WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Mohammad Faraji

Case No. D2010-1262

1. The Parties

Complainant is EPSON Europe BV for and on behalf of Seiko EPSON Corporation of Amsterdam, The Netherlands and Tokyo, Japan, respectively, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.

Respondent is Mohammad Faraji, of Tehran, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <byepson.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 29, 2010. On July 29, 2010, the Center transmitted by email to OnlineNic, Inc. d/b/a China-Channel.com a request for registrar verification in connection with the disputed domain name. On July 30, 2010, OnlineNic, Inc. d/b/a China-Channel.com transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details. Complainant filed an amendment to the Complaint on August 6, 2010.

The Center verified that the Complaint together with the amendment to 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 Respondent of the Complaint, and the proceedings commenced on August 9, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 29, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 30, 2010.

The Center appointed Roberto Bianchi as the sole panelist in this matter on September 3, 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.

4. Factual Background

Complainant EPSON Europe BV is a subsidiary of Seiko EPSON Corporation (“SEC”) and brings its Complaint on behalf of SEC. Complainant is a major manufacturer and supplier of computer peripherals for Europe. EPSON Europe invests considerable sums every year on advertising and marketing SEC’s brands. As a result, consumers throughout the Middle East and the world are aware of Complainant’s marks.

SEC is one of the world’s largest manufacturers of printers, scanners, desktop computers, business, multimedia and home theatre projectors, home theatre televisions, robots and industrial automation equipment, point of sale docket printers, cash registers, laptops, integrated circuits, LCD components and other electronic components. In 2009, SEC’s global business reported net sales of approximately USD 8.5 billion.

SEC owns, inter alia, the following trademark registrations:

Respondent appears to be an individual with residence in Tehran, Iran.

The disputed domain name was registered on October 24, 2009.

On June 8, 2010, in an attempt to reach an amicable settlement, Complainant wrote to Respondent in English and in Farsi by postal mail and email. No response was received from Respondent.

A search on the “www.archive.org” website database (“The Wayback Machine”) for “www.byepson.com” for all years since 1996 was conducted by the Panel on September 17, 2010. It resulted in a “Sorry, no matches” message. Thus, the domain does not appear to have been used since registration.

5. Parties’ Contentions

A. Complainant

Complainant’s contentions can be summarized as follows:

- The disputed domain name is identical or confusingly similar to trademarks or service marks in which Complainant has rights.

- Respondent has no rights or legitimate interests in respect of the disputed domain name. The web site associated with the disputed domain name does not resolve to any active page. It is established under the UDRP that the passive holding of domain names is not considered a bona fide offering of goods and services under the Policy. Respondent is not a licensee of the Complainant and has not received any permission or consent from Complainant to use Complainant’s trademarks. Respondent is not named or commonly known as “EPSON” and does not own trademarks or service marks incorporating the EPSON mark. Given the disputed domain name has not been used by Respondent, it cannot be construed as being registered for noncommercial or fair use. Given the global fame of Complainant’s marks and the similarity of the disputed domain name to said marks, there is no conceivable use to which the disputed domain name could be put now, or in the future, that would not infringe Complainant’s marks.

- The disputed domain name was registered and is being used in bad faith. As Respondent has not used the disputed domain name, he is making a “passive holding” of the domain name, as described in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

B. Respondent

Respondent did not reply to Complainant’s contentions, and is in default.

6. Discussion and Findings

Under Policy, paragraph 4(a), a complainant must make out its case that:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) the respondent has no rights or legitimate interests in respect of the domain name; and

(iii) the domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

With printouts of registration records from the databases of various trademark offices, Complainant has evidenced that it has trademark rights in the EPSON marks. See section 4 above.

