The Complainant is Seiko Epson Kabushiki Kaisha, Japan, represented by Demys Limited, United Kingdom.
The Respondent is Tehran Host, United Arab Emirates. 2. The Domain Name and Registrar
The disputed domain name is registered with CSL Computer Service Langenbach GmbH dba J (the “Registrar”). 3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 27, 2019. On June 27, 2019, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On June 28, 2019, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on July 2, 2019 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 3, 2019.
The Center verified that the Complaint together with the amended 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 July 4, 2019. In accordance with the Rules, paragraph 5, the due date for Response was July 24, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 25, 2019.
The Center appointed Tuukka Airaksinen as the sole panelist in this matter on July 30, 2019. 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. The Complainant’s net sales are in the region of 10 USD billion annually. It operates a network of authorized repair centers throughout the world.
The Complainant is the owner of the trademark EPSON, registered in various countries and jurisdictions, such as in the European Union trademark No. 004147229; filed on November 29, 2004 and registered on March 2, 2006.
The disputed domain name was registered on October 24, 2018, and resolves to a website which advertises the Respondent’s physical shop and promotes the repair services for the Complainant’s products. 5. Parties’ Contentions A. Complainant
The disputed domain name includes the Complainant’s trademark EPSON in its entirety connected with the word “tamir”, meaning “repair” in Persian. This word is a generic term and insufficient to distinguish the disputed domain name from the Complainant’s trademark.
The Respondent has no rights or legitimate interests in the disputed domain name, the Respondent is not known by the name “Epson” or “Tamir Epson” and has not been authorized to use the Complainant’s trademark or the disputed domain name. The disputed domain name has not been used in connection with any legitimate noncommercial or fair use of the Complainant’s trademark and to the best of the Complainant’s knowledge, the disputed domain name is used as a commercial website advertising the Respondent’s shop and repair services.
The disputed domain name includes the Complainant’s well-known trademark EPSON. The website to which the disputed domain name resolves advertises the Respondent’s shop and promotes its computer-peripheral repair services. The disputed domain name is therefore used to attract Internet users for commercial purposes by creating likelihood of confusion between the Complainant’s trademark and the disputed domain name. B. Respondent
The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings
In order to obtain the transfer of a domain name, a Complainant must prove the three elements of paragraph 4(a) of the Policy, regardless of whether the Respondent files a response to the Complaint. The first element is that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The second element a Complainant must prove is that the Respondent has no rights or legitimate interests in respect of the domain name. The third element a Complainant must establish is that the domain name has been registered and is being used in bad faith. A. Identical or Confusingly Similar
Paragraph 4(a)(i) of the Policy requires that the Complainant establish that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. Consequently, the Complainant must prove that it has rights to a trademark, and that the disputed domain name is identical or confusingly similar to this trademark.
The Complainant has submitted proof that it is the proprietor of the registered trademarks EPSON. The disputed domain name contains the Complainant’s trademark EPSON in its entirety combined with the term “tamir”, which, according to the Complainant’s undisputed submission, means “repair” in Persian.
Accordingly, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s respective trademark and hence the first element of the Policy has been fulfilled. B. Rights or Legitimate Interests
Paragraph 4(a)(ii) of the Policy requires that the Complainant establish that the Respondent has no rights or legitimate interests to the disputed domain name.
It is widely accepted among UDRP panels that once a Complainant has made a prima facie showing indicating the absence of the Respondent’s rights or legitimate interests in a disputed domain name the burden of production shifts to the Respondent to come forward with evidence of such rights or legitimate interests. If the Respondent fails to do so, the Complainant is deemed to have satisfied the second element of the Policy. See, e.g., Document Technologies, Inc. v. International Electronic Communications Inc.,WIPO Case No. D2000-0270 and section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”).
The Complainant has credibly submitted that the Respondent is neither affiliated with the Complainant in any way nor has he been authorized by Complainant to use and register the disputed domain name, that the Respondent has no prior rights or legitimate interests in the disputed domain name, and that the Respondent has not made and is not making a legitimate noncommercial or fair use of the disputed domain name and is not commonly known by the disputed domain name in accordance with paragraph 4(c)(ii) of the Policy.
The website to which the disputed domain name resolves is apparently in Persian and the Respondent lists an address in Tehran. Therefore, the use of the disputed domain name is most likely targeted to Internet users in Iran.
The disputed domain name includes the Complainant’s trademark EPSON in its entirety combined with the word “tamir”, which Iranian Internet users will understand to mean “repair”. The disputed domain name therefore creates the impression that the website concerned offers repair services of the Complainant’s products, without the Respondent being an authorized representative or affiliated in any way with the Complainant. See Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-0903. The Respondent’s website fails the Oki Data test in two aspects: it does not prominently disclose the Respondent’s relationship with the Complainant as there is no disclaimer at all; and the Respondent does not use the website to sell only the Complainant’s goods – several of the Complainant’s competitors are mentioned and some of their goods are offered for sale on the Respondent’s website.
Accordingly, the Panel finds that the Complainant has made a prima facie case that has not been rebutted by the Respondent. Considering the Panel’s findings below, the Panel finds that there are no other circumstances that provide the Respondent with any rights or legitimate interests in the disputed domain name. Therefore, the Panel finds that the second element of the Policy is fulfilled. C. Registered and Used in Bad Faith
Paragraph 4(a)(iii) of the Policy requires that the Complainant establish that the disputed domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
“(i) circumstances indicating that [the Respondent has] registered or has 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 trademark 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 trademark 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 or competitor; or
(iv) by using the domain name, [the Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the Respondent’s] website or other online 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 [the Respondent’s] website or location.”
Based on the arguments and evidence submitted by the Complainant, and considering that the Respondent is offering services for the Complainant’s goods and is using the Complainant’s trademark EPSON at its website, the Panel considers that it is inconceivable that the Respondent would not have been aware of the Complainant’s trademark when registering the disputed domain name.
As the Complainant has not allowed the Respondent to use the Complainant’s trademark or the disputed domain name, it is evident that the disputed domain name is used to attract, for commercial gain, Internet users to the Respondent’s website by creating likelihood of confusion with the Complainant’s trademark and the online locations of the Complainant’s authorized services providers.
Hence, the Panel finds that the disputed domain name was registered and is being used in bad faith. Therefore, the Panel finds that the third element of the Policy is fulfilled. 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 disputed domain name, be transferred to the Complainant.
Tuukka Airaksinen
Sole Panelist
Date: August 12, 2019
Full & Egal Universal Law Academy