The Complainant is EPSON Europe BV of Amsterdam, Netherlands, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Costas Ioannou of London, United Kingdom.
The disputed domain name <epsonoffer.com> is registered with 1&1 Internet AG.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 19, 2009. On June 19, 2009, the Center transmitted by email to 1&1 Internet AG a request for registrar verification in connection with the disputed domain name. On June 22, 2009, 1&1 Internet AG 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on June 25, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was July 15, 2009. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on July 16, 2009.
The Center appointed Anders Janson as the sole panelist in this matter on July 24, 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.
The Complainant is a subsidiary to Seiko EPSON Corporation “SEC”. The Complainant is authorized through a Power of Attorney from SEC to bring the Complaint.
The Complainant invests considerable sums every year on advertising and marketing SEC's brands resulting in high level brand awareness on the part of consumers worldwide. SEC is a global corporation and one of the world's largest manufacturers of inkjet, dot matrix and laser printers, scanners, desktop computers, business multimedia and home theatre projectors, large home theatre televisions, robots and industrial equipment, point of sale docket printers and cash registers, laptops, integrated circuits, LCD components and other associated electronic components.
SEC is the owner of the following subsisting registrations of the mark “EPSON”, covering a wide variety of goods:
I. United Kingdom trade mark registration No. 1048343 of the mark EPSON, filed on June 19, 1975, class 09 – Liquid crystal data display panels, magnetic drums, marked card reader devices, cash registers, digital display instruments, computer printout apparatus, paper tape punching apparatus.
II. United States trade mark registration No. 73061282 of the mark EPSON, filed on August 25, 1975, class IC 009. US 021 026 G& S: line printers, printers, magnetic drums, marked card readers, paper tape punchers, paper tape readers, cash registers and parts thereof.
III. European Community trade mark No. 004147229 of the mark EPSON, filed on November 29, 2004, class 2, 9 and 16 – Paints, varnishes, lacquers; Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signaling, checking (supervision), lifesaving and teaching apparatus and instruments; Paper, cardboard and goods made from these materials.
The Respondent, Costas Ioannou, is an individual who when he registered the disputed domain name provided the registrar with a contact address in the United Kingdom. The Respondent is in default and accordingly has not challenged the assertions of the Complainant.
The disputed domain dame <epsonoffer.com> was registered by the Respondent with 1&1 Internet AG on December 19, 2007.
The Complainant contends that:
- the disputed domain name is identical and confusingly similar to a trademark or service mark in which the Complainant has rights; and
- the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name was registered and is being used in bad faith; and
- the disputed domain name <epsonoffer.com> should be transferred to the Complainant.
The Respondent did not reply to the Complainant's contentions.
The disputed domain name is <epsonoffer.com>. The Complainant's parent company is the holder of the registered trademark EPSON in the United Kingdom, the United States and Europe (See e.g., the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.8). The Complainant has asserted that the disputed domain name and the name and marks of the Complainant are confusingly similar. The Respondent does not contest these assertions.
By incorporating the Complainant's mark with the word “offer” - a dictionary term - at the end of the disputed domain name, the likelihood of confusion cannot be considered diminished but rather aggravated because such combination may indicate a website with an offer of products or services connected to the trademark EPSON. Therefore, the disputed domain name may confuse consumers as to the source or origin of the website.
The Panel agrees with the Complainant that by virtue of the Complainant's trademark registrations and extensive use, the trademark EPSON is widely-known and distinctive. The term “offer” does not diminish the similarities between the trademark and the disputed domain name. The Panel therefore holds that the Complainant has established element (i) of the Policy's paragraph 4(a).
