The Complainant is Seiko Epson Kabushiki Kaisha, Japan, represented Demys Limited, United Kingdom.
The Respondent is Vahid Rezaei, Islamic Republic of Iran. 2. The Domain Name and Registrar
The disputed domain name The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 24, 2021, the Center transmitted by email to IRNIC a request for registrar verification in connection with the Domain Name. On February 27, 2021, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir Domain Name Dispute Resolution Policy (the “Supplemental Rules”). In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on March 8, 2021. In accordance with the Rules, paragraph 5(a), the due date for Response was March 28, 2021. On March 31, 2021, the Center notified the Respondent’s default. The Center appointed Nicholas Smith as the sole panelist in this matter on April 22, 2021. 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 corporation specializing in electronics products. It is one of the world’s largest manufacturers of printer equipment, and is also involved in the supply of computers, projectors, industrial equipment, and various electronic components. In the year ending March 31, 2020 the Complainant’s global business reported a turnover of JPY 1,043 billion. The Complainant is owner of numerous trademark registrations for the term “Epson” (the “EPSON Mark”) including a trade mark registered on April 24, 2007 in the Islamic Republic of Iran (registration no 142955, for goods in classes 2 and 16). The Complainant also uses, as a strapline, the phrase “exceed your vision” and has registered that phrase as a trademark in Canada. The Domain Name The Complainant makes the following contentions: (i) that the Domain Name is identical or confusingly similar to the Complainant’s EPSON Mark; (ii) that the Respondent has no rights nor any legitimate interests in respect of the Domain Name; and (iii) that the Domain Name has been registered or is being used in bad faith. The Complainant is the owner of the EPSON Mark having registered the EPSON Mark in various jurisdictions around the world (including the Islamic Republic of Iran, the location of the Respondent). The Domain Name consists of the EPSON Mark in its entirety with the addition of the word “store” and the country code Top-Level Domain “.ir”. The addition of the suffix “store” is not relevant and will not have any impact on the overall impression of the Domain Name with “Epson” being the dominant part. The Domain Name is thus confusingly similar to the Complainant’s EPSON Mark. There are no rights or legitimate interests held by the Respondent in respect of the Domain Name. The Respondent is not commonly known by the Domain Name, nor does the Respondent have any authorization from the Complainant to register the Domain Name. The Respondent is using the Domain Name for a website that offers for sale electronic products purportedly from the Complainant and its competitors without the permission of the Complainant and by asserting incorrectly that the Respondent is an official representative of the Complaint. The use of a domain name in this manner does not constitute a bona fide offering of goods or services. The Domain Name was registered and is being used in bad faith. The Domain Name was registered with the Complainant in mind, given the fame of the EPSON Mark and the use of the Domain Name. The Complainant contends that the Respondent used the Domain Name to capitalize on the fame and goodwill of the EPSON Mark by creating confusion with the Complainant’s EPSON Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. Such conduct constitutes bad faith registration and use under paragraph 4(b)(iv) of the Policy. B. Respondent The Respondent did not reply to the Complainant’s contentions. 6. Discussion and Findings A. Identical or Confusingly Similar To prove this element the Complainant must have trade or service mark rights and the Domain Name must be identical or confusingly similar to the Complainant’s trade or service mark. The Complainant is the owner of the EPSON Mark, having registrations for the EPSON Mark as a trademark in the Islamic Republic of Iran and various countries around the world. The Domain Name consists of the EPSON Mark with the addition of the word “store” (which does not prevent a finding of confusing similarity) and the country code Top-Level Domain “.ir”. It is well established that in making an enquiry as to whether a trade mark is identical or confusingly similar to a domain name, the country code Top-Level Domain (“ccTLD”) “.ir” may be disregarded (see Compagnie Générale des Etablissements Michelin v. Saeed Karimi,WIPO Case No. DIR2011-0001 and Kaspersky Lab Zao v. BaniSaz Co.,WIPO Case No. DIR2010-0004). The Panel adopts the reasoning in the cases above. The Domain Name is confusingly similar to the Complainant’s EPSON Mark. Consequently, the requirement of paragraph 4(a)(i) of the Policy is satisfied. B. Rights or Legitimate Interests To succeed on this element, a complainant must make out a prima facie case that the respondent lacks rights or legitimate interests in the domain name. If such a prima facie case is made out, then the burden of production shifts to the respondent to demonstrate rights or legitimate interests in the domain name. Paragraph 4(c) of the Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests in a domain name: Any of the following circumstances, in particular but without limitation, if found by the panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii): (i) before any notice to you of the dispute, your 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; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are 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 trademark or service mark at issue. The Respondent is not affiliated with the Complainant. It has not been authorized by the Complainant to register or use the Domain Name or to seek the registration of any domain name incorporating the EPSON Mark or a mark similar to the EPSON Mark. There is no evidence that the Respondent is commonly known by the Domain Name or any similar name. There is no evidence that the Respondent has used or made demonstrable preparations to use the Domain Name in connection with a legitimate noncommercial use. The Respondent uses the Domain Name to operate a website to sell electronic products, such as printers, which are branded