Seiko Epson Corporation and Epson America, Inc. v. Jason Davis d/b/a Epson Trust
Claim Number: FA0607000746555
Complainants are Seiko Epson Corporation and Epson America, Inc. (collectively, “Complainant”), represented by R. Parrish Freeman, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is Jason Davis d/b/a Epson Trust (“Respondent”), 23 Carnation Ave, Etobicoke, ON M8V2J8 CA.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <epsontrust.com>, registered with Netfirms, Inc.
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 Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 7, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 11, 2006.
On July 11, 2006, Netfirms, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsontrust.com> domain name is registered with Netfirms, Inc. and that Respondent is the current registrant of the name. Netfirms, Inc. has verified that Respondent is bound by the Netfirms, 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 July 19, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 8, 2006 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@epsontrust.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 14, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
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." 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 makes the following assertions:
1. Respondent’s <epsontrust.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <epsontrust.com> domain name.
3. Respondent registered and used the <epsontrust.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation and Epson America, is a world leader in designing, manufacturing, producing and distributing high technology products, including printers, scanners, digital cameras and video projectors. In connection with its products, Complainant is authorized to use the trademark registration for the EPSON mark (Reg. No. 1,134,004 issued April 29, 1980) with the United States Patent and Trademark Office (“USPTO”).
Respondent registered the <epsontrust.com> domain name on March 8, 2006. The disputed domain name resolves to a website that offers services associated with the location and acquisition of personal loans, business loans, debt consolidation and home equity loans.
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."
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.”).
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.
Complainant has obtained rights in the EPSON mark through
registration of the mark with the USPTO.
See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”);
see also Vivendi Universal Games v. XBNetVentures Inc., FA
198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark
registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that the <epsontrust.com> domain name is confusingly similar to the EPSON mark. The disputed domain name contains Complainant’s EPSON mark in its entirety and adds the term “trust.” The Panel finds that the addition of a single term, such as “trust,” does not differentiate the disputed domain name from Complainant’s mark when viewed in the light of Policy ¶ 4(a)(i). See Nikon, Inc. v. Technilab, Inc., D2000-1774 (WIPO Feb. 26, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law); see also 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 finds that Policy ¶ 4(a)(i) has been satisfied.
Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden to make a prima facie showing that Respondent does not have rights or legitimate interests in the disputed domain name. Once Complainant establishes such a showing, the burden shifts to Respondent to come forward with evidence to affirmatively prove that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Respondent’s failure to file a Response in this proceeding creates a presumption that Respondent lacks rights and legitimate interest in the disputed domain name. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names). However, the Panel will evaluate the record to determine if Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c).
Complainant asserts that Respondent is not commonly known by the disputed domain name. The only evidence on record regarding the identity of Respondent is from the WHOIS registry, where “Jason Davis” of “Epson Trust” is listed as the registrant of the disputed domain name. The Panel finds that the information in the WHOIS registry alone is insufficient to satisfy the requirements of Policy ¶ 4(a)(ii). See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Starwood Hotels & Resorts Worldwide, Inc. v. SRW Hotels Worldwide, FA 214416 (Nat. Arb. Forum Jan. 12, 2004) (“Though Respondent’s WHOIS information lists Respondent as ‘SRW Hotels Worldwide,’ part of which constitutes the disputed domain name, there is no evidence before the Panel that Respondent was actually commonly known by that name.”).
The disputed domain name resolves to a website that
offers services associated with the location and acquisition of personal loans,
business loans, debt consolidation and home equity loans. Accordingly, the Panel concludes that
Respondent’s use of the disputed domain name that contains Complainant’s EPSON
mark to direct Internet users to an unrelated website does not qualify as a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i). Additionally, the use of the confusingly
similar domain name to divert Internet users to a website that offers loans and
refinancing options does not qualify as a legitimate noncommercial use pursuant
to Policy ¶ 4(c)(iii). See U.S.
Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the
complainant’s mark and the goodwill surrounding that mark as a means of
attracting Internet users to an unrelated business was not a bona fide offering of goods or services); see also Big Dog Holdings,
Inc. v. Day, FA 93554 (Nat. Arb. Forum Mar. 9, 2000) (finding no
legitimate use when Respondent was diverting consumers to its own website by
using Complainant’s trademarks).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent has registered and used
the disputed domain name in bad faith.
Due to the confusingly similar nature of the disputed domain name to
Complainant’s EPSON mark, it is likely that consumers will be confused as to
Complainant’s sponsorship of or affiliation with the resulting website. Additionally, it is a reasonable inference
that Respondent is obtaining financial gain from the operation of the resulting
website that offers financial services.
Accordingly, the Panel finds that Respondent’s registration and use of
the confusingly similar domain name to attract Internet users to its commercial
website amounts to bad faith registration and use pursuant to Policy ¶
4(b)(iv). See G.D. Searle & Co.
v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding
that the respondent registered and used the domain name in bad faith pursuant
to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar
domain name to attract Internet users to its commercial website); see also AOL
LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006)
(finding that the respondent took advantage of the confusing similarity between
the <theotheraol.com> and <theotheraol.net> domain names and the
complainant's AOL mark, which indicates bad faith registration and use pursuant
to Policy ¶ 4(b)(iv)).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <epsontrust.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 24, 2006
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