WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Seiko EPSON Corporation v. deletedvideorecovery
Case No. D2012-1130
1. The Parties
The Complainant is Seiko EPSON Corporation of Nagano, Japan, represented by Amica Law LLC, Singapore.
The Respondent is deletedvideorecovery of Delhi, India.
2. The Domain Name and Registrar
The disputed domain name <epsonphotorecovery.com> is registered with Name.com LLC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 1, 2012. On June 1, 2012, the Center transmitted by email to Name.com LLC a request for registrar verification in connection with the disputed domain name. On the same date, Name.com 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 June 13, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 3, 2012. On June 21, 2012, the Center received an email communication from the Respondent where it sought for procedural instructions in relation to the disputed domain name with the following text: “[…] I received your letter today and read it. I am not sure what action I should take. I think the best thing for me would be to close the domain. But I would like to tell you that we are very small company and earn through these domains. We are ready to leave this domain and let it go expire. But if you can resolve this issue we can write on our domain that its not the official domain its only doing affiliate for other company.” In a second email on the same day, the Respondent stated: “[…] I have made the site down, And will leave the domain…”. On the same date, the Center acknowledged receipt of the Respondent’s email communications. The Center received subsequent Respondent’s email communications on July 2, 2012, in which it repeated that it had shut the site down and that it would leave the disputed domain name to expire. The Respondent further sought for procedural instructions. No formal response has been filed by the Respondent and therefore, on July 4, 2012, the Center notified the parties about the commencement of the panel appointment process.
The Center appointed Maxim H. Waldbaum as the sole panelist in this matter on July 11, 2012. 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.
4. Factual Background
The Complainant is a global and internationally-renowned corporation. It is one of the world’s largest electronics manufacturers in the world, engaged in the development, manufacture, sale, marketing and servicing of printers, scanners, projectors, personal computers, semiconductors, watches, corrective lenses, factory automation equipment, as well as various software and support services associated with the aforesaid products.
A significant number of the printers, scanners and projectors which the Complainant manufactures and sells, are designed for the printing of photographs and/or reading of camera memory cards. The Complainant is widely associated with goods and services relating to photographs, including the manufacture and supply of software customized to work with its printers, scanners and projectors, as well as the provision of extensive warranty, repair and technical support services to its customers through its website and its service centers located around the world.
The Complainant currently owns over 1000 trade mark registrations for the EPSON word mark alone, in at least 168 countries around the world. The Complainant’s EPSON trademarks have been registered from as early as 1975, but the Complainant, by itself as well as through its group of companies, has manufactured and sold products and services under the EPSON brand and trade mark since it was founded in 1942. The Complainant and its group of companies have also registered over 2,500 domain names incorporating the EPSON trademark.
The disputed domain name <epsonphotorecovery.com> was registered on November 28, 2011. It resolved to the website “www.epsonphotorecovery.com”, on which Respondent provided “Epson photo recovery software” for download. The disclaimer on the website stated the following: “©2011 ‘’www.philipsphotorecovery.com’’. All rights reserved. […] Copyright Disclaimer – All Philips Digital Camera and cards mentioned here are registered and trademark of respective companies. We at philipsphotorecovery.com are not sponsored by any means with these companies and its office neither we are making any representation of it.”. At the moment, the disputed domain name does not resolve to this or any other active website.
5. Parties’ Contentions
Identical or Confusingly Similar
The Complainant contends that the disputed domain name is confusingly similar to the trade marks in which it has rights, as it incorporates the Complainant’s highly distinctive EPSON trade mark in its entirety. The disputed domain name consists of the EPSON trade mark together with the words “photo” and “recovery”, both of which are common, dictionary words. According to the Complainant, these additions are insufficient to prevent a finding of confusing similarity. The words “photo” and “recovery” are descriptive of the Complainant’s products and services offered under the EPSON mark. The presence of these words in the disputed domain name tends to increase the confusing similarity. According to the Complainant, there is a real likelihood that any website with the disputed domain name will mistakenly be regarded by the public as referring to some photo-recovery product or service of the Complainant.
Rights or Legitimate Interests
The Complainant alleges that the Respondent has no rights or legitimate interests in the disputed domain name.
According to the Complainant, there is no evidence indicating that the Respondent has been commonly known by the disputed domain name, or that it has acquired trade mark or service mark rights in the same. There is also no evidence that the Respondent’s choice of EPSON is legitimate in any way or that it was derived coincidentally or independently adopted. Indeed, the natural inference is that the Respondent had deliberately adopted the EPSON name to ride on the goodwill and reputation of the Complainant or its product and services.
