WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EPSON Europe BV (for and on behalf of Seiko EPSON Corporation) v. Aykut Tongun

Case No. D2010-1266

1. The Parties

The Complainant is EPSON Europe BV (for and on behalf of Seiko EPSON Corporation) of Amsterdam, The Netherlands and Tokyo, Japan, represented by Demys Limited, Edinburgh, United Kingdom of Great Britain and Northern Ireland (“UK”).

The Respondent is Aykut Tongun of Istanbul, Turkey.

2. The Domain Name(s) and Registrar(s)

The disputed domain name <epsonmurekkep.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 July 29, 2010. On July 30, 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 August 2, 2010, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com 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” 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 the Respondent of the Complaint, and the proceedings commenced on August 4, 2010. In accordance with the Rules, paragraph 5(a), the due date for Response was August 24, 2010. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 25, 2010.

The Center appointed Jonas Gulliksson as the sole panelist in this matter on August 31, 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

Seiko EPSON Corporation ("SEC") is a global corporation and one of the world’s largest manufacturers of inkjet, dot matrix and laser printers, scanners, desktop computers, business, 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.

EPSON Europe BV, SEC’s subsidiary, is a major manufacturer and supplier of computer peripherals in the European region. Approximately 23.4% of the net sales noted above were generated by EPSON Europe BV in 2009.

The Complainant’s parent company SEC is the proprietor of the following in-force marks.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the domain name is confusingly similar to the above marks because:

a) EPSON is an extremely well-known “made-up” term and forms the first, dominant, most significant and distinctive element of the domain name;

b) The additional word “murekkep” (which translates in English to “ink”) in the Domain Name is not dominant, being merely generic and descriptive;

c) Had the domain name not included the EPSON mark its meaning and significance would have been entirely different, in that it would not relate specifically to the Complainant or its products.

The Complainant further contends that the Respondent lacks rights or legitimate interests in respect of the disputed domain name since the Respondent is not commonly known by the domain name, the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the domain name. Moreover the Complainant, with reference to the global fame of the cited trademark, cannot conceive of any possible right or legitimate interest of the Respondent in the disputed domain name.

Finally, the Complainant contends that the domain name was registered and is being used in bad faith as the registration was primarily for the purpose of disrupting competitor’s business and with the intention to attract Internet users through confusion.

B. Respondent

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

6. Discussion and Findings

The Panel is required to decide the 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 appropriate.

The Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith

A. Identical or Confusingly Similar

Several previous UDRP panel decisions have stated that the mark EPSON is a well-known mark; see e.g. Epson Europe BV v. Armitage, WIPO Case No. D2009-0995; EPSON Europe BV v. Costas Ioannou, WIPO Case No. D2009-0816. The Panel also notes EPSON’s market position and renown within the electronic components sector. In this case, however, it is not strictly necessary to prove notoriety under this element of paragraph 4(a)(i) of the Policy since the Complainant is the registered owner of a number of prior registered trademark rights which are confusingly similar with the disputed domain name.

The Complainant’s trademark EPSON is incorporated, in its entirety, in the disputed domain name and is the dominant and distinctive part of the disputed domain name. The mere addition of the generic term “murekkep” – which this Panel is satisfactory informed means “ink” in Turkish - is insufficient to avoid likely confusion. Therefore the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trademark EPSON.

According to well established consensus, the “.com” suffix denoting second-level domain status in the Respondent’s domain name does not affect the fact that the disputed domain name is confusingly similar to Complainant’s marks pursuant to paragraph 4(a)(i) of the Policy.

Therefore the Panel is satisfied that the first element of the Policy has been met.

B. Rights or Legitimate Interests

There is nothing on the present record to contradict or challenge the Complainant’s assertions that the Respondent is not commonly known by the disputed domain name, the Respondent is not using the disputed domain name in connection with the bona fide offering of goods or services and the Respondent is not making a legitimate noncommercial or fair use of the domain name. The evidence provided by the Complainant, in which are included screen shots showing that the domain name appears to be pointed to a website which offers refills of ink along with other goods manufactured by the Complainant’s competitors, is sufficient to establish a prima facie case that the disputed domain name indeed is not used in connection with a bona fide offering of goods or services under the Policy, thoroughly discussed in the case Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.

Based on the prima facie case established by the Complainant that the Respondent has no rights or legitimate interest in the disputed domain name, to which the Respondent has not responded, the Panel finds that the prerequisites in the Policy, paragraph 4(a)(ii) are fulfilled.

C. Registered and Used in Bad Faith

In this case, the disputed domain name leads to a main website selling refill ink for inter alia EPSON printers. The Panel can only conclude that, in line with the contentions of the Complainant, the disputed domain name was registered to intentionally and for commercial gain attempt to attract Internet users to its website by creating a likelihood of confusion with the Complainant’s mark as to the source of that website (initial interest confusion). There is a well-settled consensus amongst UDRP panels that respondent use which intentionally diverts Internet users to its website for commercial gain, constitutes bad faith use as well.¹

Moreover, as previous panels have noted, (see Epson Europe BV and on behalf of Seiko Epson Corporation v. Lal Kakar, WIPO Case No. D2009-1246) “the Complainant is well-known internationally and has been carrying on business activities under the EPSON Marks for many decades. Given the high distinctiveness of the EPSON Marks in connection with electronic devices (inter alia printers), it is inconceivable that the Respondent registered the disputed domain name which consists of the Complainant’s EPSON Marks and the word ‘printing’ without knowledge of the Complainant's rights in the EPSON Marks.” The same reasoning applies in this case, where the generic term “murekkep” is descriptive of the Complainant’s goods.

Consequently, the Panel finds that the Respondent registered and used the disputed domain name in bad faith and that the Complainant has satisfied the requirements of paragraph 4(a)(iii) of the Policy.

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 <epsonmurekkep.com> be transferred to the Complainant.

Jonas Gulliksson
Sole Panelist
Dated: September 14, 2010

¹ See for instance F. Hoffmann-La Roche AG v. DOMIBOT, WIPO Case No. D2006-0327.