As mentioned above the Respondent has not filed a Response in accordance with the Rules, paragraph 5. In certain circumstances where a respondent clearly has no obvious connection with a disputed domain name, and indeed when the domain name has not been actively used, a prima facie showing from a complainant that a respondent has no right or legitimate interest may be enough to shift the burden of proof to a respondent to demonstrate that such a right or legitimate interest exists. Here, the Respondent has not submitted any Response. The Panel notes that registration of a domain name in itself does not establish rights or legitimate interests for purposes of Paragraph 4(a)(ii) of the Policy. In conclusion, the Panel finds that the Complainant has made a prima facie showing and the Respondent has not participated in these proceedings or presented any evidence of rights or legitimate interests in using the disputed domain name.
The Panel therefore holds, also in view of the Panel's further findings below, that the Complainant has established element (ii) of the Policy's paragraph 4(a).
The Panel has to consider whether the disputed domain name has been registered and used in “bad faith”.
The Complainant has asserted that the Respondent's registration and use of the disputed domain name has been made in bad faith. The Complainant has submitted proof that the website associated with the domain name has in the recent past resolved to pay-per-click website which displayed advertisements relating to a number of the Complainant's competitors. The Complainant has submitted that the Respondent is not a manufacturer of printers and printing supplies and the diversion of web users trying to find the Complainant's website to the Respondent's pay-per-click advertising has disrupted the Complainant's business. The Complainant has therefore held that the Respondent in this case is acting as a competitor referring to Mission KwaSizabantu v. Benjamin Rost, WIPO Case No. D2000-0279 and The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571.
The Complainant has submitted that the Respondent must also have registered the disputed domain name knowing of the Complainant's rights to the EPSON trademark, given the long time use of the trademark. The Complainant contends that the Respondent deliberately selected the Complainants trademark for the domain name with a view to use it to attract Internet users by deceit to its website for commercial gain. The Complainant has in the Complaint referred to the decisions in Ameriquest Mortgage Company v. Ling Shun Shing, WIPO Case No. D2003-0294 and PepsiCo, Inc v. Forum LLC, WIPO Case No. D2005-0737 and contends that the use of the disputed domain name in connection with pay-per-click parking pages will have caused confusion in the minds of Internet users. The Complainant has asserted that the Respondent has attempted to use the disputed domain name to forward visitors to pay-per-click websites, which is submitted to be further evidence of bad faith.
The Complainant has also contended that the Respondent's use of several domain names establishes a pattern in that each resolves, or until recently resolved to pay-per- click advertising. The disputed domain name was registered on the same day as <hpoffer.co.uk>, <lexmarkoffer.co.uk >, <panasonicoffer.co.uk> and a day later than <olivettioffers.co.uk> and <olivettioffer.co.uk> while <sharpoffer.co.uk> and <toshibaoffer.co.uk> were registered some time before the disputed domain name.
Finally the Complainant has asserted that there is no present use of the Respondent's website and that this is indicative of registration in bad faith. This must, according to the Complainant, be considered as so called “passive holding”.
Paragraph 4(b) of the Policy states four (non-exclusive) circumstances which, if found to be present, may be deemed to provide evidence of bad faith in registering and using the domain name. Paragraph 4(b)(iii) states that a circumstance indicating bad faith is the registration of a domain name primarily for the purpose of disrupting the business of a competitor. Paragraph 4(b)(iv) states that another circumstance indicating bad faith is the attempt to attract, for commercial gain, Internet users to a respondent's website by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website location.
It is the Panel's opinion that simply because a domain name contains a well-known trademark, it may not necessarily be used in bad faith. It is quite possible that a registrant has a plausible and acceptable reason or use for such a domain name. In this particular case however, the Respondent has registered a domain name which he has no legitimate rights to. The Panel concurs with the Complainant's above-cited assertions, particularly the Panel finds bad faith registration and use established taking note of the Respondent's use of the website at the disputed domain name as a pay-per-click site, displaying commercial links to the Complainant's competitors websites.
The Panel therefore concludes that the Complainant has proved that the Respondent has registered and used the disputed domain name in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
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, <epsonoffer.com> be transferred to the Complainant.
Dated: August 7, 2009