WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Intexnauca S.A.
Case No. DMD2010-0002
1. The Parties
The Complainant is EPSON Europe BV for and on behalf of Seiko EPSON Corporation of Amsterdam, Netherlands, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.
The Respondent is Intexnauca S.A. of Republic of Moldova represented internally.
2. The Domain Name and Registrar
The disputed domain name <epson.md> is registered with MoldData, SC.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 28, 2010. On May 28, 2010, the Center transmitted by email to MoldData, SC a request for registrar verification in connection with the disputed domain name. On June 2, 2010, MoldData, SC 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 sent an email communication to the parties in both English and Romanian on June 9, 2010 regarding the language of proceedings. The Complainant initially stated that it would provide the translation of the Complaint by June 27, 2010, afterwards, on July 28, 2010 the Complainant requested English to be the language of proceedings. 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 August 2, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 22, 2010. Except for a couple of email communications, the Respondent did not submit any formal Response to the Center by the specified due date.
The Center appointed Marilena Oprea as the sole panelist in this matter on September 8, 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.
Suspension of Proceedings
On June 24, 2010 and July 14, 2010, the Complainant requested the Center to suspend the proceedings in order to try to solve the dispute amicably. Accordingly, the case was first suspended to July 15, 2010 and was further suspended to July 29, 2010. On July 16, 2010, the Respondent has asked the Center to continue the proceedings as it did not reach an agreement with the Complainant.
On July 28, 2010, the Complainant requested the reinstitution of the proceedings because the Respondent claimed it has been an authorized distributor for the Complainant’s products and requested the amount of USD 17,450 for the transfer of the disputed domain name.
Language of Proceedings
As the Complaint had been submitted in English and the Registrar of the disputed domain name has informed the Center that the language of the relevant registration agreement is Romanian on June 9, 2010, the Center forwarded a notice to the parties in both English and Romanian regarding the language of proceedings.
Initially the Complainant informed the Center that the translation of the Complaint would be provided by June 27, 2010; however, on July 28, 2010, after the negotiations between parties during the suspension period, the Complainant has requested the language of proceedings be English because “it is also apparent from the negotiations with the Respondent that he speaks English well and would not be prejudiced by the dispute being conducted in English - the Complainant's formal business language.”
On July 28, 2010, the Center sent an email communication to the Respondent regarding the language of proceedings and invited the Respondent to submit its comments on this matter.
All relevant case-related communications made by the Center were in both languages, English and Romanian. Furthermore, the Center appointed a Panelist familiar with both languages.
Although no formal Response was received, the Respondent has provided several email communications to the Center, all being only in English. Also, the Respondent failed to submit any comment or request regarding the language of proceedings.
From the said communications, it appears that the Respondent is familiar with the Complainant and seems to be involved in the same business area where English is the language of communication.
From all the above, it is the Panel’s view that the Respondent has satisfactory knowledge in English language and it is able to understand the substantive claims brought against it in the present proceedings and therefore would not be substantially disadvantaged in case the proceedings will be conducted in English and not in Romanian, the language of the relevant registration agreement.
Accordingly, for all the above reasons, the Panel determines according to Rules, paragraph 11(a), that the language of these proceedings be English.
4. Factual Background
The Complainant in these proceedings is EPSON Europe BV, a company incorporated in the Netherlands, authorized by Seiko EPSON Corporation (SEC), the parent company, to take legal action and request administrative action to protect the interests and property of SEC in Eastern Europe. The Panel finds that the Complainant is duly authorized to take this action.
SEC is a large global corporation that manufactures, among other products, inkjet and laser printers, desktop computers, laptops, home theatre projectors and televisions and LCD components. In 2009 SEC’s global business reported net sales of approximately USD 8.5 billion with an operating income of approximately USD 333 million over the same period. The Complainant is SEC's subsidiary and operates in the European region.
The Complainant owns trademark registrations for EPSON worldwide, including in the Republic of Moldova such as the following:
- Trademark no. 000698 filed on January 27, 1994 with validity until January 27, 2014 for the mark EPSON in classes 7, 9, 14, 16; and
- Trademark no. 005782 filed on September 18, 1996 with validity until September 18, 2016 for the mark EPSON in classes 9, 16.
Also, the Complainant’s main website can be found at “www.epson.com“.
The disputed domain name <epson.md> was registered on July 27, 2000 and is currently held by the Respondent.
5. Parties’ Contentions
The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy are given in the present case as follows:
(i) The domain name <epson.md> is identical to its trademark EPSON:
The Complainant states it has strong rights in the EPSON mark which predates the registration of the disputed domain name. The top level domain “.md” is generic and is required for technical reasons only.
