WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
EPSON Europe BV, for and on behalf of Seiko EPSON Corporation v. BTS Bilisim
Case No. D2010-1706
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 BTS Bilisim of Istanbul, Republic of Turkey.
2. The Domain Name and Registrar
The disputed domain name <epsonyaziciservisi.com> is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on October 8, 2010. On October 8, 2010, the Center transmitted by email to Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com a request for registrar verification in connection with the disputed domain name. On October 11, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com transmitted by email to the Center its verification response confirming that 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 Respondent of the Complaint, and the proceedings commenced on October 11, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was October 31, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on November 1, 2010.
The Center appointed Nasser A. Khasawneh as sole panelist in this matter on November 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.
Following notification of the appointment of the Panel on November 8, 2010, Respondent sent an email to the Center in Turkish. The Center responded, explaining to Respondent that the language of the registration agreement and therefore the language of proceedings is English; however the Center also forwarded Respondent’s email to the Panel and Complainant. The content of Respondent’s email communication is considered below.
4. Factual Background
Seiko EPSON Corporation is a global corporation and a major manufacturer of inkjet, dot matrix and laser printers, scanners, desktop computers, 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. Providing related repair services is a significant aspect of its business.
EPSON Europe BV is a subsidiary of Seiko EPSON Corporation, which is itself is a major manufacturer and supplier of computer peripherals and related technical support services in the European region. Seiko EPSON Corporation owns several registrations for the EPSON trademark including the following:
Republic of Turkey, registration number 2003 00490 filed January 10, 2003 in international classes 2,7,9,14,16 , 37, 40 and 42; United Kingdom, registration number 1048343 filed June 19, 1975 in international class 9; United States of America registration number 1134004 filed August 25, 1979 in iinternational class 9.
Seiko EPSON Corporation has granted a Power of Attorney to EPSON Europe BV permitting it to institute on the parent company’s behalf legal and administrative actions such as the present UDRP proceeding.1
The disputed domain name was registered March 13, 2008, and presently routes to a Turkish-language webpage offering refilled printer cartridges, technical support services and printer and copier equipment rentals.2 Pages linked to from the website to which the disputed domain name routed, in May 2008, displayed the EPSON trademark through which Respondent at that time was offering for sale print cartridges for EPSON printers.3
5. Parties’ Contentions
Complainant avers that the disputed domain name consists of a combination of its famous trademark EPSON and the Turkish words for “printer” (yazici) and “service” (servisi). Complainant also contends that Respondent owns a group of Turkish-language websites, in each case with domain names consisting of the name of a famous manufacturer of printers or copiers along with the Turkish word for “service.”
Complainant avers that it maintains a network of authorized repair centers to service EPSON products and that repair and support of Complainant’s printers provides an important revenue stream for Complainant.
Complainant alleges that Respondent is not within its list of authorized repair centers in Turkey and that Respondent sells, among other things, refilled printer cartridges and other products intended for use with EPSON printers not manufactured by EPSON.
Before July 8, 2010, the website to which the disputed domain name routes, Complainant avers, presented an unauthorized display of Complainant’s logo. The Complaint includes, as annexes, copies of emails and postal letters sent by Complainant to Respondent in both English and Turkish, requesting an explanation about Respondent’s use of Complainant’s trademark. The letters and emails also requested transfer of the disputed domain name to Complainant. Although other written exchanges between the parties followed, no transfer took place; Complainant avers that its logo was removed from Respondent’s website after Complainant’s first letter was sent.
Complainant contends that the disputed domain name is confusingly similar to a trademark in which Complainant has rights; that Respondent has no legitimate rights or interests in use of the disputed domain name; and that the disputed domain name was registered and is used in bad faith under the Policy.
On the basis of the above allegations, Complainant seeks transfer of the disputed domain name.
Respondent did not formally respond to the Complaint or its contentions. After the deadline for filing a formal response, however, on November 8, 2010 Respondent wrote to the Center, as noted above. In essence, Respondent’s email seems, to the Panel, to be reiterating the same points that were made in response to Complainant’s cease and desist letter.
