The Complainant is EPSON Europe BV for and on behalf of Seiko EPSON Corporation of Amsterdam, Netherlands, represented by Demys Limited of Edinburgh, United Kingdom of Great Britain and Northern Ireland (“United Kingdom” or “UK”).
The Respondent is Igor S Panin of Tula, Tulskaya oblast, Russian Federation.
The disputed domain name <epsons.org> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 6, 2009. On the same date, the Complainant forwarded a copy of the Complaint to the Respondent by e-mail. On November 7, the Respondent sent an e-mail message to the Center, in English, entitled “Igor Panin Position,” in which he offered an explanation of the content and aims of his web site (hereafter, “Respondent's Position Statement”).
On November 9, 2009, the Center transmitted by e-mail to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On November 10, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by e-mail to the Center its verification response confirming that the Respondent is listed as the registrant, providing the contact details, and indicating that the language of the registration agreement was English. On November 11, 2009, the Center replied by e-mail to the Respondent's e-mail communication of November 7, 2009, informing him of the various required procedural steps for processing the Complaint and his obligations in terms of a Response to the Complaint, and advising him that if he submits no further communications or formal Response by the due date, his November 7, 2009 e-mail will be forwarded to the Panel for consideration in lieu of a Response.
The Center then 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 November 17, 2009. In accordance with the Rules, paragraph 5(a), the due date for Response was December 7, 2009. The Respondent did not submit any Response. Accordingly, the Center notified the Respondent's default on December 8, 2009.
The Center appointed Natasha Lisman as the sole panelist in this matter on December 21, 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.
Also on December 21, 2009, the Respondent submitted an objection, in Russian, to the use of English as the language of these proceedings.
On January 12, 2010, the Panel issued Panel Order 1, requesting that the Respondent provide the text of his November 7, 2009 e-mail in Russian, and the Respondent complied on January 15, 2010. On January 18, 2010, the Center forwarded the Respondent's Position Statement in Russian to the Panel and the Complainant, and on the same date, the Complainant submitted to the Center a document entitled “Response to Respondent's Email 7th November 2009”.
In view of the fact that the Registration Agreement in this case is in English, in accordance with paragraph 11 of the Rules, the Panel declares English to be the language of the proceedings. However, since the Panel fully reads and understands Russian, it has decided to accept the Respondent's communications to the Center in Russian without invoking its authority to order the Respondent to provide English translations. On the contrary, having found the original English version of the Respondent's Position Statement of November 7, 2009 somewhat unclear, the Panel provided the Respondent, and he availed himself of, an opportunity to accurately present his position in his primary language.
The Panel has decided not to accept or consider the Complainant's Reply to Respondent's Email 7th November 2009. While paragraph 12 of the Rules authorizes a Panel, in its sole discretion, to request additional statements or documents from the parties, the Rules provide no right to parties to submit unsolicited supplemental submissions. The Complainant's Reply to Respondent's Email 7th November 2009 was not requested by the Panel, and, indeed, the Complainant made this supplemental submission without even seeking the Panel's leave to do so. Moreover, this supplemental submission does not raise any factual or legal issues that were not reasonably available or foreseeable at the time of the Complaint. Consequently, the Panel deems the Complainant's supplemental submission impermissible. See, e.g., Magnum Piering Inc., v. Mudjackers and Garwood S. Wilson, Sr., WIPO Case No. D2000-1525; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
The Complainant, EPSON Europe BV is a subsidiary of, and holder of a Power of Attorney from, Seiko EPSON Corporation (hereafter, collectively, “Epson”). Epson is one of the world's largest manufacturers of inkjet, printers, scanners, and other electronic apparatus, equipment, components, and materials. Epson advertises and markets its brands to consumers in countries around the world, including Russian F, where it operates a Russian language web site “www.epson.ru”.
Epson alleges that it maintains a large portfolio of registered trademarks in numerous territories, including the mark EPSON in the Russian Federation with the filing date in 1996, and in the European Community with the filing date in 2004. The Complainant has provided documentation of registration of the EPSON trademarks in the UK (filing date in 1975), United States of America (filing date in 1975), European Community (filing date in 2004) and the Russian Federation.
The Respondent, Igor S. Panin (hereafter, “Mr. Panin”) is an individual residing in the city of Tula, Tulskaya Oblast, Russian Federation. Mr. Panin registered the disputed domain name, <epsons.org>, in December, 2007. He has used it for a web site from which he has sold products for use with Epson printers, such as paper, ink cartriges and re-fill kits, some of which were manufactured by Epson, while others were made by other manufacturers but compatible with Epson printers.