(ii) The Respondent has no rights or legitimate interests in respect of the disputed domain name:
- the Respondent is not commonly known by the disputed domain name. The Respondent’s trade name appears to be Intexnauca S.A. The Respondent did no receive any permission or consent from the Complainant to use its trademarks. The Respondent owns no trademarks incorporating EPSON marks. The Complainant does not grant the right to the Respondent or any third party to incorporate its name in a domain name;
- the disputed domain name was not used for a bona fide offering of goods and services. The Complainant is not aware of the nature of the Respondent’s business but from the scarce information gathered it assumes it is a reseller of its products. The Respondent’s use is not bona fide mainly because: it is not operating an authorized service center of the Complainant although it does claim to be the official “EPSON Service Center in Moldova” on the webpage accessed via the disputed domain name; the Respondent did not react to the Complainant’s letters prior to commencing the present proceedings; the information contained on the Respondent’s website does not accurately disclose the Respondent’s relationship with the Complainant; the Respondent effectively deprives the Complainant from reflecting its trademark in the most appropriate top level domain name for doing business in Moldova;
- the Respondent is not making a legitimate noncommercial use of the disputed domain name;
- there is no conceivable legitimate interest to use the Complainant’s global famous mark in a domain name.
(iii) The disputed domain name was registered and is being used in bad faith:
- the disputed domain name was primarily registered for the purpose of disrupting a competitor’s business. Because the Respondent’s website makes the representation the Respondent is the authorized and principal center for EPSON products in Moldova, the Complainant is precluded from using its mark unadorned within a domain name in Moldova to provide general information about is activity within this territory. EPSON mark was effectively used to advertise a third party’s business to the detriment and disruption of the Complainant’s business;
- the Respondent’s intention to attract Internet users through confusion because they will assume that the disputed domain name is the Complainant’s official site for Moldova, also because on the main webpage it is represented the Complainant’s stylized trademark along with the Respondent’s trade name, all in the same characters. Confusion and apparent endorsement of either the Respondent’s products or business is likely to be of considerable commercial benefit to the Respondent in that it will attract large numbers of users on the Respondent’s website and increase sales of any products or services offered by the Respondent.
The Respondent did not submit a formal Response to the Complainant’s contentions. In any case, the Respondent sent several email communications to the Center stating mainly that:
- it is selling EPSON products in Moldova since 1994 and the disputed domain name was legally registered in this country more than 10 years ago;
- it is “keeping security” of the disputed domain name for 15 years;
- it is giving “warranty support” for EPSON products in Moldova via the Moscow service center;
- it has offered many times the transfer of the disputed domain name to the Complainant “on contract base”. During the suspension period in these proceedings, the Respondent sent a communication to the Center mentioning that “We not agree with transfer without our part agreement”.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs the Panel to “decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable.”
In accordance with paragraph 4(a) of the Policy, the Complainant must prove to the Panel that the following three circumstances are cumulatively met in order to obtain the transfer of the disputed domain name:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has 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 by the Respondent in bad faith.
A. Identical or Confusingly Similar
There are two requirements that the Complainant must establish under this paragraph, namely: that it has rights in a trademark, and that the disputed domain name is identical or confusingly similar to that mark.
The Complainant holds registrations for the EPSON trademark worldwide for many years, including in Moldova.
The Panel finds that the <epson.md> domain name is identical to the Complainant’s EPSON trademark as it incorporates it entirely. The “.md” country code top level domain has no legal significance in these proceedings under this element of the Policy.
Accordingly, the Panel concludes that the first element of the Policy is established, and the Complainant has proven that the disputed domain name is identical to the trademark in which it has rights, pursuant to the Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
The Complainant has provided a prima facie case under this element of the Policy showing that it has had no relationship with the Respondent and has not granted the Respondent any right to register and use its trademark. Therefore, the Respondent has to demonstrate its rights or legitimate interests in the disputed domain name.
Although the Respondent has failed to provide a formal Response, the Panel shall analyze its defense made via the separate email communications sent to the Center. The Respondent claims that it is selling EPSON products since 1994 and the disputed domain name was registered more than 10 years ago according to Moldavian law. Further, the Respondent justifies the registration of the Complainant’s trademark as a domain name because it was available and that, in fact, the Respondent defended the domain name for 15 years. Also, the Respondent offered to sell the disputed domain name to the Complainant for ”a correct offer”, which, according to the information provided by the Complainant, is the amount of USD 17,450.
