WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EPSON Europe BV v. cimin mehvar, Ali Yousofnia
Case No. D2010-2037
1. The Parties
The Complainant is EPSON Europe BV of Amsterdam, The Netherlands, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is cimin mehvar of sivas Turkey a/k/a Ali Yousofnia of Zanjan, Islamic Republic of Iran.
2. The Domain Name and Registrar
The disputed domain name < اپسون.com> [xn--mgby9ch2y.com] is registered with Dynadot, LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on November 24, 2010. On November 25, 2010, the Center transmitted by email to Dynadot, LLC a request for registrar verification in connection with the disputed domain name, followed by a reminder on the November 29, 2010. On November 30, 2010, Dynadot, LLC 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 December 1, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was December 21, 2010. The Response was filed with the Center on December 22, 2010 at 01:06 CET.
The Center appointed Lana I Habash as the sole panelist in this matter on January 7, 2011. 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.
On January 17, 2011, the Panel extended the Decision due date.
4. Factual Background
Seiko EPSON Corporation (“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 automation equipment, point of sale docket printers and cash registers, laptops, integrated circuits, LCD components and other associated electronic components.
EPSON Europe BV, SEC’s subsidiary, is a major manufacturer and supplier of computer peripherals in the European region and filed the Complaint on behalf of SEC based on a duly issued Power of Attorney. SEC holds a number of trademark registrations for the word EPSON in Turkey, Islamic Republic of Iran, United Kingdom of Great Britain and Northern Ireland, United States of America and the European Community, the earliest of which dates back to June 19, 1975. The Complainant has also reflected its Trademark EPSON in several domain names including <epson.com> and <epson.com.tr>.
The disputed domain name < اپسون.com> [xn--mgby9ch2y.com] was registered on April 18, 2010, with Dynadot, LLC. The disputed domain name points to a website that advertises various models of printers for sale, including Epson printers, and includes a statement that “this is a private web page and the site has no relationship with any of the manufacturers advertised on the site”.
On June 8, 2010, the Complainant’s agent attempted to communicate with the Respondent, inquiring about the use of the disputed domain name in connection with the website, and the Respondent did not respond to this letter.
5. Parties’ Contentions
The Complainant contends the following:
- The disputed domain name is an exact transliteration representation of the Complainant’s trademark EPSON in Farsi, as confirmed by an affidavit submitted by the Complainant, and as such the disputed domain name is confusingly similar to the Complainant’s trademark;
- The Respondent does not have any legitimate rights or interests in the disputed domain name. The Respondent has not been known by the name Epson and does not own any trademark or service marks incorporating the same, and the Complainant never granted any third parties the right to incorporate its trademark in a domain name;
- The website to which the disputed domain name points offers space for advertising, which will be placed directly underneath the pictures of the Complainant’s products, and by doing so, the Respondent intended to profit from the confusing by using the Complainant’s trademark in the disputed domain name to capture consumer attention, and to profit from selling advertising space on the website. The Complainant maintains that these action do not constitute a bona fide offering of goods or services;
- The Respondent is not making a legitimate noncommercial or fair use of the disputed domain name;
- The Respondent has registered the disputed domain name with the intention to attract Internet users, for commercial gain, through confusion as to the source, sponsorship, affiliation or endorsement of the Respondent’s website and the advertisement thereon, and as such the disputed domain name was registered by the Respondent is being used in bad faith.
The Respondent contends the following:
The Respondent’s website to which the disputed domain name points to is regional website and is in the Persian language and the Complainant did not show any document proving its possession of the word “اپسون”;
The Complainant’s claim that the word “اپسون” is a mere transliteration of the Trademark EPSON is not accurate. The Respondent refers to the transliteration Google page of the word Epson, and points out that it shows 5 different results;
The Respondent never received the Complainant’s letter, as the Respondent now lives in the Islamic Republic of Iran, not Turkey;
The Complainant has not brought this Complaint in good will, and the main purpose is to collect documents;
The Complainant does not hold any trademark registration in “اپسون” word in the Persian language, and all registrations including in the Islamic Republic of Iran are in Latin;
The Complainant has never used the Persian word “اپسون” in any document, nor did it use it on its website;
The Complainant is confused about the origin of the word “اپسون”, as sometimes it refers to it as Persian, and in other times as Arabic;
The Respondent’s website bears no resemblance to the Complainant’s website, and as such there is no likelihood of confusion.
