WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISION EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Anem, J.C. Postema Case No. D2009-1692 1. The Parties
Complainant is EPSON Europe BV for and on behalf of Seiko EPSON Corporation of Amsterdam, the Netherlands, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
Respondent is Anem, J.C. Postema of Uithuizen, the Netherlands. 2. The Domain Names and Registrars
The disputed domain names and (the “Domain Names”) are registered with Ascio Technologies Inc. and Realtime Register B.V. respectively. 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 9, 2009. On December 11, 2009, the Center transmitted by email to Ascio Technologies Inc. and Realtime Register B.V. a request for registrar verification in connection with the Domain Names. On December 15, 2009, Ascio Technologies Inc. transmitted by email to the Center its verification response in relation to confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name. Also on December 15, 2009 Realtime Register B.V. transmitted by email to the Center its verification response in relation to , confirming that Respondent is listed as the registrant and providing the contact details for the Domain Name. 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 the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 18, 2009 in Dutch and English. In accordance with the Rules, paragraph 5(a), the due date for Response was January 7, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on January 8, 2010.
The Center appointed Wolter Wefers Bettink as the sole panelist in this matter on January 25, 2010. 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 the Rules, paragraph 7. 4. Factual Background
Complainant acts for and on behalf of Seiko Epson Corporation of Japan on the basis of a power of attorney, authorizing Complainant to conduct proceedings against infringement of EPSON trademarks. Seiko Epson Corporation is a globally operating company manufacturing electronic devices, such as printers, scanners, projectors, cash registers and robots. Seiko Epson Corporation is the proprietor of the trademark EPSON (the Trademark) and has registered said trademark in the UK (number 1048343, filed in 1975), the USA (number 1134004, filed in 1975) and the European Union (number 4147229, filed in 2004). 5. Parties' Contentions A. Complainant
Complainant contends that the Domain Names are confusingly similar to the Trademark, as the Domain Names both prominently figure the element EPSON. EPSON is a well-known, made-up term and forms the first, dominant, most significant and distinctive element of each of the Domain Names. The words “de” and “specialist” in and “winkel” in , are merely generic and descriptive.
Complainant contends on several grounds that Respondent has no right or legitimate interests in respect of the Domain Names.
In the first place, Respondent is not commonly known by the Domain Names or EPSON, nor does he own trademarks or service marks incorporating EPSON marks. In addition, Respondent is not a licensee of Complainant nor has he in any other way received permission or consent to use the Trademark.
Secondly, Respondent does not use the Domain Names for a bona fide offering of goods or services, as he does not meet the requirements set out in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903:
- Respondent does not offer goods or services on the websites linked to the Domain Names as is currently parked and at least up to July 29, 2009 redirected web users to another website ;
- Respondent does not use the website to sell only the trademarked goods. Besides EPSON products, Respondent also sells similar products from Complainant's competitors. With Respondent tries to lure web users to his website by using the Trademark.
- By using EPSON and by using a second trademark EXCEED YOUR VISION, which has been registered by Seiko Epson Corporation, Respondent falsely implies that there is a commercial connection between Complainant and Respondent. There is no disclaimer stating that Respondent is not affiliated with, endorsed by or otherwise connected to Complainant.
- Respondent is cornering the market by not only having registered the Domain Names, but also the country code top level domains and .
Complainant also states that Respondent is not making a legitimate non-commercial or fair use of the Domain Names. The websites linked to the Domain Names are used to sell peripherals and promote services. Using the Trademark, Respondent seeks to misleadingly attract consumers with intent for commercial gain.
Finally, Complainant argues that Respondent has registered the Domain Names and is using them in bad faith. The use of the Domain Names is confusing to Internet users and has disrupted Complainant's business. Besides, Complainant deems it likely that Internet users will reach Respondent's websites whereas they are looking for websites operated by Complainant. For his own commercial benefit, Respondent is misleading Internet users. Had this not been his intent, Respondent could have relied on his primary website “” rather than using to forward web users. As to the passive holding of this Domain Name constitutes registration and use in bad faith for several reasons:
- EPSON is an inherently distinctive and famous trademark;
- the registration of the Trademark predates the registration of ;
- the use of next to indicates that Respondent is extremely unlikely to have registered for a good faith purpose; and
- it is not possible to conceive of any plausible good faith use of . B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings A. Respondent Identity
The registrant of the Domain Name is confirmed by the concerned registrar to be “Anem”. The registrant of the Domain Name is confirmed by the concerned registrar to be “J.C. Postema”. In its Complaint Complainant argued that both of these entities should be considered to be the same entity.
The Panel has observed that the registered address for the registrant of both Domain Names is exactly the same and further that the e-mail address for corresponds to the domain name to which redirects. On the basis of the above the Panel considers the registrants of both Domain Names to be the same entity.
