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WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Seiko Epson Kabushiki Kaisha v. Domain Admin, Whois Privacy Corp.

Case No. D2021-0572

1. The Parties

The Complainant is Seiko Epson Kabushiki Kaisha, Japan, represented by Demys Limited, United Kingdom.

The Respondent is Domain Admin, Whois Privacy Corp., Bahamas.

2. The Domain Name and Registrar

The disputed domain name <epson.space> is registered with TLD Registrar Solutions Ltd. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 24, 2021. On February 24, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On February 25, 2021, the Registrar 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 verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” o “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 of the Complaint, and the proceedings commenced on March 10, 2021. In accordance with the Rules, paragraph 5, the due date for Response was March 30, 2021. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on April 1, 2021.

The Center appointed Taras Kyslyy as the sole panelist in this matter on April 29, 2021. 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 Japanese electronics company and one of the world’s largest manufacturers of printers and imaging equipment, including inkjet, dot matrix and laser printers, scanners, desktop computers, business, multimedia and home theatre projectors, robots and industrial automation equipment, point of sale docket printers and cash registers, laptops, integrated circuits, LCD components and other associated electronic components.

The Complainant owns numerous registrations for its EPSON trademark, including for instance the United States of America trademark registration No. 73061282, registered on April 29, 1980.

The Complainant operates, inter alia, a website at “www.epson.eu”, which sells its products and associated consumables. This website is available in the Russian Federation.

The disputed domain name was registered on September 27, 2018 and redirects to a website in Russian, “www.epsons.ru”, purporting to be an official EPSON online shop in the Russian Federation, prominently featuring the EPSON trademark and offering for sale EPSON and other products.

5. Parties’ Contentions

A. Complainant

The disputed domain name is identical to the Complainant’s trademark. The Top-Level Domain (“TLD”) “.space” is required only for technical reasons and can be ignored for the purposes of comparison of the disputed domain name to the Complainant’s marks. The disputed domain name incorporates the Complainant’s trademark in its entirety, without any additional adornments.

The Respondent has no rights or legitimate interests in the disputed domain name. The Respondent has not been commonly known as EPSON prior to or after the registration of the disputed domain name. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use its trademarks or product names. The Respondent does not own any trademarks incorporating the term “Epson”. The Respondent has not ever legitimately traded as EPSON. The disputed domain name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, since it always resolved to a website which has sold what appear to be the Complainant’s products.

The disputed domain name was registered and is being used in bad faith. Given the sale of what appear to be the Complainant’s products on the website associated with the disputed domain name, it is inconceivable that the Respondent did not have the Complainant firmly in mind when it registered the disputed domain name. It is likely that web users who directly type the disputed domain name into their browsers, or find it through a search engine, will be looking for a site operated by the Complainant rather than the Respondent. On balance, it is considerably less likely that web users would type in or search for the Complainant’s mark and expect to find the Respondent’s website. The disputed domain name is, in and of itself, extremely likely to confuse web users trying to find the Complainant and its products. The disputed domain name is identical to the Complainant’s trademark, it therefore makes a false representation, in favor of the Respondent, by strongly implying endorsement by or association with the Complainant and/or by suggesting that the Respondent may have exclusive entitlement to market the Complainant’s products. This will inevitably be to the detriment of the Complainant and the sale of its own products, directly or via its distribution channels in general. The lack of disclaimer, the use of the Complainant’s product images and that the disputed domain name is identical to the Complainant’s trademarks is such that the disputed domain name has been registered and used in bad faith in terms of the Policy. Such bad faith is exacerbated by the Respondent’s extensive use of the Complainant’s logo and claim on the associated website that it is the “EPSON Official website of online hardware store in Russia” and, on its “contact us” page is the “EPSON Official website online store of equipment in Russia”. Such claims are fundamentally misleading and detrimental to the Complainant and its business activities.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

A. Identical or Confusingly Similar

According to section 1.11.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (the “WIPO Overview 3.0”) the applicable TLD in a domain name (e.g., “.com”, “.club”, “.nyc”) is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test. Thus, the Panel disregards the TLD “.space” in the disputed domain name for the purposes of the confusing similarity test.

According to section 1.7 of the WIPO Overview 3.0 in cases where a domain name incorporates the entirety of a trademark the domain name will normally be considered identical or confusingly similar to that mark for purposes of UDRP standing. The Panel finds that in the present case the disputed domain name incorporates the Complainant’s trademark in its entirety without any additions.