with the EPSON Mark as well as printers branded with the trade marks of the Complainant’s competitors, such as Canon. If the products sold by the Respondent via the Respondent’s Website are not genuine Epson products, the Respondent’s use of the Domain Name does not grant it rights or legitimate interests since it is using the Complainant’s EPSON Mark for a site selling electronic products in direct competition with the Complainant or to mislead customers into thinking that the products sold have a connection with the Complainant. If the Respondent is offering genuine Epson products from the Respondent’s Website, such use does not automatically grant it rights or legitimate interests. The principles that govern whether a reseller of genuine goods has rights or legitimate interests have been set out in a variety of Uniform Domain Name Dispute Resolution Policy (“UDRP”) decisions, starting with the case of Oki Data Americas, Inc. v. ASD, Inc.,WIPO Case No. D2001-09031 . The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) summarizes the consensus views of UDRP panels in response to the question about whether a reseller/distributor of trademarked goods or services has rights or legitimate interests in a domain name which contains such a trademark in the following manner: “Panels have recognized that resellers, distributors, or service providers using a domain name containing the complainant’s trademark to undertake sales or repairs related to the complainant’s goods or services may be making a bona fide offering of goods and services and thus have a legitimate interest in such domain name. Outlined in the ‘Oki Data test’, the following cumulative requirements will be applied in the specific conditions of a UDRP case: (i) the respondent must actually be offering the goods or services at issue; (ii) the respondent must use the site to sell only the trademarked goods or services; (iii) the site must accurately and prominently disclose the registrant’s relationship with the trademark holder; and (iv) the respondent must not try to “corner the market” in domain names that reflect the trademark.” In this case, the Respondent’s Website does not appear to accurately or prominently disclose the Respondent’s relationship with the Complainant, in particular that it is not an authorized dealer or has any particular connection with the Complainant. Rather, the prominent display of the EPSON Mark and the description of the Respondent as an authorized representative of the Complainant provide the impression that the Respondent’s Website is a website of a franchisee or licensed distributor of the Complainant. In addition the Respondent’s website purports to sell goods provided by the Complainant’s direct competitors, a further breach of the Oki Data principles. Members of the public who are interested in the Complainant’s products may have visited or visit the Respondent’s Website on the assumption that the Respondent is the Complainant itself or an authorized franchisee. This is not the case. In the event that the Respondent is reselling genuine EPSON products, its use of its website in its present form does not, on the face of it, grant it rights or legitimate interests in the Domain Name. Moreover, the Panel finds that the Domain Name carries a risk of implied affiliation. See WIPO Overview 3.0, section 2.5.1. The Respondent has had the opportunity to put on evidence of its rights or legitimate interests, including submissions as to why its conduct demonstrates a right or legitimate interest in the Domain Name under the Policy. In the absence of such a response the Panel finds that the Complainant has established that the Respondent has no rights or legitimate interests in respect of the Domain Name under paragraph 4(a)(ii) of the Policy. C. Registered or Used in Bad Faith For the purposes of paragraph 4(a)(iii) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration or 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 the Complainant, for valuable consideration in excess of its 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 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 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. (Policy, paragraph 4(b)). The Panel finds that it is likely that the Respondent was aware of the Complainant and its reputation in the EPSON Mark at the time the Domain Name was registered. The Domain Name resolves to a website selling electronic equipment branded with the EPSON Mark. The Respondent’s Website also contains numerous direct references to the Complainant including use of Complainant’s “exceed your vision” stemline. In the circumstances, the Respondent’s conduct in registering the Domain Name when it was aware of the Complainant’s rights and lacked rights or legitimate interests of its own amounts to registration in bad faith. The Respondent is using or has used the Domain Name for the purposes of operating a website and advertising a related store that sells goods that compete with/are similar to the Complainant’s products. The Respondent is using the Domain Name, which is confusingly similar to the EPSON Mark, to sell products, be they legitimate or otherwise, in competition with the Complainant and without the Complainant’s approval. Furthermore, the Respondent’s Website actively misstates the relationship between the Respondent and the Complainant. Such use, in the absence of any explanation by the Respondent, is prima facie misleading and creates a likelihood of confusion with the Complainant. Consequently, the Panel finds that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and the Complainant’s EPSON Mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s Website. The Panel, while noting that the Policy only requires that a complainant show that a respondent registered or subsequently used the domain name at issue in bad faith, finds that the Respondent has registered and used the Domain Name in bad faith under paragraph 4(a)(iii) 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 Nicholas Smith 1 While the Complaint is brought under the Policy, and not the UDRP, given the similarities between the two, the Panel considers UDRP precedent and secondary UDRP materials such as the WIPO Overview 3.0 relevant to the current proceedings, and will refer to them throughout.
Sole Panelist
Date: April 24, 2021
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