Paragraph 4(c) of Policy provides several non-exclusive defense examples; none of these were put forward or supported by the Respondent. But to the contrary, according to the evidence provided in Annexes 6 and 11 to the Complaint, the disputed domain name was used at the time of filing the Complaint and before that in a manner suggesting that the Respondent was the official representative of the Complainant in Moldova. According to the Complainant’s assertions it is not clear whether the Respondent’s business sells other products of the Complainant’s competitors or exclusivley EPSON products and the Respondent made no comment on such matter. Had the Respondent been able to prove that it was a reseller of the Complainant’s trademarked products only and that certain other requirements were met such as adequately disclosing its relationship with the trademark owner this could have potentially indicated that the Respondent had rights or legitimate interests in the disputed domain name (See Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903; see also paragraph 2.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, in which the Oki Data case is cited as representative of the majority view of WIPO panelists). Although the Panel generally agrees with this majority view, it also notes that in this case the Respondent did not accurately disclose its relationship with the trademark owner on the website corresponding to the disputed domain name while the Complainant is firmly denying any relationship with the Respondent, stressing even that its resellers are not permitted to incorporate its marks in domain names.
From all the above, the Panel cannot infer a bona fide offering of goods and services according to paragraph 4(c)(i) of the Policy, or that the Respondent has been commonly known by the disputed domain name according to paragraph 4(c)(ii) of the Policy, or that the Respondent is making a legitimate noncomercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue, as per paragraph 4(c)(iii) of the Policy.
Moreover, it appears the disputed domain name was registered without observing the provisions of Moldavian law as the relevant registration agreement contains provisions regarding the selection of a new domain name without infringing third parties rights (article 2 II) and incorporates the UDRP (articles 6, 7, 8). Also, the Respondent has failed to provide any evidence of right or legitimate interest in the disputed domain name or any evidence of any relationship with the Complainant that would grant it any rights in the EPSON mark; the Complainant strongly denies any such relationship with the Respondent; the EPSON trademark is distinctive and well-known worldwide; and after the Complainant’s letters, both the Respondent’s lack of reaction in the first phase and the offer to sell the disputed domain name during the suspension period, do not support a right or legitimate interest in the disputed domain name.
For these reasons, the Panel finds that the second element of the Policy is established, and the Respondent has no rights or legitimate interests in respect of the disputed domain name, pursuant to the Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Under this heading, the Complainant must prove both registration and use in bad faith.
The Complainant’s EPSON trademark is well-known worldwide and is protected for the territory of Moldova before the registration of the disputed domain name. Further, even in its first communication to the Center, the Respondent mentioned that it distributes the Complainant’s products in Moldova for 14 years.
Accordingly, the Respondent knew the Complainant’s mark, products and business and registered the disputed domain name with the Complainant’s mark in view.
When the Panel tried to access the disputed domain name, there was no active website. However, according to evidence submitted in the Complaint, the webpage corresponding to the disputed domain name <epson.md> displayed the EPSON stylized trademark along with the Respondent’s trade name. Furthermore, in the past, on the corresponding webpage the Internet users could read the message “EPSON Service Center in Moldova” along with the EPSON trademark, thus it was induced the idea that the Respondent was the authorized service of the Complainant in Moldova.
In the absence of any contradiction, this suggests that the Respondent intentionally chose a third party’s famous mark, registered it as a domain name and used it, for commercial gain, in a manner that created confusion with the said trademark as to the source, affiliation or endorsement of its website, service or product, as contemplated under the provisions of paragraph 4(b)(iv) of the Policy. The disputed domain name contains the Complainant’s trademark in its entirety, without any addition of other words. The registration and use of the disputed domain name was made without any consent nor control of the Complainant, the trademark holder. Further, the website corresponding to the disputed domain name presented the Complainant’s stylized trademark and the Respondent’s trade name in a way that suggested a relationship between the two parties at national level. An Internet user accessing this webpage may believe that it is the Complainant’s official website in Moldova. Indeed, such confusion was likely to generate an important traffic on the Respondent’s website and considerable commercial profit by increasing sales of any products or services offered by the Respondent.
From the Respondent’s communications to the Center regarding the several offers to sell the disputed domain name to the Complainant, including the offer made during the suspension of the proceding for the transfer in exchange of the amount of USD 17,450, the Panel may also infer1 that the disputed domain name was also registered for the purpose of selling the same to the Complainant for valuable consideration in excess of the documented out-of-pocket costs directly related to the disputed domain name, as per paragraph 4(b)(i) of the Policy.
For all these reasons, the Panel finds that the third element of the Policy is established, and that the disputed domain name was registered and is being used in bad faith, pursuant to the Policy, paragraph 4(a)(iii).
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 <epson.md> be transferred to the Complainant.
Dated: September 22, 2010