WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION Epson Europe BV and on behalf of Seiko Epson Corporation v. Lal Kakar Case No. D2009-1246 1. The Parties
The Complainant is Epson Europe BV and on behalf of Seiko Epson Corporation, of Amsterdam, the Netherlands, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Lal Kakar of, London, United Kingdom. 2. The Domain Name and Registrar
The disputed domain name is registered with 1&1 Internet AG. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on September 22, 2009. On September 22, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On September 24, 2009, 1&1 Internet AG transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with paragraphs 2(a) and 4(a) of the Rules, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on September 30, 2009. In accordance with paragraph 5(a) of the Rules, the due date for Response was October 20, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on October 21, 2009.
The Center appointed Brigitte Joppich as the sole panelist in this matter on October 26, 2009. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with paragraph 7 of the Rules. 4. Factual Background
The Complainant in this administrative proceeding is a subsidiary of Seiko Epson Corporation (“SEC”), a global corporation and one of the world's largest manufacturers of inkjet, dot matrix and laser printers, scanners, desktop computers, business, multimedia and home theatre projectors, large home theatre televisions, robots and industrial automation equipment, point of sale docket printers and cash registers, laptops, integrated circuits, LCD components and other associated electronic components. SEC's global business reported net sales of US$ 9.2 billion in 2008 with an operating income of USD 856 million over the same period. The Complainant is acting under a power of attorney whereby it is “authorised and instructed by SEC to take legal action or request administrative action in the Territory to protect the interests and property of SEC”.
The Complainant's parent company SEC is the proprietor of numerous trademark registrations for EPSON, inter alia United Kingdom registration No. 1048343 EPSON filed on June 19, 1975, United States registration No. 1134004 EPSON filed on August 25, 1975, and European Community Trademark registration No. 004147229 EPSON filed on November 29, 2004 (the “EPSON Marks”). The EPSON Marks mainly cover products in class 9 and have been considered as being well-known by previous Panels (cf. Epson Europe BV v. Armitage,WIPO Case No. D2009-0995; EPSON Europe BV v. Costas Ioannou,WIPO Case No. D2009-0816).
Furthermore, the Complainant's parent company SEC is the proprietor of various domain name registrations including its EPSON Marks, inter alia registered as early as February 1, 1991.
The disputed domain name was first registered on August 22, 2006 and resolves to a website entitled “Epson printing press”, offering a variety of printing services.
The Respondent has been the subject of a complaint at the instance of the present Complainant under the Nominet UK Dispute Resolution Service (DRS) in relation to the domain name which resulted in the transfer of the domain name. 5. Parties' Contentions A. Complainant
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:
(1) The disputed domain name is confusingly similar to the EPSON Marks because EPSON is an extremely well-known “made-up” term and forms the first, dominant, most significant and distinctive element of the disputed domain name. The Complainant further submits that the additional word “printing” in the domain name is not dominant, being merely generic and descriptive.
(2) The Respondent has no rights or legitimate interests in the disputed domain name. The Complainant contends that the Respondent is not commonly known by the domain name, that the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the Complainant's trademarks, and that the Respondent is not an authorised distributor of the Complainant's products. The Complainant further submits that the Respondent has not made any demonstrable preparations to use the domain name in connection with a genuine offering of goods and services because there are no circumstances in which a company with a substantially similar name and operating in an identical field of business to the Complainant could be considered bona fide given the global fame of the EPSON mark and the length of time the Complainant has maintained rights in that name, and that an entity cannot offer bona fide services using a name that is substantially similar to an existing and very well established global mark simply by the registration of a limited company and avers that no offering of third party goods under the name of the EPSON registered trade mark, as conducted by the Respondent, could be considered as genuine. The Complainant further submits that it checked upon the Respondent and found that, according to Companies House records, “Epson Printing Limited” does exist and the individual named on the WhoIs appears to be a director of such company. However, when the Complainant's representatives wrote to the Respondent in an attempt to settle this dispute amicably, a recorded delivery letter sent to the company address was returned marked “address incomplete” and the Complainant's further enquiries revealed that the company's premises appear to have been abandoned and it is reasonable to conclude that the company is not actively trading. The Complainant further contends that the Respondent is not making a legitimate non-commercial or fair use of the domain name.
(3) The Complainant finally claims that the domain name was registered and is being used in bad faith to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant's marks as to the source, sponsorship, affiliation or endorsement of the Respondent's website. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:
(i) the domain name is identical or confusingly similar to the Complainant's trademark; and
(ii) the 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. A. Identical or Confusingly Similar
The disputed domain name fully incorporates the Complainant's highly distinctive and well known EPSON Marks in which the Complainant has rights.