On September 3, 2009, Epson's counsel sent Mr. Panin a letter (to the address indicated in his domain name registration) informing him of Epson's ownership of the EPSON marks and requesting that he explain his motivation for registering the disputed domain name and/or agree to transfer it to Epson and refrain from otherwise using it for any commercial activity that may further infringe Epson's intellectual property. Epson characterizes this letter as an attempt at amicable resolution and states that the attempt was unsuccessful, but provides no evidence of what response, if any, it received from Mr. Panin.
Epson contends that the disputed domain name, <epsons.org>, is identical or confusingly similar to the mark EPSON, in which it has extremely strong rights. According to Epson, Mr. Panin has no rights or legitimate interests in respect to the disputed domain name for the following reasons: his very use of Epson's mark in the domain name for his trading activity stripped the activity of any bona fide character; he was not commonly known by the EPSON mark; and he was not making legitimate non-commercial use of the domain name. Epson further asserts that Mr. Panin registered and used the disputed domain name in bad faith in order to attract Internet users through confusion and to disrupt Epson's business. Based on these grounds, Epson requests that the Panel issue an order transferring the disputed domain name to Epson.
In his November 7, 2009 Position Statement, Mr. Panin admitted that his web site offers for sale both “original and compatible” products for use with Epson equipment, i.e., products made by Epson and by its competitors. He explained that his web site reflects both Epson's viewpoint concerning the advantages of using the original products and the alternative viewpoint of the user community concerning the possibility of using compatible products. Mr. Panin asserted that the prohibition of the use of compatible products contained in the instructions accompanying the original products constitutes an unfair method of competition. For this reason, he further asserted, his web site assists consumers in their choice of products for use in connection with Epson equipment.
Pursuant to paragraph 4(a) of the Policy, in order to justify the transfer of the domain name, the Complainant must prove each of the following elements:
(i) That the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That Respondent has registered and is using the domain name in bad faith.
Under paragraph 15(a) of the Rules, the Panel must “decide a Complaint on the basis of the statements and documents submitted in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
The disputed domain name <epsons.org> is unquestionably confusingly similar, and indeed, virtually identical, to the Complainant's EPSON mark. The disputed domain name incorporates the mark in its entirety and only adds the letter “s” at the end. Such addition of a single letter to a mark is quintessential “typosquatting” and this practice has long been recognized as a strong ground for a finding of identity or confusing similarity within the meaning of paragraph 4(a)(i) of the Policy. See, e.g., Edmunds.com, Inc v. Triple E Holdings Limited, WIPO Case No. D2006-1095 (and other cases cited therein).
Epson has provided evidence in the form of a screenshot of Mr. Panin's web site showing that Mr. Panin used the site to offer for sale both Epson's original and competitors' purportedly compatible products. Mr. Panin's Position Statement acknowleges this fact and seeks to justify it on the grounds of fairness to the user community. Whether sincere or disingenuous – an issue the Panel cannot and does not decide – this justification does not establish any rights or legitimate interests of Mr. Panin in respect to the disputed domain name. In fact, it buttresses Epson's contention to the contrary. It is well established that only the use of a domain name that is identical or confusingly similar to another's trademark to sell solely the trademarked goods can be deemed a bona fide offering of goods and services and thereby confer rights or legitimate interests in respect to the domain name. However, to use the web site to sell both trademarked and non-trademarked goods, as Mr. Panin admittedly did here, amounts to a “bait and switch” tactic rather than a bona fide offering of goods and services. Daimler AG v. William Wood, WIPO Case No. D2008-1712; Control Techniques Limited v. Lektronix Ltd, WIPO Case No. D2006-1052; Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.
Accordingly, applying these well established principles to the undisputed evidence in this case, the Panel concludes that Epson has satisfied the second element of paragraph 4(a) of the Policy.
The same undisputed evidence also gives rise to a strong inference that by using the disputed domain name, Mr. Panin intentionally attempted to attract, for commercial gain, Internet users to his web site by creating a likelihood of confusion with Epson's mark as to the source, sponsorship, affiliation, or endorsement of his web site and the products offered for sale on the web site. His proffered justification of featuring both Epson's and its competitiors' products on his web site as an effort to counter Epson's allegedly unfair methods of competition and to promote consumer choice – again, even if sincere and even admirable – is irrelevant, for he could plainly have had the same content on his web site without using Epson's mark in the site's domain name. Thus, this justification for his use of typosquating in devising and registering the disputed domain name only goes to show that he did indeed register it primarily for the purpose of disrupting Epson's business. These circumstances constitute sufficient evidence to satisfy the third element of Epson's case under paragraph 4(a) 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 disputed domain name <epsons.org> be transferred to the Complainant.
Dated: January 27, 2010