Respondent’s email response to Complainant’s cease and desist letter in July 2010 was as follows: “We are a company that provides services to the epson printer (not authorized) and SEO works, Google took the epsonyaziciservisi.com to have. This domain name provides us with a new customer, we are repairing the old epson printer. Why complain? What should we do?”
6. Discussion and Findings
The Rules require the Panel to decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Rules, paragraph 15(a). Complainant must establish each element of paragraph 4(a) of the Policy, namely:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which 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 in bad faith.
Complainant must establish these elements even if Respondent does not make a formal response. See, e.g., The Vanguard Group, Inc. v. Lorna Kang, WIPO Case No. D2002-1064. In the absence of a Response, the Panel may also accept as true the factual allegations in the Complaint. E.g., ThyssenKrupp USA, Inc. v. Richard Giardini, WIPO Case No. D2001-1425 (citing Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009). 4
A. Identical or Confusingly Similar
Although the disputed domain name <epsonyaziciservisi.com> is not identical to Complainant’s EPSON mark, the Panel agrees that Respondent’s domain name is confusingly similar.
Panels disregard domain name suffixes in evaluating confusing similarity. E.g., VAT Holding AG v. VAT.com, WIPO Case No. D2000-0607; Shangri-La International Hotel Management Limited v. NetIncome Ventures Inc., WIPO Case No. D2006-1315.
The disputed domain name incorporates Complainant’s EPSON trademark in its entirety, adding only the descriptive Turkish words “yazici” and “servisi,” which in English mean “printer” and “service,” respectively. The Panel finds that Respondent’s addition of these descriptive terms does not negate the confusion created by Respondent’s complete inclusion of the EPSON trademark in the disputed domain name. E.g., Sanofi-aventis, Sanofi-aventis Deutschland GmbH v. Andrey Mitrofanov, WIPO Case No. D2007-1772; Giata Gesellschaft für die Entwicklung und Vermarktung interaktiver Tourismusanwendungen mbH v. Keyword Marketing, Inc., WIPO Case No. D2006-1137; Hoffmann-La Roche Inc. v. Aneko Bohner, WIPO Case No. D2006-0629.
The Panel agrees with Complainant that the addition of the descriptive terms instead increases the risk of confusion experienced by Internet users because the disputed domain name implies that Respondent is offering Complainant’s services and products. E.g., bwin Interactive Entertainment AG v. Andrei Gladchih, WIPO Case No. D2009-0167 (citing Accor Société Anonyme à Directoire et Conseil de surveillance v. Tigertail Partners, WIPO Case No. D2002-0625).
The Panel finds therefore that the disputed domain name is confusingly similar to the registered marks of Complainant and that the requirements of paragraph 4(a)(i) of the Policy are fulfilled.
B. Rights or Legitimate Interests
The Panel also concludes that Respondent has no rights or legitimate interests in the disputed domain name.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes: (1) using the domain name in connection with a bona fide offering of goods and services; (2) being commonly known by the domain name; or (3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i)-(iii).
A complainant must show a prima facie case that a respondent lacks rights or legitimate interests. E.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455. The absence of rights or legitimate interests is established if a complainant makes out a prima facie case and the respondent enters no response. Id. (citing De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005).
Complainant avers that Respondent is not commonly known by the disputed domain name, and that Respondent has no license or authorization from Complainant to use the EPSON mark. In the absence of opposition to these allegations by Respondent, the Panel accepts as true these undisputed factual averments by Complainant.
Annexes to the Complaint and publicly available evidence viewed by the Panel online show that the disputed domain name is being used to promote products and services of Complainant’s competitors, including Respondent5. The website to which the disputed domain name routes includes links under a heading of “Diger Servisler,” meaning in English “Other Services.” Those links route users to websites through which Respondent appears to offer technical services and print cartridges for the products of several of Complainant’s major competitors, including Samsung, Konica, Minolta, Oki, and Sharp. The Panel therefore finds that this use of the disputed domain name demonstrates Respondent’s lack of a legitimate noncommercial interest in, or fair use of, the disputed domain name.
