Complainant is EPSON Europe BV (of Amsterdam, the Netherlands) for and on behalf of Seiko EPSON Corporation, of Nagano, Japan, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
Respondent is ESPON.COM, of Gdynsk, Poland.
The disputed domain name <espon.com> (the “Domain Name”) is registered with Tucows Inc.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2008. On November 25, 2008, the Center transmitted by e-mail to Tucows Inc. a request for registrar verification in connection with the disputed domain name. On November 26, 2008, Tucows Inc. transmitted by e-mail to the Center its verification response confirming that 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(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on December 4, 2008. In accordance with the Rules, paragraph 5(a), the due date for Response was December 24, 2008. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on December 29, 2008.
The Center appointed Robert A. Badgley as the sole panelist in this matter on January 12, 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 the Rules, paragraph 7.
This Complaint is brought nominally by EPSON Europe BV, a Netherlands-based subsidiary of Seiko EPSON Corporation, a Japanese firm, on behalf of the latter. By virtue of a Power of Attorney executed in March 2003, EPSON Europe BV is designated as an authorized distributor of Seiko EPSON Corporation's products in various countries (including Poland, Respondent's country). EPSON Europe BV also has the right under this Power of Attorney to prosecute and protect Seiko EPSON Corporation's trademark rights within these designated countries. Accordingly, the Panel will refer hereinafter to EPSON Europe BV and Seiko EPSON Corporation collectively as “Complainant.”
For many years, Complainant has manufactured, and sold worldwide, numerous computer-related products, including printers, scanners and related materials. Complainant's annual revenues run into the billions of dollars. Complainant holds numerous trademark registrations, including registrations in the European Union, the United States of America, and Poland, for the EPSON mark. Some of these registrations date back to 1975 and, in the case of Poland, to 1996.
Respondent registered the Domain Name on December 2, 1998. The Domain Name resolves to a website which bears the legend “Espon.com: What you need, when you need it.” The site then provides links to other sites which vend products within Complainant's range of merchandise, including printers, ink cartridges, and related supplies manufactured by Complainant and other companies.
Complainant's factual contentions are set forth in the “Factual Background” section above. These contentions are supported with documentary evidence annexed to the Complaint, and undisputed by Respondent. Complainant's arguments will be discussed in the “Discussion and Findings” section below.
Respondent did not reply to Complainant's contentions.
Paragraph 4(a) of the Policy lists the three elements which a complainant must satisfy:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights; and
(ii) 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.
Complainant clearly has rights in the mark EPSON through registration and extensive use. The record amply supports this conclusion, and Respondent has not disputed it.
The Domain Name differs materially from the EPSON mark only insofar as it transposes the letters “p” and “s”. The visual impression remains quite similar. The Panel finds the Domain Name to be confusingly similar to Complainant's EPSON mark. See The Nasdaq Stock Market, Inc. v. NSDAQ.COM, NASDQ.COM, and NASAQ.COM, WIPO Case No. D2001-1492 (February 27, 2002).
Accordingly, the Panel finds that Policy paragraph 4(a)(i) is satisfied.
Pursuant to paragraph 4(c) of the Policy, a respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
(i) before any notice to you [respondent] 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 [respondent] (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 [respondent] are making a legitimate noncommercial 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.
Complainant bears the burden of proof on the “rights or legitimate interests” issue (as it does for all three elements of the Policy). See Louis de Bernieres v. Old Barn Studios Limited, WIPO Case No. D2001-0122 (March 26, 2001). Nevertheless, the panel in PepsiCo, Inc. v. Amilcar Perez Lista d/b/a Cybersor, WIPO Case No. D2003-0174 (April 22, 2003), rightly observed as follows: “A respondent is not obliged to participate in a domain name dispute proceeding, but its failure to do so can lead to an administrative panel accepting as true the assertions of a complainant which are not unreasonable and leaves the respondent open to the legitimate inferences which flow from the information provided by a complainant.” As noted above, Respondent did not file a Response and hence did not attempt to rebut any of Complainant's assertions.
