WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Seiko Epson Kabushiki Kaisha v. FBS INC, Whoisprotection biz / Hamzaokan Erten, Hamzaokan Erten

Case No. D2017-1289

1. The Parties

The Complainant is Seiko Epson Kabushiki Kaisha of Tokyo, Japan, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland (“United Kingdom”).

The Respondent is FBS INC, Whoisprotection biz / Hamzaokan Erten, Hamzaokan Erten of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <epsonmurekkep.com> is registered with FBS Inc. (the “Registrar”).

3. Procedural History

The Complaint in English was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 4, 2017. On July 4, 2017, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 5, 2017, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name which differed from the named Respondent and contact information in the Complaint, and stating that the language of the registration agreement of the disputed domain name is Turkish. The Center sent an email communication to the Complainant on July 10, 2017 providing the registrant and contact information disclosed by the Registrar, and inviting the Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on July 10, 2017.

Pursuant to the Complaint submitted in English and the registrar verification dated July 5, 2017 stating that Turkish is the language of the registration agreement of the disputed domain name, on July 10, 2017, the Center sent a request in English and Turkish that the Parties submit their comments on the language of the proceeding. On July 10, 2017, the Complainant submitted its request for English to be the language of the proceeding. The Respondent submitted informal communications in Turkish but did not submit any request on the language of the proceeding.

The Center verified that the Complaint together amended 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 and 4, the Center formally notified the Respondent in English and Turkish of the Complaint, and the proceedings commenced on July 17, 2017. In accordance with the Rules, paragraph 5, the due date for Response was August 6, 2017. The Respondent submitted informal communications in Turkish on July 18, 2017, but did not submit any formal response. Accordingly, the Center notified the Parties that it would proceed to the Panel appointment on August 7, 2017.

The Center appointed Kaya Köklü as the sole panelist in this matter on August 10, 2017. 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 large Japanese electronics company that manufactures, inter alia, printers and imaging equipment, including but not limited to inkjet and laser printers.

The Complainant has registered the word and figurative trademark EPSON mainly in classes 9 and 16 in many jurisdictions, including Turkey. According to the case record, the first trademark covering protection in Turkey was registered in 1999 and, hence, many years before the registration of the disputed domain name.

The Complainant has further registered and operates the trademark EPSON as domain names under several generic Top-Level Domains (“gTLD”) and country-code Top-Level Domains (“ccTLD”), e.g., <epson.com> and <epson.com.tr>.

According to the current record, the disputed domain name <epsonmurekkep.com> was registered on March 12, 2015.

The Respondent seems to be an individual from Istanbul, Turkey.

As evidenced by the Complainant, the Respondent has asked for USD 10,000 in return for the transfer of the disputed domain name before initiating the present administrative proceedings.

At the time of the decision, the disputed domain name resolves to a website offering ink and other equipment for the Complainant’s and other third-party products, particularly printers. On the website at the disputed domain name, the Complainant’s EPSON trademark is prominently used in various forms.

5. Parties’ Contentions

A. Complainant

The Complainant is of the opinion that the disputed domain name is confusingly similar to the Complainant’s well-known EPSON trademark.

The Complainant argues that the only difference between the disputed domain name and the Complainant’s trademark is that the disputed domain name additionally comprises the descriptive Turkish term “mürekkep”, meaning “ink”. The Complainant is of the opinion that this addition does not negate the confusing similarity with its EPSON trademark.

Furthermore, the Complainant argues that the Respondent has no rights or legitimate interests in respect of the disputed domain name. In particular, the Complainant states that the Complainant has never granted a permission or license to the Respondent to use its EPSON trademark. The Complainant further alleges that the Respondent has never used and does not intend to use its trademarks in connection with a bona fide offering of goods and services.

Finally, it is argued that the Respondent has registered and is using the disputed domain name in bad faith.

B. Respondent

The Respondent submitted informal communications in Turkish. The Respondent did not file any formal or substantive Response to the Complaint

6. Discussion and Findings

6.1. Language of the Proceeding

Although the language of the registration agreement of the disputed domain name is the Turkish language, the Panel finds that it would be unnecessary, given the circumstances of this case, to conduct the proceedings in Turkish and request costly and time consuming translations of documents by the Complainant, while the Respondent failed to raise any objection to the Center’s communication regarding the language of the proceedings, although communicated in English and Turkish. The Panel notes that the Respondent submitted informal communications in Turkish but these were unrelated to the substance of the case, despite having been notified of these proceedings in Turkish. The Panel also notes that the Respondent appears to have some knowledge of English, having corresponded with the Complainant in communications prior to the filing of the Complaint.

In light of the above, the Panel comes to the conclusion that the Respondent will not be prejudiced by a decision being rendered in English.

Hence, the Panel determines in accordance with the Complainant’s request and the Rules, paragraph 11(a), that the language of these administrative proceedings shall be the English language.

6.2. Substantive Issues

According to paragraphs 14(a) and 15(a) of the Rules, the Panel shall decide the Complaint in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable and on the basis of the Complaint where no Response has been submitted.

In accordance with paragraph 4(a) of the Policy, the Complainant must prove that each of the three following elements is satisfied:

(i) the disputed domain name is identical or confusingly similar to the trademarks in which the Complainant has rights; and

(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.

Paragraph 4(a) of the Policy states that the Complainant bears the burden of proving that all these requirements are fulfilled, even if the Respondent has not replied to the Complaint. Stanworth Development Limited v. E Net Marketing Ltd., WIPO Case No. D2007-1228.

