The Complainant is Seiko EPSON Corporation of Nagano, Japan, represented by Demys Limited of United Kingdom, Great Britain and Northern Ireland.
The Respondent is ANEM Computers / ANEM of Uithuizen, the Netherlands.
The disputed domain names <deepsonspecialist.nl> and <epsonshop.nl> are registered with SIDN (the “Domain Names”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 16, 2010 by email. On April 16, 2010, the Center transmitted by email to SIDN a request for registry verification in connection with the Domain Names. On April 19, 2010, SIDN 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 Dispute Resolution Regulations for .nl Domain Names (the “Regulations”).
In accordance with the Regulations, articles 5.1 and 16.5, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 19, 2010. In accordance with the Regulations, article 7.1, the due date for Response was May 9, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on May 10, 2010.
After having received the payment of the fees, the Center appointed Willem J.H.
Leppink as the panelist in this matter on May 14, 2010. The Panelist finds that the Panelist was properly appointed. The Panelist has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required to ensure compliance with the Regulations, article 9.2.
The Complainant is a manufacturer of inkjet, dot matrix and laser printers, scanners, desktop computers, business, multimedia and home theater projectors, large home theater televisions, robots and industrial automation equipment, point of sale docket printers and cash registers, laptops, integrated circuits, LCD components and other associated electronic components. The Complainant is holder of several EPSON trademarks, including a Benelux wordmark No. 335177 for, inter alia, printers, which trademark was filed on September 25, 1975 (the “Trademark”).
The Domain Names were registered on the following dates:
<deepsonspecialist.nl> on August 14, 2001 and <epsonshop.nl> on February 17, 2002.
The Complainant contends that the Domain Names are identical or confusingly similar to the Trademark. The filing date and date of registration of the Trademark predate the date of registration of the Domain Names.
The Complainant contends that it has rights in the Trademark under Dutch law and submits that the Domain Names are confusingly similar to the Complainant's trademarks for the following reasons:
- EPSON is an extremely well-known ‘made-up' term and forms the dominant, most significant and distinctive element of the Domain Names;
- in the Domain Name <deepsonspecialist.nl> the additional words “de” and “specialist” are not dominant, being merely generic and descriptive;
- in the Domain Name <epsonshop.nl> the additional word “shop” is not dominant, being merely generic and descriptive;
- had the Domain Names not included the EPSON mark, their meaning and significance would have been entirely different, in that they would not relate specifically to the Complainant.
The Complainant refers to the findings of the panel in EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Anem, J.C. Postema, WIPO Case No. D2009-1692, on the basis that the requirements of the UDRP on confusing similarity are, in Complainant's opinion, broadly in line with the requirements of the Regulations.
The Complainant contends that the facts in the present case are comparable to EPSON Europe BV, supra, in that the generic and descriptive terms “shop”, “de” and “specialist” have been placed in conjunction with the strong and distinctive brand name and the Trademark of the Complainant and accordingly the Complainant contends that the Domain Names are confusingly similar to its trademark in terms of the Regulations.
Secondly, the Complainant contends that the Respondent has no rights or legitimate interests in the Domain Names, because:
- The Domain Names are not used for a bona fide offering of goods and services, as the Respondent has no right to assume the Complainant's mark or trading style. The Complainant has referred to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions on this topic, taking in consideration that the Regulations are broadly based upon the UDRP.
- The Complainant also states that the Respondent is not commonly known by the Domain Names, as, to the knowledge of the Complainant, the Respondent has never been commonly known by the term EPSON either as individual, business or other organization. On the contrary, the Respondent is commonly known as ANEM Computers and uses the Domain Names to forward to a website operated by that company. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the Trademark. To the knowledge of the Complainant, the Respondent owns no trademarks or service marks incorporating EPSON marks. The Complainant indicates that it does not permit third parties or resellers of its products to incorporate its marks in domain names. Finally there is nothing on the Respondent's website to indicate it is known or trades as EPSON.
- Furthermore, the Complainant contends that the Respondent is not making legitimate non-commercial or fair use of the domain, as the Complainant asserts that the Respondent's use of the Domain Names cannot be construed as non-commercial in any way. The Complainant contends that the Domain Names were designed with intent for commercial gain to attract Internet users to the Respondent's website, where it sells peripherals and promotes its other services, and were therefore clearly put to a commercial use. Equally the Respondent's use of the Domain Names cannot be construed as a fair use, given that the Respondent sought, with intent for commercial gain, to misleadingly attract consumers to its website through the use of the Trademark in the Domain Names.