The prefix “by” does nothing to distinguish the disputed domain name from Complainant’s marks EPSON. One of the meanings of “by” is “through the agency or instrumentality of”, which indicates the intervention of an agent. Merriam-Webster online dictionary at “www.merriam-webster.com/dictionary/by”. This reinforces the association of the domain name with the term coming immediately after the preposition, that is “epson”. Also, “by” is phonetically equivalent to “buy”, and can be a mistyping of this word, thus reinforcing the impression of confusion with the main part of the domain name, i.e. Complainant’s mark. See Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494 (the <buyguerlain.com> domain name was found to be identical to the GUERLAIN mark, because it was composed out of the verb "to buy" and the term "guerlain", the latter of which incontestably being the principal part of the domain name); see also Hoffmann-La Roche Inc. v. Hightech Industries, Andrew Browne, WIPO Case No. D2010-0240 (the <buyaccutane.net> domain name was found to be confusingly similar to the ACCUTANE mark because the prefix “buy” is an ordinary descriptive word which is related to the trademark ACCUTANE and may lead Internet users to understand the domain name as hosting a website that offers for sale the complainant’s product; adding the prefix “buy” to the mark does nothing to dispel and serves only to reinforce the connection in the public mind between the word ACCUTANE and the complainant, and increases the risk of confusion).

Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant’s EPSON marks.

B. Rights or Legitimate Interests

Complainant denies that any of the circumstances indicating rights or legitimate interests in a domain name pursuant to Policy paragraph 4(c), be present in the instant case. In particular, Complainant denies that Respondent is commonly known by the disputed domain name. Since Respondent’s name appears to be Mohammad Faraji, Complainant might well be right. Complainant also claims that the total lack of use of the disputed domain name since its registration does not qualify as a bona fide offering or as a fair, or legitimate noncommercial use of the disputed domain name. Clearly, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The consensus view among UDRP panels is that once such prima facie case is made by a complainant, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, the complainant is deemed to have satisfied paragraph 4(a)(ii) of the UDRP. See “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” at “https://www.wipo.int/amc/en/domains/search/overview/index.html#21”. For his part, Respondent did not reply to Complainant’s cease and desist letter, aimed at an amicable transfer of the domain name, and is in default in this proceeding. Complainant’s prima facie showing that Respondent has no rights or legitimate interests in the disputed domain name has therefore not been rebutted.

Accordingly, the Panel finds that Respondent lacks rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

Given the global presence and undeniable renown of the EPSON mark and products, and the fact that Complainant’s mark was already registered in the Islamic Republic of Iran when the disputed domain name was registered, the Panel infers that Respondent was fully aware of Complainant’s mark, products and services at the time of registering the disputed domain name. Respondent appears to have registered and/or been involved in the registration of, other domain names containing Complainant’s mark: <byepson.com>, <buyepson.ir>, <myepson.ir> and <buyepson.asia>. While two of these domain names are registered to Respondent, the remaining two are registered to a Mohammad reza Faraj tabrizi. As in the corresponding WhoIs records both registrants have the same email address, it is reasonable to infer that both registrants are, or operate under the control of, the same person or entity.

Since Respondent does not appear to have any relationship with Complainant, and the disputed domain name in its entirety reproduces a well-known trademark, its very use suggests opportunistic bad faith. See Veuve Clicquot Ponsardin, Maison Fondée en 1772 v. The Polygenix Group Co., WIPO Case No. D2000-0163.

Also, the Panel agrees with Complainant that the doctrine of the Telstra case supra is applicable to this case because the disputed domain name does not resolve to an active website and, does not appear to be used in any other way. A number of circumstances are relevant in the present case:

a) Complainant’s EPSON mark and products are well-known globally;

b) Respondent has no rights or legitimate interests in the disputed domain name;

c) Respondent failed to reply to Complainant’s cease-and-desist letter and to the Complaint;

d) There is no conceivable circumstance of use of the disputed domain name by Respondent that would not be in prejudice of Complainant’s rights in the EPSON mark; and

e) Respondent registered a number of domain names, each of them containing Complainant’s EPSON mark in its entirety.

Under these circumstances, absence of use of the disputed domain name may amount to passive holding i.e. bad faith use under the Policy. See Telstra supra.

Accordingly, the third element of the Policy is met.

7. Decision

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 <byepson.com> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Dated: September 17, 2010