6. Discussion and Findings
In order for the Complainant to prevail and have the disputed domain name transferred to it, the Complainant must prove the following (the Policy, paragraph 4(a)(i-iii)):
The domain name is identical or 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 domain name; and
The domain name was registered and is being used in bad faith.
Before the Panel moves to consider the above elements, the Panel has considered whether to admit the Response, in spite of the late submittal thereof; as the case file indicates, the deadline for submitting the Response was December 21, 2010, but the Respondent has submitted his Response one day later; in spite of the late submittal, the Panel has decided to consider the Response, exercising its discretion in this regard, in accordance with the Rules.
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the trademark EPSON. The Panel is also satisfied that the Complainant has established that EPSON is a widely known trademark.
Based on the affidavit submitted by the Complainant and the independent inquiries made by the Panel, the disputed domain name is a transliteration of the Complainant’s trademark EPSON in Farsi; the Respondent’s contention that the word “epson” has several meanings in the Persian language is not supported. Various WIPO UDRP panels have found that phonetic rendition of a trademark may render the disputed domain name identical or confusingly similar to that trademark, as the case may be; in the Coca-Cola Company v. ICU Agency, WIPO Case No. D2008-1851 the panel found that the disputed domain name <קוקהקולה.net [xn--8dbabb9a0dbb.net]> is identical to the complainant’s trademark “Coca Cola”, as it is has no meaning in the Hebrew language and is a transliteration of the English sound of the COCA-COLA trademark.
When comparing the disputed domain name with the trademark in which the Complainant has rights, the gTLD “.com” is excluded from consideration because it is a functional part of the domain name address, as has been established in numerous UDRP Cases.
In this Case, the Panel finds that the disputed domain name is identical to the Complainant’s trademark.
B. Rights or Legitimate Interests
The Complainant is required to make a prima facie case of lack of rights or legitimate interest in the disputed domain name on part of the Respondent. According to paragraph 4(c) of the Policy the following circumstances, if proved, demonstrate a respondent’s rights or legitimate interests in a domain name:
(i) the respondent used or demonstrably prepared to use the domain name or corresponding name in connection with a bona fide offering of goods or services prior to notice of the dispute;
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if it has not acquired trademark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the complainant’s marks.
Considering the facts at hand, the Panel finds that the Respondent does not have any rights or legitimate interests in the disputed domain name. It is evident that the Respondent attempted to use the good will of the trademark EPSON to divert Internet users to its website, which offers for sale products similar to those of the Complainant’s as well as the Complainant’s products (printers). This, in the Panel’s view does not constitute a bona fide offering of goods or services, nor is it a legitimate noncommercial use.
C. Registered and Used in Bad Faith
As discussed above under section 6(a), the Complainant has successfully demonstrated the reputation of the trademark EPSON, and the Panel finds it is unlikely that the Respondent was not aware of the proprietary rights of the Complainant in the trademark.
For the purposes of paragraph 4(a)(iii) of the Policy, the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
The Panel finds that the Respondent’s registration and use of the disputed domain name is in bad faith; the use of the disputed domain name by the Respondent to point to a website where the Respondent offers for sale competing products of those of the Complainant’s, and advertising products of the Complainant’s without a license or a permit from the Complainant, diverts business from the Complainant’s official website, and does cause confusion on part of Internet users as to the source of the products offered for sale on its website, and its association with the Complainant. The fact that disputed domain name is registered in the Farsi language may suggest to the Internet users that the Respondent is the authorized dealer of the Complainant in the Persian market, which is not the case. The inclusion of the disclaimer on the website, as indicated by the Respondent does not negate a finding of bad faith, as the initial diversion from the Complainant’s website had already occurred; see E. & J. Gallo Winery v. Hanna Law Firm, WIPO Case No. D2000-0615; DFO, Inc. v. Christian Williams, WIPO Case No. D2000-0181 and Estée Lauder Inc. v. estelauder.com, estelauder.net and Jeff Hanna, WIPO Case No. D2000-0869.
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, < اپسون.com> [xn--mgby9ch2y.com] be transferred to the Complainant.
Lana I Habash
Dated: January 28, 2011