Furthermore, according to the Complainant there is no evidence that the Respondent is using, or has made demonstrable preparations to use, the disputed domain name in connection with a bona fide offering of the goods or services prior to notice of this dispute. The Complainant has no relationship whatsoever with the Respondent, and has never authorized or licensed the Respondent to use the disputed domain name. According to the Complainant, the Respondent is made illegitimate commercial or fair use of the disputed domain name, with intent to misleadingly divert consumers or to tarnish the EPSON trademarks. The website that was provided under the disputed domain name purported to offer, for commercial sale, software which had not been licensed or authorized by the Complainant.
With the EPSON trade mark being distinctive and well-known, the knowledge of the Complainant’s rights in EPSON may be imputed to the Respondent at the time of its registration of the domain name. As EPSON is a coined word with no dictionary meaning, the Respondent would not legitimately choose the same to provide goods, services or information, unless it was seeking to create the impression of origination from the Complainant.
Registration and Use in Bad Faith
The Complainant alleges that the disputed domain name was registered and is being used in bad faith.
The extensive and worldwide reputation of the EPSON trade mark and its high internet presence indicates that the Respondent in all likelihood knew, or should have known, of the EPSON mark prior to registering the disputed domain name. According to the Complainant, registration of a well-known trade mark as a domain name is a clear indication of bad faith in itself, even without considering other elements. While the Respondent may have registered domain names such as <photorecovery.com> for the sale of such software, its deliberate choice to include the term “epson” in the disputed domain name is a strong indicator of bad faith.
The Complainant contends that the Respondent’s overriding intention was to free-ride on the goodwill and reputation of the EPSON mark to generate traffic to its website, taking advantage of consumers’ mistaken belief that the Respondent’s website and/or software originates from, or is associated with, the Complainant.
According to the Complainant the presence of a disclaimer on the Respondent’s website cannot cure a finding of bad faith. Disclaimers do not offset the obvious risk of “initial interest confusion” according to the Complainant.
Finally, the Complainant alleges that the Respondent has deliberately sought to frustrate the Policy by supplying false contact details for its WhoIs lookup result. Bad faith is present where a registrant has purposefully used false information in registering a domain name, to make it difficult to locate it for the purposes of lawfully pursuing the domain name. In this case, according to the Complainant the Respondent’s listed address is incorrect. “Sukriti Complex” is in fact located in Patna, Bihar, and not in Delhi. The Respondent has provided the exact same details in its registration for <philipsphotorecovery.com>, indicating a pattern of exploiting well-known trade marks in its domain names coupled with concealment of the Respondent’s true identity.
The Respondent did not formally reply to the Complainant’s contentions.
6. Discussion and Findings
The Panel notes that the Respondent did not file a formal response at any time. The occurred email communication between the Respondent and the Center does not qualify as such, as it does not address the Complainant’s contentions or even fulfill the formal requirements for a Response, according to paragraph 5 of the Policy.
Nevertheless, the Panel finds that it cannot give any credibility to the Respondents’ assertion that it has given up the disputed domain name. Although the disputed domain name does not resolve to a website at this moment, and even with the expiry date of the disputed domain name registration coming up in the near future, the Respondent itself states in its first email, dated June 21, 2012, that it is a very small company, which “earn(s) through these domains”. This statement in combination with the Respondent’s possibility of loading its website back up at any time as long as it is holding the domain name, and its possibility of renewing the domain name registration prior to expiration, establishes a realistic possibility of abusive conduct on the part of the Respondent if the disputed domain name is not transferred to the Complainant; provided that the Complainant meets the Policy’s requirements for a transfer.
According to paragraph 4(a) of the Policy, in order to succeed in this proceeding in relation to the disputed domain name, the Complainant must establish each of the following elements:
(i) The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights;
(ii) The Respondents have no rights or legitimate interests in respect of the disputed domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant has demonstrated its rights to the trademark EPSON. The Panel also finds that the Complainant has established that EPSON is a widely known trademark.
The Panel finds the disputed domain name to be confusingly similar to the Complainant’s trademark.
The disputed domain name fully incorporates the Complainant’s highly distinctive and widely known EPSON marks in which the Complainant has rights. The Panel finds that the mere addition of the generic terms “photo” and “recovery” following the trademark does not eliminate the similarity between the Complainant’s marks and the disputed domain name. The Complainant has provided evidence that a significant number of its products is designed for the printing of photographs and/or reading of camera memory cards and that it also provides the necessary software, so that it is widely associated with goods or services relating to photographs, or “photos”. The Complainant has also proven that it offers repair and technical support services through its website as well as service centers, so that it is also widely associated with services relating to support, or “recovery”. In absence of any response by the Respondent, there is no contest against any of these facts stated in the Complaint. This leads the Panel to the conclusion that the addition of the generic terms “photo” and “recovery” that actually describe widely known services provided by the Complainant to the Complainants trademark, cannot distinguish the disputed domain name enough from the Complainant’s trademark, as to lessen the inevitable confusion caused by the incorporation of the Complainant’s trademark in the domain name.