The mere addition of the generic word “printing” following the trademark does not eliminate the similarity between the Complainant's marks and the domain name. It is well established that a domain name that wholly incorporates a trademark may be confusingly similar to such trademark for purposes of the Policy despite the addition of common or generic words (cf. Dr. Grandel GmbH v. Drg Randel Inc,WIPO Case No. D2005-0829; Microsoft Corporation v. J. Holiday Co.,WIPO Case No. D2000-1493; Quixtar Investments, Inc. v. Dennis Hoffman, WIPO Case No. D2000-0253; RRI Financial, Inc., v. Ray Chen, WIPO Case No. D2001-1242).
Furthermore, it is well established that the specific top level domain name is generally not an element of distinctiveness that can be taken into consideration when evaluating the identity or confusing similarity between the complainant's trademark and the disputed domain name (cf. Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr.,WIPO Case No. D2000-1525; Rollerblade, Inc. v. Chris McCrady,WIPO Case No. D2000-0429; Phenomedia AG v. Meta Verzeichnis Com,WIPO Case No. D2001-0374).
Therefore, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy. B. Rights or Legitimate Interests
Paragraph 4(c) of the Policy sets out three illustrative circumstances as examples which, if established by a respondent, shall demonstrate its rights to or legitimate interests in the domain name for purposes of paragraph 4(a)(ii) of the Policy, i.e.
(i) before any notice to the respondent of the dispute, the use by the respondent of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
Even though the Policy requires the complainant to prove that the respondent has no rights or legitimate interests in the disputed domain name, it is the consensus view among panelists that a complainant has to make only a prima facie case to fulfil the requirements of paragraph 4(a)(ii) of the Policy. As a result, the burden of proving that the respondent has rights or legitimate interests in the disputed domain name will then shift to the respondent.
The Complainant has asserted that the Respondent cannot have any legitimate interests in the disputed domain name as he has not used it in connection with a bona fide offering of goods and services, as the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the Complainant's trademarks, as the Respondent is not known by the disputed domain name, and as the Respondent is not making any legitimate non-commercial or fair use of the disputed domain name. The Panel finds that the Complainant has fulfilled its obligations under paragraph 4(a)(ii) of the Policy.
The Respondent did not deny these assertions in any way and therefore failed to prove any rights or legitimate interests in the disputed domain name.
Furthermore, the Panel cannot find any evidence of the Respondent's rights or legitimate interests in the disputed domain name in the case file as presented by the Complainant, either. In particular, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services as the Respondent's use of the disputed domain name in connection with printing services is an infringement of the Complainant's well-known EPSON marks.
Accordingly, the Panel finds that the Complainant has proven that the Respondent has no rights or legitimate interests in respect of the domain name under paragraphs 4(a)(ii) and 4(c) of the Policy. C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which are evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trade mark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
The circumstances mentioned in paragraph 4(b) of the Policy are not exclusive, while the two elements of the third requirement of the Policy are cumulative conditions: the Complainant must show that the domain name was registered in bad faith and is being used in bad faith. This point is clear from the wording of the Policy and has been confirmed ever since Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (cf. also Telstra Corporation Limited v. Adult Web Development and Telstraexposed,WIPO Case No. D2002-0952; Telstra Corporation Ltd v. David Whittle,WIPO Case No. D2001-0434; Prada S.A. v. Mr. Chuan Sheng Wang,WIPO Case No. D2003-0758).
The Complainant is well-known internationally and has been carrying on business activities under the EPSON Marks for many decades. Given the high distinctiveness of the EPSON Marks in connection with electronic devices (inter alia printers), it is inconceivable that the Respondent registered the disputed domain name which consists of the Complainant's EPSON Marks and the word “printing” without knowledge of the Complainant's rights in the EPSON Marks. The Panel is therefore satisfied that the Respondent registered the disputed domain name with full knowledge of the Complainant's marks and therefore in bad faith under paragraph 4(a)(iii) of the Policy.
As to bad faith use, by fully incorporating the EPSON Marks into the disputed domain name and by using the website at such domain name in connection with printing services the Respondent was, in all likelihood, trying to divert traffic intended for the Complainant's website to its own for commercial gain. The use and exploitation of third parties' trademarks to commercially profit from the diversion of Internet users has in many decisions been found to be use in bad faith under paragraph 4(b)(iv) of the Policy (cf. America Online, Inc. v. Tencent Communications Corporation, NAF Case No. FA 93668; Lilly ICOS LLC v. John Hopking / Neo net Ltd.,WIPO Case No. D2005-0694; Lilly ICOS LLC v. East Coast Webs, Sean Lowery,WIPO Case No. D2004-1101). The Panel is therefore satisfied that the Respondent has also used the disputed domain name in bad faith under paragraph 4(b)(iv) of the Policy.
Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy. 7. Decision
For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name be transferred to the Complainant.
Brigitte Joppich
Sole Panelist
Dated: November 8, 2009
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