The Complainant is Seiko Epson Kabushiki Kaisha (also trading as Seiko Epson Corporation) of Tokyo, Japan, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland ("United Kingdom").
The Respondent is Gunay Vatansever of Izmit, Turkey. 2. The Domain Name and Registrar
The disputed domain name ("the Domain Name") is registered with GoD, LLC (the "Registrar"). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on March 9, 2017. On March 9, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On March 9, 2017, the Registrar 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 the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was April 6, 2017. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on April 7, 2017.
The Center appointed Karen Fong as the sole panelist in this matter on April 11, 2017. 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
The Complainant is a Japanese electronics company and one of the world's largest manufacturers of printers and imaging equipment, including 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. The Complainant's main global website is found at "".
The Complainant's global business reported net revenues of USD 9.6 billion to the year ended March 31, 2016. The Complainant's products are sold under the trade mark EPSON. The Complainant is the proprietor of a global portfolio of registered trade marks for EPSON ("the Trade Mark"). Below is a selection of the trade mark registrations including Turkey, where the Respondent is located:
Trade mark no.
Jurisdiction
Mark
Filing date
Registration date
Class(es)
1048343
United Kingdom
EPSON
June 19, 1975
June 19, 1975
09
1134004
United States of America
EPSON
August 25, 1975
April 29, 1980
09
4147229
European Union
EPSON
November 29, 2004
March 2, 2006
02, 09, 16
190879
Turkey
EPSON
September 24, 1997
March 12, 1999
09, 16
The Complainant invests substantial sums every year on advertising and marketing its brands globally. It has a strong presence in the Turkey, where the Respondent is based, and its local subsidiary company operates a Turkish language website at "" from which it sells a range of products, including hardware and consumables. The Complainant also offers support for its products and offers downloads of hardware drivers from all its websites, including its Turkish language website.
The Respondent appears to be an individual located in Iizmit, Turkey. The Domain Name was registered on September 1, 2014. The website connected to the Domain Name appears to offer drivers for the Complainant's hardware ("the Website"). Some of the Website content has been copied, from the Complainant's website. Further the links to download drivers on the Respondent's site do not work and that each page incorporates advertisements for a variety of third parties unrelated to the Complainant including its competitors. 5. Parties' Contentions A. Complainant
The Complainant contends that the Domain Name is identical or confusingly similar to the Trade Mark, the Respondent has no rights or legitimate interests with respect to the Domain Name, and that the Domain Name was registered and used in bad faith. The Complainant requests transfer of the Domain Name. B. Respondent
The Respondent did not reply to the Complainant's contentions. 6. Discussion and Findings
According to paragraph 4(a) of the Policy, for this Complaint to succeed in relation to the Domain Name, the Complainant must prove each of the following, namely that:
(i) The Domain Name is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests in respect of the Domain Name; and
(iii) The Domain Name was registered and is being used in bad faith A. Identical or Confusingly Similar
The Panel accepts that the Complainant has rights to the Trade Mark which predate the Domain Name.
The threshold test for confusingly similarity involves a straightforward comparison between the trade mark and the domain name itself to ascertain confusing similarity. The trade mark would generally be recognizable within the domain name. In this case the Domain Name comprises the Complainant's trade mark EPSON in its entirety and the descriptive term "drivers". The addition of this term which is apt to describe the Complainant's products does nothing to minimise the risk of confusion. For the purposes of assessing identity and confusing similarity under paragraph 4(a)(i) of the Policy, it is permissible for the Panel to ignore the gTLD.
The Panel finds that the Domain Name is confusingly similar to a trade mark in which the Complainant has rights and that the requirements of paragraph 4(a)(i) of the Policy therefore are fulfilled. The Complainant has established this element of the case. B. Rights or Legitimate Interests
Pursuant to paragraph 4(c) of the Policy, a respondent may establish rights to or legitimate interests in the disputed domain name by demonstrating any of the following:
(i) before any notice to it of the dispute, the respondent's use 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; o r
(ii) the respondent has been commonly known by the domain name, even if it 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 consumers, or to tarnish the trade mark or service mark at issue.