Finally, the Panel agrees with Complainant that the record establishes that there is no bona fide offering of goods or services by Respondent. Respondent contends in its response to Complainant’s demand letter that it is providing service for EPSON printers. However, it is clear under the Policy that a reseller’s use of another’s trademark may only be considered a bona fide offering of goods or services if the respondent uses “the site to sell only the trademarked goods and the site accurately disclos[es] the registrant's relationship with the trademark owner.” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 2.3; see Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903. There appears to be no such explanation of Respondent’s relationship with Complainant on Respondent’s website, in addition to which the site links to services unrelated to and in competition with Complainant’s products and services.
Filing no substantial response, Respondent has not invoked any of the circumstances of paragraph 4(c) of the Policy to support the existence of its “rights or legitimate interests” in use of the disputed domain name.
Accordingly, the Panel finds that paragraph 4(a)(ii) of the Policy is satisfied.
C. Registered and Used in Bad Faith
The Panel finds that the third element of paragraph 4(a) of the Policy, bad faith registration and bad faith use, is also established.
Using a domain name to intentionally attract Internet users, for commercial gain, by creating a likelihood of confusion, may be evidence of bad faith registration and use. Policy, paragraph 4(b)(iv). See, e.g., L´Oréal, Biotherm, Lancôme Parfums et Beauté & Cie v. Unasi, Inc, WIPO Case No. D2005-0623. Panels may draw inferences about bad faith registration or use in light of the circumstances, including a lack of conceivable good faith uses for the domain name or failure to reply to a complaint. Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.
The Panel infers based on the record before it that Respondent was aware of Complainant’s mark, which was in global use for many years before Respondent’s registration. Respondent’s statement in correspondence that it uses the disputed domain name in its business of servicing EPSON printers proves as much.
The Panel further infers that Respondent registered the disputed domain name intending to trade on the value of Complainant’s mark. The Panel finds that Respondent deliberately attempted to attract Internet users to its website for commercial gain, by creating a likelihood of confusion with Complainant’s mark. The Panel concludes, therefore, that Respondent registered the disputed domain name in bad faith.
The Panel also concludes that the circumstances demonstrate bad faith use of the disputed domain name by Respondent, as elaborated below.
Currently available online screens from Respondent’s website show that the disputed domain name is used to promote Respondent’s own services which are in competition with Complainant’s services. This constitutes use in bad faith. mVisible Technologies, Inc. v. Navigation Catalyst Systems, Inc., WIPO Case No. 2007-1141; Pfizer Inc. v. jg a/k/a Josh Green, WIPO Case No. 2004-0784 (citing Google, Inc v. wwwgoogle.com and Jimmy Siavesh Behain, WIPO Case No. D2000-1240); Casio Keisanki Kabushiki Kaisha (Casio Computer Co., Ltd.) v. Jongchan Kim, WIPO Case No. D2003-0400; and Downstream Technologies, LLC v. Bartels System GmbH, WIPO Case No. D2003-0088.
With the addition of the words ”printer” and “services” to Complainant’s EPSON trademark, the Panel finds that there is no conceivable legitimate use for the domain name <epsonyaziciservisi.com> by Respondent. See e.g., Hoffmann-La Roche Inc. v. Samuel Teodorek, WIPO Case No. D2007-1814.
The Panel therefore concludes that the disputed domain name was registered and is being used by Respondent in bad faith under paragraph 4(b)(iv) of the Policy.
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 <epsonyaziciservisi.com> be transferred to Complainant.
Nasser A. Khasawneh
Dated: November 18, 2010
1 This decision treats and refers to the parent company’s trademark rights as Complainant’s rights.
2 The Panel has undertaken limited research by visiting the website to which the disputed domain name routes, along with online archives of the website. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 4.5.
3 See <http://web.archive.org/web/*/http:/www.epsonyaziciservisi.com> (Last accessed November 23, 2010).
4 Although Respondent refrained from filing a formal response, the Panel has considered Respondent’s email communication to the Center.
5 See Note 3, supra.