Seiko Epson Corporation and Epson America, Inc. v. PMA Media Group c/o Dewey MacKay
Claim Number: FA0608000767167
Complainant is 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 PMA Media Group c/o Dewey MacKay (“Respondent”), 554 E. Technology Way, Orem, UT 84097.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com>, registered with Registerfly.Com, Inc.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2006; the National Arbitration Forum received a hard copy of the Complaint on August 3, 2006.
On August 10, 2006, Registerfly.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com> domain names are registered with Registerfly.Com, Inc. and that Respondent is the current registrant of the names. Registerfly.Com, Inc. has verified that Respondent is bound by the Registerfly.Com, 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 15, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 5, 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@epsoninkcartridgesubstitute.com and postmaster@epsoninkcartridges4less.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 12, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
Complainant Seiko Epson Corporation is a leading multinational manufacturer and distributor of high technology products, including printers, scanners, digital cameras and video projectors.
In connection with the production and distribution of its products, Seiko Epson Corporation holds a trademark registration with the United States Patent and Trademark Office (“USPTO”) for the EPSON mark (Reg. No. 1,134,004 issued April 29, 1980).
Epson America, Inc. is the wholly-owned subsidiary of Seiko Epson Corporation that oversees the sales, marketing and consumer service of its parent company’s products in North America and Latin America.
Respondent registered the disputed <epsoninkcartridgesubstitute.com>
domain name on January 10, 2006 and the disputed <epsoninkcartridges4less.com>
domain name on January 17, 2006.
The disputed domain names resolve to websites that contain links to the websites of third-party companies that directly compete with the business of Complainant.
Respondent’s domain names <epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com> are confusingly similar to Complainant’s EPSON mark.
Respondent does not have any rights or legitimate interests in the domain names <epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com>.
Respondent registered and uses the domain names <epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com> in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain names; and
(3) the domain names were registered and are being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a
trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has established 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.”
Complainant contends that the disputed domain names are confusingly similar to its EPSON mark. The <epsoninkcartridgesubstitute.com> domain name contains Complainant’s EPSON mark in its entirety and merely adds the phrase “ink cartridge substitute” and the “.com” generic top-level domain (“gTLD”). Similarly, the <epsoninkcartridges4less.com> domain name contains Complainant’s EPSON mark in its entirety and merely adds the phrase “ink cartridges 4 less” and the “.com” gTLD. The added phrases are both obviously related to the business of Complainant. Accordingly, the <epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com> domain names are confusingly similar to Complainant’s EPSON mark. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (finding the domain name <ftdflowers4less.com> to be confusingly similar to a complainant’s FTD mark); see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where a respondent’s domain name combines a complainant’s mark with a generic term that has an obvious relationship to that complainant’s business); see further Brambles Indus. Ltd. v. Geelong Car Co. Pty. Ltd., D2000-1153 (WIPO Oct. 17, 2000) (finding that the domain name <bramblesequipment.com> is confusingly similar to a competing mark because the combination of the words "brambles" and "equipment" in the domain name falsely implies an association with a complainant’s business).
The Panel therefore finds that Policy
¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in either of the disputed domain names. Pursuant to Policy ¶ 4(a)(ii), Complainant has the initial burden to establish that Respondent has no rights or legitimate interests in the domain names. Once Complainant makes out a prima facie case in support of its allegations, the burden then shifts to Respondent to show that it has such rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once a complainant asserts that a respondent has no rights or legitimate interests with respect to a domain, the burden shifts to that respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that, under appropriate circumstances, as here, the assertion by a complainant that a respondent has no right or legitimate interest is sufficient to shift the burden of proof to that respondent to demonstrate that such a right or legitimate interest exists).
Respondent’s failure to submit a Response in this proceeding
raises a presumption that Respondent lacks rights and legitimate interests in
the disputed domain names. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002):
[B]ased on Respondent's failure to respond,
it is presumed that Respondent lacks all rights and legitimate interests in the
disputed domain name.
See also BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000):
By
not submitting a response, Respondent has failed to invoke any circumstance
which could demonstrate, pursuant to ¶ 4(c) of the Policy, any rights or
legitimate interests in the domain name.
The Panel, however, elects to
examine the record to determine if there is any basis for concluding that
Respondent has rights or legitimate interests under Policy ¶ 4(c).
In this connection, we first
observe that Complainant contends, without contradiction from Respondent, that
Respondent is not commonly known by either of the disputed domain names. Moreover, according to the WHOIS registry,
the registrant of the disputed domain names is “PMA Media Group” of Orem,
Utah. Therefore, the Panel must
conclude that Respondent is not commonly known by either of the disputed domain
names. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information
for the disputed domain [name], one can infer that Respondent, Onlyne Corporate
Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”);
see also Am.
Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb.
Forum May 13, 2002) (finding that a respondent was not commonly known by <aolcamera.com>
or <aolcameras.com> because that respondent was doing business as “Sunset
Camera” and “World Photo Video & Imaging Corp.”).
Additionally, Complainant asserts that Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. It is uncontroverted in this record that the disputed domain names resolve to websites that contain links to the websites of third-party companies that directly compete with the business of Complainant, presumably for commercial gain. The use of a confusingly similar domain name to advertise on behalf of direct competitors of the holder of a mark does not qualify as bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that a respondent’s diversionary use of a complainant’s marks to send Internet users to a website displaying links, some of which are tied to complainant’s competitors, was not a bona fide offering of goods or services); see also Compaq Info. Techs. Group v Jones, FA 99091 (Nat. Arb. Forum Oct. 4, 2001) (finding that a respondent had no rights or legitimate interests in a domain name that it used the domain there in question to redirect Internet users to a commercial website containing links to offers for merchandise from a complainant's competitor).
For these reasons, the Panel finds that Policy ¶ 4(a)(ii)
has been satisfied.
Under this heading, Complainant contends that Respondent registered and used the disputed domain names in bad faith. Because both of the domain names contain Complainant’s EPSON mark in its entirety and resolve to websites that advertise products in Complainant’s industry, there is a likelihood that consumers will become confused as to Complainant’s sponsorship of or affiliation with the challenged domains. And, in the circumstances, it is reasonable to presume that Respondent is benefiting commercially from click-through or referral fees from advertisements contained within these websites. Accordingly, Respondent has registered and used the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Philip Morris Inc. v. r9.net, D2003-0004 (WIPO Feb. 28, 2003) (finding that a respondent’s registration of a domain name to redirect Internet users to banner advertisements constituted bad faith use of the domain name); see also ESPN, Inc. v. Ballerini, FA 95410 (Nat. Arb. Forum Sept. 15, 2000) (finding bad faith where a respondent linked a domain name to another domain, <iwin.com>, presumably receiving a portion of the advertising revenue from the site for directing Internet traffic there, thus using a domain name to attract Internet users for commercial gain).
It appears from the record that Respondent registered the
contested domain names with either actual or constructive knowledge of Complainant’s
rights in the EPSON mark by virtue of Complainant’s prior registration of that
mark with the pertinent national authorities.
Registration and use of a confusingly similar domain name despite such
actual or constructive knowledge, without more, evidences bad faith within the
meaning of Policy ¶ 4(a)(iii). See Exxon Mobil Corp. v. Fisher, D2000-1412
(WIPO Dec. 18, 2000); see also Digi
Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002), and Orange Glo Int’l v. Blume,
FA 118313 (Nat. Arb. Forum Oct. 4, 2002).
The Panel thus
finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <epsoninkcartridgesubstitute.com> and <epsoninkcartridges4less.com> domain names be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: September 22, 2006
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