EPSON trademarks and service marks, together with Complainant’s names and reputation, have become synonymous with quality of products such as printers, scanners, digital cameras, video projectors, and supplies for these products, including replacement ink cartridges.

 

            7.            Complainants have not licensed or otherwise permitted Respondent to use the EPSON marks.

 

            8.            Respondent maintains active web sites at the domains <epsoncart.com>, <picepson.com>, and <qualityepson.com> (the “Active Domains).  These domains divert consumers for EPSON products to sites that promote the sale of non-EPSON replacement ink cartridges for ink jet printers, including EPSON printers, and purportedly original EPSON replacement cartridges.

 

            9.            Respondent also holds registrations for the domain names <buyepson.net>, <epsoncart.net>, <picepson.net>, and <qualityepson.net> (the “Inactive Domains”), though these domain names are not connected to active web pages at the time of the filing of the Complaint.

 

            10.            Price-less Inkjet Cartridge Co. (“Price-less”) is the actual registrant of the Active Domains and the Inactive Domains, and Respondent “Domain Administrator” is the same entity as Price-less.  On May 2, 2001, in UDRP Proceeding Number NAF FA 96849, a comparable proceeding, the Panel ruled against Price-less, found that it had no rights or legitimate interests in the disputed domain names, and ordered that they be transferred to Complainant.

 

            11.            On March 20, 2005, Complainants sent a cease-and-desist letter to the registrant of the Domain Names in care of Price-less, advising that the registration and use of the Domain Names constitutes trademark infringement, unfair competition, trademark dilution and domain name piracy and demanding that Price-less cease and desist any use of the EPSON trademark and service mark.

 

            12.            On April 15, 2005, an individual who identified himself as Ray Slipatchuk, representing Price-less, spoke with Alicia Meyer of O’Melveny & Myers, LLP, counsel for Complainants, in response to Complainant’s March 29 letter.  During that conversation, Mr. Slipatchuk informed Ms. Meyer that – the 2001 Decision notwithstanding – it was his position that Price-less’ use of the EPSON trademark is legitimate, and further that Price-less would not take down the active websites nor delete the registrations from the domain names.  To the contrary, Mr. Slipatchuk disparaged the NAF Panel’s 2001 Decision and stated that he specifically chose the disputed domain names here involved after the 2001 Decision transferring his previous domain names, so that he could continue using the EPSON name for his business activity.  Mr. Slipatchuk further asserted that he would create a “nightmare” for Complainants and threatened to disparage Complainants to the American Legion, for whom Mr. Slipatchuk purports to run a website.

 

            13.            The disputed domain names are identical and confusingly similar to the EPSON trademark and service mark.  The additional words are inconsequential, descriptive and non-distinctive.

 

            14.            Respondent’s addition of the terms “quality” and “PIC” (an acronym for Price-less Inkjet Company) in certain of the disputed domain names suggests to consumers that Respondent’s company is an authorized dealer or licensee of Complainants, which it is not.

 

            15.            A disclaimer on the websites does not help Respondent because of initial interest confusion.

 

            16.            Respondent has no rights or legitimate interests in the disputed domain names because Respondent is neither a licensee of Complainants nor is it otherwise authorized to use the EPSON mark.

 

            17.            Respondent is not commonly known by or identified with the disputed domain names.  EPSON is an invented word and has no meaning other than to serve as a source identifier for Complainant Seiko Epson and its subsidiaries, as well as the products manufactured and/or sold by them.

 

            18.            Respondent does not have any legitimate interest in the disputed domain names as it has with them developed web pages that divert consumers for EPSON products to sites that sell primarily non-EPSON replacement cartridges.  This is not a use of the Active Domain Names in a legitimate, bona fide offering of goods or services.

 

            19.            Respondent has registered and is using the disputed domain names in bad faith.  He was well aware of the fame of the EPSON marks at the time of registration.  Moreover, in the light of EPSON’s prior, successful UDRP proceeding against Price-less and Respondent’s pattern of registering and using domain names that consist primarily of the trademarks of others[1] establishes Respondent’s bad faith registration of the disputed domain names.

B. Respondent

            1.            Respondent has not attempted to hide its identity.

 

            2.            Respondent did not disparage the 2001 Decision in a conversation with counsel for Complainant.  Indeed, the disputed domain names here involved were registered in 1999, two years before the 2001 Decision.

 

            3.            Respondent, in his conversation, did not threaten, but advised counsel of the possibility of bad publicity if Complainants did not reconsider its actions.

 

            4.            Should EPSON continue to use the tactic of taking away domain names that have been paid for and are legally owned by others, then there is no other alternative but to inform consumers, so they can take into consideration the next time they purchase specific brands of electronics.  The right question to ask at this point, “Do the people advising the Complainants reach in excess of five million potential electronics buyers yearly?”  The people Respondent reaches buy electronics and if only Respondent’s efforts influence a small percentage then EPSON will have made a regrettable decision in this matter.

