WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Hasan Fefelian

Case No. DIR2010-0002

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, of Edinburgh, United Kingdom of Great Britain and Northern Ireland (“UK”).

Respondent is Hasan Fefelian, of Isfahan, Islamic Republic of Iran.

2. The Domain Name and Registrar

The disputed domain name <epson.ir> is registered with IRNIC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2010. On July 27, 2010, the Center transmitted by email to IRNIC a request for registrar verification in connection with the disputed domain name. On July 29, 2010, IRNIC 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 .ir Domain Name Dispute Resolution Policy (the “Policy” or “irDRP”), the Rules for .ir Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .ir 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 6, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 26, 2010. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on August 31, 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 BV invests considerable sums every year on advertising and marketing SEC's brands. As a result, Complainant’s marks are widely known throughout the world.

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:

The disputed domain name is registered in the name of Respondent, Hasan Fefelian, apparently an individual with residence in Isfahan, Islamic Republic of Iran. The creation date of the registration record for the disputed domain name is June 13, 2007, and the registration date is June 26, 2007.

On June 8, 2010, Complainant wrote to Respondent in an attempt to reach an amicable settlement. No response was received from Respondent.

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

5. Parties’ Contentions

A. Complainant

In summary, Complainant contends the following:

- 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 domain name is not used for a bona fide offering of goods or services. The web site associated with the disputed domain name does not resolve to any active page. 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 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 term “EPSON”. Given the disputed domain name has not been used by Respondent, it cannot be construed as being registered for non commercial 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 the 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 prove that each of the following elements is present:

(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 or is being used in bad faith.

A. Identical or Confusingly Similar

Complainant has evidenced that it has rights in the EPSON trademark. (See section 4 above.)

Since the disputed domain name reproduces in its entirety the EPSON mark, and the addition of the technically necessary ccTLD “.ir” should be disregarded for purposes of comparison between domain names and trademarks under the Policy, the Panel finds that the disputed domain name is identical to a mark in which Complainant has rights.

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 this case. In particular, Complainant denies that Respondent is commonly known by the disputed domain name. Since Respondent’s name appears to be Hasan Fefelian, 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 non commercial use of the domain name. Clearly, Complainant has made out a prima facie case that Respondent lacks rights or legitimate interests in the disputed domain name. The Panel notes that the consensus view among UDRP panels is that once such prima facie case is made, the respondent carries the burden of demonstrating rights or legitimate interests in the domain name. If the respondent fails to do so, a complainant is deemed to have satisfied paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy (“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”. The Panel is of the view that the same analysis should apply to irDRP proceedings. 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 case that Respondent lacks rights or legitimate interests in the disputed domain name has therefore not been rebutted by Respondent.

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

C. Registered or is Being Used in Bad Faith

The Panel observes that the UDRP’s bad faith standard is higher that the irDRP: while the irDRP requires that either bad faith registration or bad faith use be evidenced, the UDRP requires that both bad faith registration and use be proved. In any case, the Panel is satisfied that Complainant has established that Respondent registered and is using the disputed domain name in bad faith.

Given the global presence of Complainant and SEC and the fact that the EPSON mark and products are widely known, and the fact that Complainant had already registered its mark in the Islamic Republic of Iran at the time Respondent registered the disputed domain name, the Panel infers that Respondent must have been aware of Complainant’s mark, products and services by that time.

Because 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 Telstra (see supra) is applicable in this case because the disputed domain name does not resolve to an active website and, apparently, 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 famous or 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,

Under these circumstances, the absence of use of the disputed domain name may amount to passive holding, i.e. acting in bad faith. See Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003.

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 <epson.ir> be transferred to Complainant.

Roberto Bianchi
Sole Panelist
Dated: September, 17, 2010