In Adobe Systems Incorporated v. Domain OZ, WIPO Case No. D2000-0057 the panel considered that in a case where multiple domain name registrants are to be considered to be the same entity “it would place an unjustifiable economic burden on the complainant to require it to initiate two separate administrative proceedings, and that it would be a burden on the administrative process to require duplication of effort, in this context of this case”. The Panel therefore finds that the Complaint fulfills the requirements of paragraph 3(c) of the Rules. B. Language of the Proceedings
The Complaint was filed in both Dutch and English. After Ascio Technologies Inc. informed the Center that the registration agreement for was in Dutch and Realtime Register B.V. informed the Center that the registration agreement for was in English the Center proceeded with the case in both Dutch and English. Respondent failed to file a Response or otherwise participate in the proceeding in any capacity.
Pursuant to paragraph 11(a) of the Policy the language of the administrative proceeding shall, in the absence of an agreement between the parties, be the language of the registration agreement, unless the Panel decides otherwise. There are no indications on the current record of an agreement between the parties as to the language of the proceeding. The Panel decides that English should be the language of the proceeding on the grounds that (i) Respondent signed a registration agreement for the Domain Name in the English language, thereby indicating its familiarity with the English language; (ii) as the Center communicated the Complaint and its notifications to the parties in English as well as in Dutch, Respondent was in any case aware of the proceeding commenced against it and presumably chose not to participate in this proceeding. On the basis of the above considerations the Panel concludes that Respondent will not be prejudiced by this Decision being rendered in English (see also Massive, Inc. v. Ricky Park,WIPO Case No. D2008-1375 and SC FRA.BO RO SRL v. SC Technova Invest SRL,WIPO Case No. DRO2009-0001). C. Identical or Confusingly Similar
The Panel finds that Complainant has sufficiently demonstrated that Seiko Epson Corporation, for and on whose behalf it is acting, has rights in the Trademark. Each of the Domain Names contains the Trademark and one or more descriptive or generic words: ‘de' (meaning ‘the') and ‘specialist' in and ‘winkel' (meaning ‘shop') in . As has been recognized in previous cases under the Policy, the use of descriptive or generic words in addition to a trademark in a domain name cannot prevent the domain name from creating a likelihood of confusion. The descriptive and generic elements do not take away the overall impression the dominant part of the domain name, being the Trademark, makes on the public (Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil,WIPO Case No. D2000-1409; F. Hoffmann-La Roche AG v. Rudiger Meissner,WIPO Case No. D2009-1127).
The Panel therefore concludes that the Domains Names are confusingly similar to the Trademark. D. Rights or Legitimate Interests
It follows from the evidence brought before the Panel that Respondent offers EPSON goods on his website and presents himself as a reseller of goods from Complainant's competitors as well. The website under redirected Internet users to the website under where Respondent sells electronic devices from Epson, but also various other brands. These circumstances indicate that Respondent was using the Trademark in the Domain Name to attract Internet users to the website and then divert their attention to competitive goods, which implies that the Domain Name is not used for the bona fide offering of goods (see Oki Data Americas, Inc. v. ASD, Inc., supra). Since Complainant has sufficiently made out a prima facie case that Respondent has no own right or legitimate interest in the Domain Name , while Respondent has failed to submit a Response, the Panel decides that Respondent has no right or legitimate interests in .
The Domain Name is an inactive, passively held domain name. It follows from the evidence that the Domain Name is not being used for the offering of any goods, that there is no indication that Respondent is commonly known by the name “(de) epsonspecialist”, and that Respondent is not making a legitimate noncommercial or fair use of the Domain Name. Lacking evidence to the contrary, the Panel concludes on balance that, Respondent has no right or legitimate interests in the domain name . E. Registered and Used in Bad Faith
The Trademark was used in to attract commercial gain by intentionally diverting customers to its website where Respondent is also offering competitor's goods. Respondent was thereby creating a likelihood of confusion as to the source, sponsorship and endorsement of the website under and trading off the goodwill of Complainant's Trademark. This constitutes evidence of bad faith registration and use in accordance with article 4(b)(iv) of the Policy.
As to , which is being passively held, the Panel also decides that it has been registered and is being used in bad faith. Bad faith registration may be assumed, since the Trademark has a strong reputation, is widely known and its registration predates the Domain Name's registration by several years, as Complainant has sufficiently demonstrated. It may be assumed that Respondent was aware of the Trademark when filing the application for the Domain Names, since he sells (and presumably was selling at the time) electronic devices under the EPSON trademark. As set out in Telstra Corporation Limited v. Nuclear Marshmallows,WIPO Case No. D2000-0003, in considering whether the passive holding of a domain name, following a bad faith registration of such, satisfies the requirements of paragraph 4(a), the Administrative Panel must give close attention to all the circumstances of the Respondent's behaviour. In this case, the reputation of the Trademark implies that it is difficult to imagine a plausible good faith use of the Domain Name, also in view of the bad faith use, as set out above, that Respondent makes of . Having refrained from submitting a Response, Respondent has failed to provide any evidence to the contrary.
On the above grounds, the Panel concludes that both and have been registered and are being used in bad faith. 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 names and be transferred to Complainant.
Wolter Wefers Bettink
Sole Panelist
Dated: February 8, 2010
Full & Egal Universal Law Academy