WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Seiko Epson Kabushiki Kaisha (also trading as Seiko Epson Corporation) v. Hakan Balci, Ploza Kagit
Case No. D2014-1199
1. The Parties
Complainant is Seiko Epson Kabushiki Kaisha (also trading as Seiko Epson Corporation) of Tokyo, Japan, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland ("UK").
Respondent is Hakan Balci, Ploza Kagit of Ankara, Turkey.
2. The Domain Name and Registrar
The disputed domain name <epsonplotterkagitlari.com> is registered with PDR Ltd. d/b/a PublicDomainRegistry.com (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on July 10, 2014. On July 10, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 11, 2014, the Registrar 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 July 15, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was August 4, 2014. Respondent did not submit any response. Accordingly, the Center notified Respondent's default on August 5, 2014.
The Center appointed Sandra J. Franklin as the sole panelist in this matter on August 12, 2014. 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 uses its EPSON mark for computer printers and related goods and services, and holds a registration for the mark in several countries, including with the United States Patent and Trademark Office ("USPTO") (Reg. No. 1,134,004 filed August 25, 1975) and Turkish Patent Institute ("TPI) (Reg. No. 2003 00490 filed January 10, 2003).
Respondent registered the <epsonplotterkagitlari.com> domain name on June 4, 2013, and uses it to promote Respondent's repair services, as well as third-party services, and to create the impression that Complainant endorses Respondent.
5. Parties' Contentions
1. The disputed domain name is confusingly similar to Complainant's EPSON mark.
2. Respondent does not have any rights or legitimate interests in the disputed domain name.
3. Respondent registered and uses the disputed domain name in bad faith.
Respondent has failed to submit a response in this proceeding.
6. Discussion and Findings
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that a complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(i) the domain name registered by a respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) 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.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., NAF Claim No. 95095 (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 ("In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.").
A. Identical or Confusingly Similar
The Panel finds that Complainant's registration of its EPSON mark with the USPTO and TPI demonstrates its rights in the mark pursuant Policy, paragraph 4(a)(i). See Vivendi Universal Games and Davidson & Associates, Inc. v. XBNetVentures Inc., NAF Claim No. 198803 ("Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.").
The disputed domain name incorporates Complainant's mark and adds the descriptive words "plotter" and "kagitlari" (plotter and paper in English), and the generic Top-Level Domain ("gTLD") ".com". These changes do not distinguish the disputed domain name from Complainant's mark. See Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878 (finding that the descriptive words "inkjet" and "ink" did not distinguish the <canoninkjets.com>, <canoninkjet.com>, <canoninkjet.net>, <canonink.com> and <canonink.net> domain names from Complainant's CANON mark); see also Elenie Reese v. Morgan, NAF Claim No. 917029 (finding that the mere addition of the generic top-level domain ".com" is insufficient to differentiate a disputed domain name from a mark). Accordingly, the Panel finds that the disputed domain name is confusingly similar to Complainant's mark.
The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(i).
B. Rights or Legitimate Interests
Once Complainant makes a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii), the burden of production shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Productions., Inc. v. Entertainment Commentaries, NAF Claim No. 741828 (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy, paragraph 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Jordan Gerberg, NAF Claims No. 780200 ("Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.").
Complainant argues that Respondent is not known by the disputed domain name, nor has Complainant authorized Respondent to use its EPSON mark in a domain name. The WhoIs information lists "Hakan Balci, Ploza Kagit" as the registrant of record for this domain name. In Instron Corporation v. Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't, NAF Claim No. 768859, the panel held that the respondent was not commonly known by the domain names because the WhoIs information listed "Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't" as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names. The Panel similarly finds that Respondent is not commonly known by the disputed domain name <epsonplotterkagitlari.com> under Policy, paragraph 4(c)(ii).
Complainant alleges that Respondent uses thedisputed domain name to offer repair and third-party services. The Panel notes that the website resolving from the disputed domain name features Complainant's logo and offers Respondent's own technical services. Although Respondent may have been a reseller of Complainant's, that does not give Respondent the right to use Complainant's mark to promote its own business. The Panel notes that Respondent does not post a disclaimer or otherwise disclose any relationship with Complainant. Thus, the Panel finds that this use is not bona fide under Policy, paragraph 4(c)(i), and is not a legitimate noncommercial or fair under Policy, paragraph 4(c)(iii). See Summit Group, LLC v. LSO, Ltd., NAF Claim No. 758981 (finding that the respondent's use of the complainant's LIFESTYLE LOUNGE mark to redirect Internet users to respondent's own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy, paragraph 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy, paragraph 4(c)(iii); see also Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903(finding that, among other things, a reseller's use of a mark in a domain name must be solely for the purpose of selling complainant's trademarked goods).
The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(ii).
C. Registered and Used in Bad Faith
Complainant argues that Respondent is using the disputed domain name to promote repair services that compete with, and disrupt, Complainant's own repair business. The Panel agrees and finds bad faith under Policy, paragraph 4(b)(iii). See Board of Regents, The University of Texas System v. Jordan Smith, NAF Claim No. 1195696 (finding that using the resolving website to divert Internet users to the complainant's competitors may constitute bad faith registration and use under Policy, paragraph 4(b)(iii)).
Respondent is using the disputed domain name to profit through the likelihood of Internet user confusion as to the association of Respondent's websites with Complainant, demonstrating further bad faith under Policy, paragraph 4(b)(iv). See Hewlett-Packard Company and Hewlett-Packard Development Company, L.P. v. HP Supplies and Nationwide Office Supplies Ltd., NAF Claim No. 282387, where the respondent registered the domain name <hpsupplies.com> which incorporated thecomplainant's HP mark to divert Internet users to<nationwideofficesupplies.co.uk> where the respondent operated a business selling various productsrelating to the complainant and its competitors, and the panel found that "the respondent, by appropriating complainant's mark to sell competing products, is creating alikelihood of confusion for commercial gain, which is evidence of bad faith registration pursuant to Policy, paragraph 4(b)(iv)"; see also Allianz of America Corporation v. Lane Bond,NAF Claim No. 680624 (finding bad faith registration and use under Policy, paragraph 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel thus also finds Policy, paragraph 4(b)(iv) bad faith.
The Panel finds that Complainant has satisfied Policy, paragraph 4(a)(iii).
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 <epsonplotterkagitlari.com> be transferred to Complainant.
Sandra J. Franklin
Date: August 16, 2014