The Complainant is EPSON Europe BV (for and on behalf of Seiko EPSON Corporation) of Amsterdam, Netherlands, represented by Demys Limited, United Kingdom.
The Respondent is Bladimir Boyiko of the Russian Federation.
The disputed domain name <wwwepson.com> registered with eNom.
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 19, 2010. On April 19, 2010, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On the same day, eNom 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 April 26, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was May 16, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 17, 2010.
The Center appointed Christos A. Theodoulou as the sole panelist in this matter on May 21, 2010. 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 in this proceeding is EPSON Europe BV, a company incorporated in the Netherlands, authorized by Seiko EPSON Corporation (SEC), the parent company, “to take legal action or request administrative action in the Territory (which includes the Russian Federation) to protect the interests and property of SEC”. The Panel finds that the Complainant is duly authorized to take this action.
Seikon EPSON Corporation (SEC) is a well known large Global Corporation that manufactures, among other products, inkjet printers, desktop computers, laptops and other electronic components. The Complainant is SEC's subsidiary and operates in the European region.
According to the non-contested allegations of and the evidence provided by the Complainant, the latter has a strong presence in the Russian Federation, and operates a Russian website at “www.epson.ru”.
Moreover the Complainant's parent company SEC owns several trademark registrations for EPSON around the world, including in the Russian Federation, where the Respondent seems to be based.
The Panel is unaware of any information with regard to the Respondent, except that given by the Complainant and mentioned above.
The Complainant contends that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and is using the disputed domain name in bad faith.
The Respondent did not reply to the Complainant's contentions.
Before engaging in the threefold discussion of paragraph 4(a) of the Policy, the Panel will briefly address the procedural issue related to the default of the Respondent. The implications of a default in this case are obvious: since the Complainant has the burden of proof, according to paragraph 4(a) of the Policy (“In the administrative proceeding, the Complainant must prove that each of these three elements are present”), the Panel may not just grant the Complainant's request automatically, but it has to examine instead the evidence presented to determine whether or not the Complainant has proved its case, as required by the Policy (see FNAC v. Gauthier Raymond, WIPO Case No. D2004-0881; Sonofon A/S v. Vladimir Aleksic, WIPO Case No. D2007-0668; Gaudi Trade SpA v. Transure Enterprise Ltd, WIPO Case No. D2009-1028).
The Panel shall now proceed to the analysis of the evidence in this case, based on the three elements of paragraph 4(a) of the Policy.
The Complainant has presented sufficient evidence that it owns the rights to the trademark EPSON. The European Community Trademark Registration and also National registrations in the Russian Federation, United Kingdom (UK) and the United States (US) have proven this. The worldwide use of the mark over the Internet, especially through the Complainant's websites, reinforces this ownership. It is to be noted that several of the above were registered prior to the registration of the disputed domain name.
The mere fact that the Respondent has added to the EPSON mark the generic term “www” does not affect the essence of the matter: the disputed domain name wholly incorporates the trademark EPSON, registered and owned by SEC, and in the circumstances of this case is by itself sufficient to establish the criterion of similarity for purposes of the Policy, as many panels have found in the past (see e.g. Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; DFDS A/S v. NOLDC INC, WIPO Case No. D2006-1070; American Automobile Association, Inc. v. Bladimir Boyiko and Andrew Michailov, WIPO Case No. D2006-0252).
In view of the above, the Panel finds that the Complainant has discharged its burden of proof on this point and holds that the disputed domain name is confusingly similar to the Complainant's trademark.
Paragraph 4(c) of the Policy provides a non-exhaustive list of three circumstances which, if found by a panel to be proved based on its evaluation of the evidence presented, shall demonstrate a registrant's right to or legitimate interest in a domain name. These examples are discussed in turn below, with regard to the specific facts of this case.
(i) Demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services prior to the dispute: in this case, the Respondent is not using the domain name to offer any goods or services, but instead to display pay-per-click advertising diverting Internet users trying to find the complainant's website. The Complainant contends that this provokes losses to its business.
(ii) An indication that the registrant has been commonly known by the disputed domain name, even if it has acquired no trademark rights: there is no such indication from the present record.
(iii) Legitimate non-commercial or fair use of the disputed domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark at issue: again, there is no such indication from the record.
Furthermore, it is to be noted that the Respondent does not appear to have any trademark rights over the textual string which comprises the disputed domain name, nor has it presented evidence of any license by the Complainant, with whom there seems to exist no relationship whatsoever.
As a conclusion on this point, the Panel holds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
The Complainant's argumentation aims to establish any of the four circumstances mentioned in paragraph 4(b) of the Policy, in order to demonstrate the Respondent's bad faith registration and use of the disputed domain name.
In reviewing the present case, the Panel has noted that the Respondent has used the website to which the disputed domain name resolves to redirect users to other websites, belonging to the competitors of the Complainant. This clearly shows to the Panel that the Respondent knew, when registering the disputed domain name, of the existence of the trademark EPSON and its affiliation to the Complainant's products. It also proves that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website and those of the competitors of the Complainant, by creating a likelihood of confusion with the Complainant's mark.
The Panel also notes the non-response of the Respondent to the Complainant's cease and desist letter, which, according to the justified syllogism of the panel in the HSBC case The Hongkong and Shanghai Banking Corporation Limited v. Bill Lynn, WIPO Case No. D2001-0915, “…reinforces the inference of bad faith registration and bad faith use”.
The bad faith of the Respondent may be gathered through a simple, logical process as well, in the sense that it would, indeed, be highly unlikely that the Respondent could come up randomly and unintentionally with an invented word, such as “epson”, which appears in no dictionary and has absolutely no dictionary meaning, and register it as his own domain name, while at the same time combining it with the generic term “www”.
As a consequence to the above, the Panel holds that the Respondent registered and used the disputed domain name in bad faith.
The Complainant has successfully proven that the disputed domain name is identical or confusingly similar to trademarks in which it has rights, that the Respondent has no rights or legitimate interests in the disputed domain name, and that the Respondent registered and used the disputed domain name in bad faith.
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 <wwwepson.com> be transferred to the Complainant.
Christos A. Theodoulou
Dated: June 4, 2010