 

            5.            This entire matter can be wrapped up in a single philosophy that the National Arbitration Forum must already realize.  The Forum is being used to rectify a bad marketing decision and the taking of domain names under some Trademark infringement scheme is the printer manufacturers’ way of maintaining arbitrarily high consumable prices.  The America people deserve better and someone should stand up for their right to choose.  EPSON (and their Advisors) believe that by taking away domain names they somehow can right their mistake.  Their problem is not Price-less, Slipatchuk or these names – it’s the Chinese manufacturers who crank out cartridges for pennies and eat away at their market share in selling high-cost consumables.  No one can argue this fact.

 

            6.            No semi-intelligent person can confuse any of the disputed websites from that of EPSON’s.  Just a simple review of the sites will prove this issue.  What is confusing is the buyer of a printer paying $69.00 for the entire unit and then paying $60.00 for OEM replacement cartridges.

 

FINDINGS AND DETERMINATIONS

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.”

 

Paragraph 4(a) of the Policy requires that the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2)    the 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.

 

Preliminarily, it is to be noted that the Panelist has ignored pejorative comments from the parties, and this matter will be decided strictly on the merits.

 

Identical and/or Confusingly Similar

 

It is found and determined that the disputed domain names are confusingly similar to Complainant’s famous and long-registered marks.  The addition of generic or descriptive terms such as “buy,” “pic,” and “quality” does not sufficiently distinguish the disputed domain names from Complainant’s marks.  See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D20001-0026 (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); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (“Neither the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY.”).

 

Complainants have established the first required element of the Policy (Policy ¶ 4(a)(ii)).

 

Rights or Legitimate Interests

 

It is found and determined that Respondent has no rights or legitimate interest in any of the disputed domain names.

 

This is because it is found that Respondent is using the confusingly similar domain names to operate websites that sell Complainant’s products and accessories for Complainant’s products without authorization.  Such use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).  See Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the Complainant’s mark without authorization to attract Internet users to its website, which offered both the Complainant’s products and those of the Complainant’s competitors); see also Pitney Bowes Inc. v. Ostanik, D2000-1611 (WIPO Jan. 24, 2001) (finding no rights or legitimate interests in the <pitneybowe.com> domain name where the respondent purports to resell original Pitney Bowes equipment on its website, as well as goods of other competitors of the complainant).

Moreover it is evident that Respondent is not commonly known by the <buyepson.net>, <epsoncart.com>, <epsoncart.net>, <picepson.com>, <picepson.net>, <qualityepson.com>, and <qualityepson.net> domain names or authorized to register names featuring the EPSON mark.  See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests here (1) the respondent is not a licensee of the complainant; (2) the Complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name).

 

The second element required by the Policy has been established.  (Policy ¶ 4(a)(ii).)

 

Registration and Use in Bad Faith

 

It is found and determined that Respondent registered and is using or will use the disputed domain names in bad faith.

 

Respondent is using the disputed domain names to operate a website that purports to sell Complainant’s goods without authorization.  Such use constitutes disruption and is evidence of bad faith registration and use.  See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the Complainant’s goods, to the complainant); see also G.D. Searle & Co. v. Celebrex Cox-2 Vioxx.com, FA 124508 (Nat. Arb. Forum Oct. 16, 2002) (“Unauthorized use of Complainant’s CELEBREX mark to sell Complainant’s products represents bad faith use under Policy ¶ 4(b)(iii).”).

 

It is also evident that Respondent’s use of the disputed domain names will cause confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website.  Such use of a confusingly similar domain name for commercial gain is evidence of bad faith registration and use.  See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the Complainant’s products without permission and to mislead Internet users by implying that the respondent was affiliated with the complainant); see also AT&T Corp. v. RealTime Internet.com Inc., D2001-1487 (WIPO May 1, 2002) (“[U]se of domain names to sell Complainant’s goods and services without Complainant’s authority . . . is bad faith use of a confusingly similar domain name.”).[2]

 

Actual knowledge obviously must be conceded since Respondent is using the disputed domain names to sell Complainant’s products.  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); see also Orange Glo Int’l v. Blume, FA 118313 9Nat. Arb. Forum Oct. 4, 2002) (“Complainant’s OXICLEAN mark is listed on the Principal Register of the USPTO, a status that confers constructive notice on those seeking to register or use the mark or any confusingly similar variation thereof.”); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration); see also Pfizer, Inc. v. Suger, D20002-0187 (WIPO Apr. 24, 2002) (finding that because the link between Complainant’s mark and the content advertised on the respondent’s website was obvious, the respondent “must have known about the Complainant’s mark when it registered the subject domain name”).

 

Complainants have established the third required element of the Policy.  (Policy ¶ 4(a)(iii).)[3]

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <buyepson.net>, <epsoncart.com>, <epsoncart.net>, <picepson.com>, <picepson.net>, <qualityepson.com>, and <qualityepson.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

 

JUDGE IRVING H. PERLUSS (Retired), Panelist
Dated:  October 11, 2005