The Complainant contends that it has found no evidence that the Respondent has been commonly known by the name Epson or Epson drivers prior to or after the registration of the Domain Name. The Respondent is not a licensee of the Complainant and has not received any consent or permission from the Complainant to use its marks or names in association with the registration of the Domain Name or any domain name, service or product. It has also found nothing to suggest that the Respondent owns any trade marks that are identical or similar to the term "epson" or "epson drivers".
The Complainant further contends that the Domain Name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain. On the contrary, the Domain Name has always been used in association with monetized advertising.
In addition to the above, the Complainant contends that the Respondent has made no demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods and services as the Respondent has no right to assume the Complainant's trade marks or trading style. The Websites are misleading in that it purports to offer drivers for the Complainant's hardware but, in fact, provides no downloads for said software. The descriptions and other text on the Websites have been copied from the Complainant's websites. These facts are an indication that it is more likely than not that the Respondent has "scraped" the Complainant's copyright material in order to appear to offer printer drivers and therefore attract web traffic to its site. This traffic is then monetized through the advertisements that appear on the Respondent's website. Such "bait and switch" activity cannot be reasonably considered to be a bona fide offering of goods and services, as it is both reliant of the attractive force of the Complainant's famous EPSON mark as the dominant element of the Domain Name and, secondly, the use of the Complainant's own copyright material.
The Panel finds that the Complainant has made out a prima facie case, a case calling for an answer from the Respondent. The Respondent has not responded and the Panel is unable to conceive of any basis upon which the Respondent could sensibly be said to have any rights or legitimate interests in respect of the Domain Name.
The Panel finds that the Respondent has no rights or legitimate interests in respect of the Domain Name. Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy has been satisfied. C. Registered and Used in Bad Faith
To succeed under the Policy, the Complainant must show that the Domain Name has been both registered and used in bad faith. It is a double requirement.
The Panel is satisfied that the Respondent was aware of the Complainant's EPSON trade mark when he registered the Domain Name. The Complainant has provided sufficient evidence that the Domain Name registration post dates the EPSON trade mark registrations.
The very incorporation of the Trade Mark in the Domain Name and the display of the Trade Mark and the offer for sale of the Complainant's products on the Website confirm the Respondent's awareness of the Trade Mark.
Thus, the Panel concludes that the Respondent deliberately registered the Domain Name in bad faith.
The Panel also finds that the actual use of the Domain Name is in bad faith. It is highly likely that the Website will inevitably disrupt the Complainant's business. An important element of the Complainant's business is the support of its hardware, including printers and other peripherals, through making associated software drivers available to the public. Web users who are looking for drivers for the Complainants' products and who are attracted to the Website will find that they cannot download drivers and will instead be diverted to unrelated third parties – including the Complainant's competitors by the advertising placed on the website by the Respondent. Such confusion and disruption will be to the Respondent's benefit and to the Complainant's detriment. The Panel concludes that this is bad faith use under paragraph 4(b)(iii) of the Policy.
Further, it is highly likely that web users who directly type the Domain Name into their browsers, or find it through a search engine, will be looking for a site operated by the Complainant rather than the Respondent. The Domain Name is extremely likely to confuse Internet users trying to find the Complainant's official website or support channels for driver downloads. Such confusion will inevitably result due to the incorporation of the Trade Mark as the most prominent element of the Domain Name. The use of the Trade Mark also makes a false representation, in favour of the Respondent's business, of a commercial connection with the Complainant or endorsement by it.
Such confusion and apparent endorsement of the Respondent's products is likely to be of considerable commercial benefit to the Respondent in that it will draw large numbers of users to the Respondent's website through the attractive force of the Trade Mark within the Domain Name. The Respondent employs the fame of the EPSON trade mark to mislead users into visiting its website instead of the Complainant's.
From the above, the Panel concludes that the Respondent intentionally attempted to attract for commercial gain, by misleading Internet users into believing that the Respondent's website is and the products sold on it are those of or authorised or endorsed by the Complainant. The Panel therefore also concludes that the Domain Name was registered and is being used in bad faith under paragraph 4(b)(iv) of the Policy. 7. Decision
For 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.
Karen Fong
Sole Panelist
Date: April 26, 2017
Full & Egal Universal Law Academy