The mere addition of the generic top-level domain (gTLD) “.com” to the Complainant’s EPSON trademark is of no legal significance as it does not serve to distinguish the disputed domain name <epsonphotorecovery.com> from the Complainant’s trademark, but is just one of the several possible gTLDs that must be used by a domain name registrant.
B. Rights or Legitimate Interests
The Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
There is no evidence that the Respondent is commonly known by the name Epson and the Complainant has provided sufficient evidence for the Panel to be convinced that the Complainant has never authorized the Respondent to use its EPSON trademark. The Complainant’s evidence further reveals that Respondent did not use the Complainant’s trademark in association with a bona fide offering of goods and/or services and therefore had no other legitimate interest in the disputed domain name whatsoever. The Complainant has provided evidence in form of screenshots of the Respondent’s website, showing that Respondent used the site to offer its own software described as “Epson photo recovery software” for download. The Panels finds that the Respondent’s use of the Complainant’s globally known EPSON trademark obviously aimed at attracting Internet users to its own website for its own commercial gain.
In light of this evidence that constitutes a prima facie showing by the Complainant, it is generally acknowledged and established by the Policy that the burden shifts to the Respondent to provide an explanation for its putative rights. According to paragraph 4(c) of the Policy the examples mentioned need to be established by the Respondent in order to prove its putative rights. Again, in absence of any response, the Respondent has failed to satisfy the Panel that there are in fact any rights or legitimate interests in the disputed domain name.
C. Registered and Used in Bad Faith
The Panel finds that the Respondent registered and used the disputed domain name in bad faith according to paragraph 4(a)(iii) of the Policy.
i) Registration in Bad Faith
In the Panel’s view, the Respondent’s likely awareness of the Complainant’s trademark rights at the time of registration suggests bad faith at the moment of registration (see Nintendo of America Inc. v. Fernando Sascha Gutierrez, WIPO Case No. D2009-0434).
The Complainant has successfully demonstrated the reputation of the trademark EPSON. Given the global presence and undeniable renown of the Complainant’s EPSON trademark, and given the fact that the Complainant’s EPSON trademark was already registered for a long time before the disputed domain name was registered in November 2011, the Panel finds it unlikely for the Respondent to have not been aware of the proprietary rights of the Complainant in the trademark at the moment of registration. The Panel further finds it is 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 descriptive terms such as “photo” and “recovery” which actually describe services offered by the Complainant as shown above (see EPSON Europe BV v. Bladimir Boyiko, WIPO Case No. D2010-0601).
ii) Use in Bad Faith
The Panel is also satisfied that the Respondent has made use of the disputed domain name in bad faith. The Panel finds that the Respondent used the disputed domain name for the purpose of intentionally attracting users to the Respondent’s web site for commercial gain, by suggesting that its website was affiliated with or endorsed by the Complainant and thus, creating a likelihood confusion with the Complainant’s mark, in terms of paragraph 4(b)(iv) of the Policy.
At the moment the Complaint was filed, the disputed domain name resolved to the Respondent’s website “www.epsonphotorecovery.com” as described above.
In the Panel’s view, the Respondent clearly did not use the disputed domain name in a legitimate form of comparative advertising but intentionally used it to redirect Internet users interested in potentially existing Epson support software for photorecovery to its own website, in order to draw their attention to its own products. This intention clearly constitutes the use of the Complainant’s trademark (and the disputed domain name) in bad faith.
The disclaimer on the Respondent’s web site does not alter the Panel’s finding of bad faith. Apparently the Respondent is using or at least has used several domain names that incorporate widely known trademarks such as the PHILIPS trademark, and accidentally used the wrong trademark in this disclaimer. Besides that, in the Panel’s view, even when a proper disclaimer is used, it cannot by itself cures bad faith when bad faith has been established by other factors (see WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, “WIPO Overview 2.0”, paragraph 3.5). In any event, the Panel finds the disclaimer, as shown by the Complainant with the screenshots, in this case to be ineffective, as it could be found only on the very bottom of the website, in very small letters and only after scrolling through various ordering options (see Pliva, inc. v. Eric Kaiser, WIPO Case No. D2003-0316).
For 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 <epsonphotorecovery.com> be transferred to the Complainant.
Maxim H. Waldbaum
Dated: July 17, 2012