Seiko Epson Corporation and Epson America, Inc. v. Elisabeth Owen
Claim Number: FA0609000796386
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 Elisabeth Owen (“Respondent”), 12588 Johnson Avenue, Cape Charles, VA 23310.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <ixiaepson.com>, registered with Bulkregister, LLC.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2006; the National Arbitration Forum received a hard copy of the Complaint on September 18, 2006.
On September 18, 2006, Bulkregister, LLC confirmed by e-mail to the National Arbitration Forum that the <ixiaepson.com> domain name is registered with Bulkregister, LLC and that Respondent is the current registrant of the name. Bulkregister, LLC has verified that Respondent is bound by the Bulkregister, LLC 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 September 26, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 16, 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@ixiaepson.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 20, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <ixiaepson.com> domain name is confusingly similar to Complainant’s EPSON mark.
2. Respondent does not have any rights or legitimate interests in the <ixiaepson.com> domain name.
3. Respondent registered and used the <ixiaepson.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Seiko Epson Corporation, manufactures, promotes and distributes printers and printer-related products under the EPSON mark. Complainant, Epson America, Inc., is the North American sales, marketing and customer service subsidiary of Seiko Epson Corporation. The Panel will hereinafter refer to both parties collectively as “Complainant.”
Complainant has registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980; Reg. No 1,187,440 issued January 26, 1982; Reg. No. 1,917,610 issued September 12, 1995; Reg. No. 2,144,386 issued March 17, 1998; Reg. No. 2,949,374 issued May 10, 2005).
Respondent registered the <ixiaepson.com> domain name on March 20, 2006. Respondent’s website at the disputed domain name displays the text “Epson The latest News” and contains content unrelated to Complainant and its printing products and services. The website also features links to websites selling domain names and web hosting services.
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 established rights in the EPSON mark through registration of the mark with the USPTO. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s <ixiaepson.com> domain name
incorporates Complainant’s EPSON mark in its entirety and merely adds the term
“ixia,” a term for a South African flower.
The mere addition of a term to Complainant’s mark does not negate a
finding of confusing similarity under Policy ¶ 4(a)(i). See Warner
Bros. Entm’t Inc. v. Rana, FA 304696 (Nat.
Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term
“collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain
name from the mark); see also Google Inc. v. Xtraplus Corp., D2001-0125
(WIPO Apr. 16, 2001) (finding that the respondent’s domain names were
confusingly similar to Complainant’s GOOGLE mark where the respondent merely
added common terms such as “buy” or “gear” to the end).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <ixiaepson.com> domain name. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement. Here, Complainant has alleged that Respondent does not own any rights in the terms STARWOOD or STARWOODS, and that Respondent’s use of the Domain Name is not a fair one. These unsupported assertions, though sparse, are sufficient to make a prima facie showing in regard to the legitimacy element.”).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the <ixiaepson.com>
domain name. See 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); see also Geocities v. Geocities.com, D2000-0326 (WIPO June 19, 2000) (finding
that the respondent has no rights or legitimate interests in the domain name
because the respondent never submitted a response or provided the panel with
evidence to suggest otherwise). However, the Panel will now examine the record to determine
if Respondent has rights or legitimate interests under Policy ¶ 4(c).
Respondent has registered the <ixiaepson.com>
domain name under the name “Elisabeth Owen,” and there is no other evidence in
the record suggesting that Respondent is commonly known by the <ixiaepson.com>
domain name. Thus, Respondent has not
established rights or legitimate interests in the <ixiaepson.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See The Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7,
2006) (concluding that the respondent was not commonly known by the disputed
domain names where the WHOIS information, as well as all other information in
the record, gave no indication that the respondent was commonly known by the
disputed domain names, and the complainant had not authorized the respondent to
register a domain name containing its registered mark); see also Coppertown Drive-Thru Systems, LLC v.
Snowden, FA 715089 (Nat. Arb.
Forum Jul. 17, 2006) (concluding that the respondent was not
commonly known by the <coppertown.com> domain name where there was no
evidence in the record, including the WHOIS information, suggesting that the
respondent was commonly known by the disputed domain name).
Respondent’s <ixiaepson.com> domain name
resolves to a website displaying Complainant’s EPSON mark but containing
content wholly unrelated to Complainant.
This website also contains links to third-party websites offering domain
names for sale and web hosting services.
In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the respondent
registered <seiko.net>, which was identical to the complainant’s SEIKO
mark, and was redirecting Internet users to a third-party website unrelated to
the mark. The panel stated that
“[d]iverting customers, who are looking for products relating to the famous
SEIKO mark, to a website unrelated to the mark is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial
or fair use under Policy ¶ 4(c)(iii).”
Likewise, by redirecting Internet users seeking information on
Complainant’s printer-related products and services to its own unrelated
website, Respondent is not using the <ixiaepson.com> domain name
in connection with 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 Golden Bear Int’l,
Inc. v. Kangdeock-ho, FA 190644 (Nat. Arb. Forum Oct. 17, 2003)
(“Respondent's use of a domain name confusingly similar to Complainant’s mark
to divert Internet users to websites unrelated to Complainant's business does
not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i)
or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has registered and is using the <ixiaepson.com>
domain name, which is confusingly similar to Complainant’s mark, to maintain a
web page that displays Complainant’s EPSON mark but contains content wholly
unrelated to Complainant, including links to third-party websites selling
domain names and web hosting services.
The Panel finds that Respondent is taking advantage of the confusing
similarity between the disputed domain name and Complainant’s mark in order to
profit from the goodwill associated with the mark, and that such registration
and use constitutes bad faith according to Policy ¶ 4(b)(iv). See State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept.
12, 2000) (finding bad faith where the respondent registered the domain name
<bigtex.net> to infringe on the complainant’s goodwill and attract
Internet users to the respondent’s website);
see also State Farm Mut.
Auto. Ins. Co. v. Northway, FA 95464 (Nat. Arb. Forum Oct. 11, 2000)
(finding that the respondent registered the domain name
<statefarmnews.com> in bad faith because the respondent intended to use
the complainant’s marks to attract the public to the web site without
permission from the complainant).
The Panel concludes that Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ixiaepson.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 27, 2006
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