However, concerning the uncontested information provided by the Complainant, the Panel may, where relevant, accept the provided reasonable factual allegations in the Complaint as true. Belupo d.d. v. WACHEM d.o.o., WIPO Case No. D2004-0110.

It is further noted that the Panel has taken note of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”) and, where appropriate, will decide consistent with the WIPO Overview 3.0.

A. Identical or Confusingly Similar

The Panel finds that the disputed domain name is confusingly similar to the EPSON trademark of the Complainant.

First, the Panel confirms that the Complainant has satisfied the threshold requirement of having trademark rights in EPSON. As evidenced in the Complaint, the Complainant is the owner of a large number of word and figurative trademarks with regard to the EPSON mark in many jurisdictions worldwide, including in Turkey.

Although not identical, the disputed domain name fully incorporates the Complainant’s EPSON trademark.

The disputed domain name differs from the Complainant’s trademarks only by the addition of the Turkish term “mürekkep”, which means “ink” in English. In the Panel’s view, the addition of such term does not negate the confusing similarity between the Complainant’s trademark EPSON and the disputed domain name. The Panel finds that this additional incorporation is purely descriptive and does not create a new distinctiveness separate from the Complainant’s EPSON trademark. Quite the opposite, the full inclusion of the Complainant’s trademark in combination with the term “mürekkep”, which directly relates to the Complainant printers, may even create the false impression that the disputed domain name is officially related to the Complainant.

In view of the above, the Panel is satisfied that the Complainant has met the requirements under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

While the burden of proof remains with the Complainant, the Panel recognizes that this would often result in the impossible task of proving a negative, in particular as the evidence needed to show the Respondent’s lack of rights or legitimate interests is primarily within the knowledge of the Respondent. Therefore, the Panel agrees with prior UDRP panels that the Complainant is required to make out a prima facie case before the burden of production of evidence shifts to the Respondent to show that it has rights or legitimate interests in the disputed domain name in order to meet the requirements of paragraph 4(a)(ii) of the Policy. Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455.

The Panel finds that the Complainant has satisfied this requirement, while the Respondent has failed to file any evidence or convincing argument to demonstrate a right or legitimate interest in the disputed domain name according to the Policy, paragraph 4(a)(ii) and 4(c).

With its Complaint, the Complainant has provided uncontested prima facie evidence that the Respondent has no rights or legitimate interests to use the Complainant’s EPSON trademark in the disputed domain name.

According to section 2.8.1 of the WIPO Overview 3.0, it is the consensus view among UDRP panels that “a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if its use meets certain requirements”. It is stated that “these requirements normally include the actual offering of goods and services at issue, the use of the site to sell only the trademarked goods, and the site’s accurately and prominently disclosing the registrant’s relationship with the trademark holder”.

In view of the Panel, these requirements also apply mutatis mutandis to spare parts offered for products of third parties if trademarks of these products are part of a domain name.

As evidenced by the provided screenshots of the website linked to the disputed domain name in the case record, the Respondent particularly failed in accurately and prominently disclosing the lack of relationship with the Complainant, e.g., by way of using a disclaimer. On the contrary, the design and appearance of the website linked to the disputed domain name rather causes the impression that the Respondent is an official or at least authorized ink and spare part dealer of the Complainant in Turkey.

In the absence of a Response, the Respondent has failed to demonstrate any of the other nonexclusive circumstances evidencing rights or legitimate interests under the Policy, paragraph 4(c) or any other evidence of a right or legitimate interest in the disputed domain name.

Consequently, the Panel finds that the Complainant has satisfied the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel is further convinced that the Respondent has registered and is using the disputed domain name in bad faith.

The Panel concludes that the disputed domain name is likely to confuse Internet users in their believing that the disputed domain name is affiliated or endorsed by the Complainant or that the use of the disputed domain name is at least authorized by the Complainant. The Panel is of the opinion that the Respondent intentionally attempted to create a likelihood of confusion among customers with the Complainant’s EPSON trademark, apparently for commercial gain.

The following is only a selection of various indications in the case record demonstrating that the Respondent was and still is acting in bad faith.

First, the Panel believes that the Respondent must have been well aware of the Complainant’s trademarks when it registered the disputed domain name. At the date of registration of the disputed domain name, the Complainant’s EPSON trademark was already well-known worldwide, including in Turkey, for many years.

Second, the Panel notes that the Respondent used a privacy service when registering the disputed domain name. Although privacy services might be legitimate in many cases, it is for the Panel difficult to see in the present case why the Respondent should need to protect its identity except to make it difficult for the Complainant to protect its trademark rights. The Panel rather believes that the choice of the disputed domain name (which fully incorporates the Complainant’s trademark EPSON), rather indicates that the Respondent deliberately opted for a privacy shield in order to prevent an efficient enforcement of legitimate trademark rights by the Complainant.

Third, the Respondent apparently tried to sell the disputed domain name to the Complainant for USD 10,000 in return for the transfer of the disputed domain name. This is in view of the Panel far beyond of the

out-of-pocket costs for registering and maintaining the disputed domain name.

Forth, the Panel finds that the Respondent’s failure to respond to the substance of the Complaint further supports the conclusion that it has registered and is using the disputed domain name in bad faith.

All in all, the Panel concludes that the disputed domain name was registered and is being used in bad faith and that the Complainant consequently has satisfied the third element of the Policy, namely, paragraph 4(a)(iii) of the Policy.

7. Decision

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 <epsonmurekkep.com> be transferred to the Complainant.

Kaya Köklü
Sole Panelist
Date: August 23, 2017