Considering the above, the Panel finds the disputed domain name is identical to the Complainant’s trademark, therefore, the Complainant has established its case under paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

Noting the facts and arguments set out above, the Panel finds that the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the disputed domain name.

Furthermore, the Respondent provided no evidence that it holds a right or legitimate interest in the disputed domain name.

The Respondent is not commonly known by the disputed domain name, which could demonstrate its right or legitimate interest (see, e.g., World Natural Bodybuilding Federation, Inc. v. Daniel Jones TheDotCafe, WIPO Case No. D2008-0642).

The Complainant did not license or otherwise agree for use of its prior registered trademarks by the Respondent, thus no actual or contemplated bona fide or legitimate use of the disputed domain name could be reasonably claimed (see, e.g., Sportswear Company S.P.A. v. Tang Hong, WIPOCase No. D2014-1875).

The disputed domain name redirects Internet users to a website with a logo similar to the Complainant’s claiming to be the Complainant’s official online store to make Internet users believe that they actually access the Complainant’s authorized website. Past UDRP panels have confirmed that such actions prove a registrant has no rights or legitimate interests in a disputed domain name (see Daniel C. Marino, Jr. v. Video Images Productions, et al., WIPO Case No. D2000-0598, Houghton Mifflin Co. v. Weatherman, Inc., WIPO Case No. D2001-0211).

According to section 2.8.2 of the WIPO Overview 3.0 resellers or distributors using a domain name identical to a complainant’s trademark to undertake sales related to the complainant’s goods are not making a bona fide offering of goods and thus have no legitimate interest in such domain name. The Panel finds this applies in the present case, considering the risk of misrepresentation by the disputed domain name, which is identical to the Complainant’s trademark.

The disputed domain name incorporates the EPSON trademark of the Complainant in its entirety, and it is its distinctive element. Since EPSON is a widely-known trademark, and the disputed domain name is associated with a website offering EPSON products, the Panel finds that the Respondent must have been aware of the EPSON trademark when it registered the disputed domain name, and that it chose to target the EPSON trademark because of the likelihood that it will attract traffic to the Respondent’s website. In the Panel’s view, such conduct cannot be regarded as giving rise to rights or legitimate interests on the part of the Respondent to register and use the disputed domain name (see, e.g., LEGO Juris A/S v. Andrei Novakovich, WIPO Case No. D2016-1513).

The Respondent’s use of the identical disputed domain name to redirect to a website offering for sale also products is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use pursuant to the Policy (see, e.g., Option One Mortgage Corporation v. Option One Lending, WIPO Case No. D2004-1052)

Noting the high risk of implied affiliation between the disputed domain name and the identical widely-known trademark of the Complainant, the Panel finds that there is no plausible fair use to which the disputed domain name could be put that would not have the effect of being somehow connected to the Complainant (see, e.g., Instagram, LLC v. Super Privacy Service LTD c/o Dynadot / Zayed, WIPO Case No. D2019-2897).

Considering the above, the Panel finds the Respondent does not have rights or legitimate interests in the disputed domain name. Therefore, the Complainant has established its case under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent’s use of the disputed domain name to purport to sell the Complainant’s products shows that at the time of the registration of the disputed domain name the Respondent clearly knew and targeted the Complainant’s prior registered and famous trademark, which confirms the bad faith (see, e.g., The Gap, Inc. v. Deng Youqian, WIPO Case No. D2009-0113).

According to section 3.1.4 of the WIPO Overview 3.0 the mere registration of a domain name that is identical or confusingly similar to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith. The Panel is convinced that the Complainant’s trademark is well established through long and widespread use and the Complainant has acquired a significant reputation and level of goodwill in its trademark both in Japan and internationally. Thus, the Panel finds that the disputed domain name identical to the Complainant’s trademark was registered in bad faith.

According to paragraph 4(b)(iv) of the Policy the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: “by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your website or location or of a product or service on your website or location.” In this case, the disputed domain name redirects to a website featuring the Complainant’s trademark and falsely pretends to be the Complainant’s official local website to intentionally attract Internet users by creating likelihood of confusion with the Complainant’s trademark as to the source of the website and its products. The Panel finds the above confirms the disputed domain name was registered and used in bad faith.

Considering the above, the Panel finds the disputed domain name was registered and is being used in bad faith. Therefore, the Complainant has established its case under 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 <epson.space> be transferred to the Complainant.

Taras Kyslyy
Sole Panelist
Date: April 19, 2021

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