Finally, the Complainant argues that the Domain Names have been registered or are being used in bad faith for the following reasons:
The Complainant contends that the Respondent's use of the Domain Names has confused Internet users. The Complainant avers that this use has disrupted the business of the Complainant. The Respondent's website, to which the Domain Names are pointing, sells a variety of goods manufactured by the Complainant and competitors of the Complainant, in addition to advertising the Respondent's web design and consultancy services. Therefore the Complainant contends that the Trademark has effectively been used to advertise a reseller's business and the goods of the Complainant's competitors to the clear detriment and disruption of the Complainant's business.
Furthermore, the Complainant contends that it is the Respondent's intention to attract Internet users through likelihood of confusion, as it is likely that Internet users who type in the Domain Names, or who find them through a search engine, will be looking for a website operated by the Complainant rather than the Respondent. The Domain Names are extremely likely to confuse Internet users trying to find the Complainant's official Netherlands website as a result of the incorporation of the Trademark in the Domain Names. Furthermore, such use also makes a false representation, in favor of the Respondent's business, of a commercial connection with or endorsement by the Complainant.
The Respondent did not reply to the Complainant's contentions.
The Complainant has asserted that the registrants of the Domain Names should be considered to be one and the same entity. Whereas the registrants of the Domain Names differ slightly in name (ANEM Computers and ANEM), the address information and the administrative contact for the Domain Names is exactly the same and the Domain Names both direct to a website which is an exact replica of “www.anem.nl”, which, according to the WhoIs information, in turn is held by Anem V.O.F. In these circumstances, and in the absence of the Respondent's assertions to the contrary, the Panelist finds that the registrants of the Domain Names should, for the purposes of this administrative proceeding, be considered as the same entity. The Panelist shall hereafter refer to the registrants of the Domain Names jointly as the “Respondent”.
The Panelist refers to the afore-mentioned decision under the UDRP (EPSON Europe BV, supra) regarding the use by the Respondent of the Complainant's EPSON marks. Under the UDRP as well as under the Regulations, the first element is satisfied if the Complainant can show identity or confusing similarity between the concerned domain name and its trademarks (provided that under the Regulations, the trademarks have to be protected under Dutch law).
The Panelist finds that the Complainant has sufficiently demonstrated that it has rights in the Trademark and that the Domain Names are confusingly similar to the Trademark. The Domain Names each contain the Trademark and one or more descriptive or generic words: “de” (meaning “the” in Dutch) and “specialist” in <deepsonspecialist.nl> and “shop” in <epsonshop.nl>. The descriptive and generic elements do not take away the overall impression the dominant part of the Domain Names, being the Trademark, makes on the public (Roompot Recreatie Beheer B.V. v. Edoco LTD, WIPO Case No. DNL2008-0008).
The Complainant has established the first element of article 2.1 of the Regulations.
According to article 2.1 sub b of the Regulations, the Complainant must demonstrate that the Respondent has no rights to or legitimate interests in the Domain Names.
The Complainant has asserted that the Respondent is not commonly known by the Domain Names. It further follows from the evidence brought before the Panel that the Respondent offers EPSON goods on its website and presents itself as a reseller of goods from the Complainant's competitors as well. On the websites under <epsonshop.nl> and <deepsonspecialist.nl> the Respondent sells the Complainant's electronic devices, but also various other brands. These circumstances indicate that the Respondent was using the Trademark in the Domain Names to divert the attention of Internet users to competitive goods, which implies that the Domain Names are not used for the bona fide offering of goods or services (Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903).
The above has not been rebutted by the Respondent and therefore the Panel finds that the Respondent can not be said to have right or legitimate interest in the Domain Names.
The Complainant has thus established this second element of article 2.1 of the Regulations.
Based on the uncontested evidence presented, the Panelist finds that the Trademark was used in <epsonshop.nl> and <deepsonspecialist.nl> for commercial gain by intentionally attracting customers to its website where the Respondent is also offering goods of the Complainant's competitors. The Respondent was thereby creating a likelihood of confusion as to the source, sponsorship and endorsement of the website under the Domain Names and trading off the goodwill of the Complainant's Trademark. This constitutes evidence of bad faith registration and use in accordance with article 3.2 sub d of the Regulations.
Having refrained from submitting a Response, the Respondent has failed to provide any evidence to the contrary. On the above grounds, the Panelist finds that both Domain Names have been registered and are being used in bad faith.
Therefore, the Panelist finds that the Complainant has also established the third element of article 2.1 of the Regulations.
For all the foregoing reasons, in accordance with articles 1 and 14 of the Regulations, the Panel orders that the Domain Names <deepsonspecialist.nl> and <epsonshop.nl> be transferred to the Complainant.
Willem J.H. Leppink
Dated: May 28, 2010