Under these circumstances, it is easy to conclude that Complainant did not authorize Respondent to use Complainant's marks in a domain name or otherwise. It also leaves as un-rebutted Complainant's prima facie case that Respondent has no bases for establishing rights or legitimate interests under Policy paragraph 4(c). There is no evidence that Respondent is commonly known by the disputed Domain Name.
Moreover, Respondent's maintenance of a website featuring Complainant's mark cannot be considered a bona fide use under the Policy. There are numerous prior decisions under the Policy holding that the unauthorized appropriation of another's trademark in one's domain name and the commercial use of the domain name in a corresponding website do not generally confer rights or legitimate interests upon the owner of such a domain name. See, e.g. America Online, Inc. v. Xianfeng Fu, WIPO Case No. D2000-1374 (December 11, 2000) (“it would be unconscionable to find that a bona fide offering of services in a respondent's operation of web-site using a domain name which is confusingly similar to the complainant's mark and for the same business”).
Accordingly, the Panel finds that Policy paragraph 4(a)(ii) is satisfied.
Paragraph 4(b) of the Policy provides that the following circumstances, “in particular but without limitation,” are evidence of the registration and use a domain name in “bad faith”:
(i) circumstances indicating that respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of its documented out-of-pocket costs directly related to the domain name; or
(ii) that 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 respondent has engaged in a pattern of such conduct; or
(iii) that respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) that by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent's website or other on-line location, by creating a likelihood of confusion with complainant's mark as to the source, sponsorship, affiliation, or endorsement of Respondent's website or location or of a product or service on respondent's website or location.
Complainant relies chiefly on paragraphs 4(b)(iii) and 4(b)(iv) of the Policy, quoted immediately above, to support its bad faith argument. As will be discussed below, the Panel rejects Complainant's 4(b)(iii) argument, but agrees that Respondent's conduct meets the bad faith standard of paragraph 4(b)(iv).
Complainant's argument under paragraph 4(b)(iii) must fail because there is no evidence that Complainant and Respondent are “competitors” or that Respondent, as a competitor, is seeking to disrupt Complainant's business. The term “competitor” implies, in this Panelist's opinion, competition in the same sphere of economic activity or, as one panel put it, “competitors in the business sense.” See CSA International (a.k.a. Canadian Standards Association) v. John O. Shannon and Care Tech Industries, Inc., WIPO Case No. D2000-0071 (March 24, 2000). The Panel respectfully rejects the proposition advanced in cases like Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 (June 7, 2000) that a “competitor” under paragraph 4(b)(iii) may encompass one who merely acts in opposition to another. Such a broad definition in this Panel's view would render practically redundant the other “bad faith” prongs of paragraph 4(b).
With respect to Complainant's argument under paragraph 4(b)(iv), the Panel finds it more likely than not that Respondent had Complainant's mark in mind when registering the Domain Name. In addition to the similarity between the mark and the Domain Name, Respondent's website provides links to other sites which vend products within Complainant's range of trademarked merchandise, including ink cartridges and related supplies manufactured by Complainant and other companies.
Complainant alleges, and it is not disputed, that Respondent earns pay-per-click revenues through the hyperlinks maintained at its website. The Panel concludes that Respondent has used the Domain Name in bad faith, within the meaning of Policy paragraph 4(b)(iv), by pointing the Domain Name to a website where Complainant's products are advertised without authorization, and links to products of Complainant's competitors are provided. Based on the undisputed evidence, there is no reasonable conclusion other than that Respondent registered the Domain Name with the intention of seeking to attract, for commercial gain, Internet visitors to its website by creating confusion between the Domain Name and Complainant's mark.
Accordingly, because bad faith registration and use exists under paragraph 4(b)(iv), the Panel finds that Policy paragraph 4(a)(iii) is satisfied.
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 <espon.com> be transferred to Complainant.
Robert A. Badgley
Dated: January 14, 2009