WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EPSON Europe BV v. Sprint Bilgisayar

Case No. D2012-1652

1. The Parties

The Complainant is EPSON Europe BV, for and on behalf of, Seiko EPSON Corporation of Amsterdam, the Netherlands, represented by Demys Limited, United Kingdom (“UK”).

The Respondent is Sprint Bilgisayar of Istanbul, Turkey.

2. The Domain Name and Registrar

The disputed domain name <epsonteknikservis.com> (the “Domain Name”) is registered with Tucows Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 17, 2012. On August 17, 2012, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On August 17, 2012, 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” 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 23, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was September 12, 2012. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 21, 2012.

The Center appointed Fabrizio Bedarida as the sole panelist in this matter on October 1, 2012. 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 (hereinafter Seiko) 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, Seiko’s subsidiary, filed the Complaint on behalf of Seiko based on a duly issued Power of Attorney. Seiko holds a number of trademark registrations for EPSON in many countries around the world, including Turkey, where the Respondent appears to be located.

The earliest trademark registration for EPSON dates back to June 19, 1975.

The Complainant has also reflected its Trademark EPSON in several domain names including <epson.com> and <epson.com.tr>.

The Domain Name was registered on August 30, 2010. The Domain Name is used for a website promoting the Respondent’s repair services.

The Complainant operates a network of approved repair centers throughout the world, including within Turkey. The Respondent, which appears to be a Turkish entity engaged in printer and computer peripheral repair services, is not an EPSON approved repair center.

On July 16, 2012, the Complainant’s representative wrote to the Respondent in an attempt to solve the matter amicably. The Respondent did not reply to this letter.

5. Parties’ Contentions

A. Complainant

The Complainant contends that each of the three elements specified in paragraph 4(a) of the Policy is given in the present case:

(1) The Domain Name is confusingly similar to the Complainant’s EPSON trademarks because “epson” is an extremely well-known “made-up” term and forms the first, dominant, most significant and distinctive element of the Domain Name. The Complainant further submits that the additional word “teknikservis” in the Domain Name is not dominant, being merely generic and descriptive.

(2) The Respondent has no rights or legitimate interests in the Domain Name. The Complainant contends that the Respondent is not commonly known by the Domain Name, that the Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the Complainant’s trademarks, and that the Respondent is not an authorised distributor of the Complainant’s products.

(3) The Complainant further submits that the Respondent has not made any demonstrable preparations to use the Domain Name in connection with a genuine offering of goods and services.

(4) The Complainant further contends that the Respondent is not making a legitimate noncommercial or fair use of the Domain Name.

(5) The Complainant finally claims that the Domain Name was registered and is being used in bad faith to intentionally attempt to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant’s marks as to the source, sponsorship, affiliation or endorsement of the Respondent’s website.

B. Respondent

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

6. Discussion and Findings

Under paragraph 4(a) of the Policy, the Complainant must prove that each of the following three elements is present:

(i) the Domain Name is identical or confusingly similar to the Complainant’s trademark; and

(ii) the 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.

A. Identical or Confusingly Similar

The Complainant has established that it has rights in the EPSON trademark and has stated that the Domain Name is confusingly similar to it.

In order to substantiate this claim, the Complainant has argued that “epson” is an extremely well-known “made-up” term and forms the first, dominant, most significant and distinctive element of the Domain Name. The Complainant further submits that the additional word “teknikservis” in the Domain Name is not dominant, being merely generic and descriptive.

This Panel agrees with the Complainant’s contention that EPSON is the only distinctive part and that the addition of the generic term does not avoid the confusing similarity between the Domain Name and the Complainant’s mark. Moreover, it is now well established by many previous UDRP decisions that the addition of a generic term (i.e. “teknikservis”) to a trademark is generally not sufficient to avoid confusing similarity.

Accordingly, the Panel finds that the Complainant has satisfied paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant must show that the Respondent has no rights or legitimate interests in respect of the Domain Name. A respondent in a UDRP proceeding does not assume the burden of proof, but may establish rights or legitimate interests in a domain name by demonstrating in accordance with paragraph 4(c) of the Policy:

i) that before any notice to the respondent of the dispute, the respondent used or made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

ii) that the respondent is commonly known by the domain name, even if the respondent has not acquired any trademark rights; or

iii) that the respondent intends to make a legitimate, noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.

This Panel finds that here, the Respondent has no connection or affiliation with the Complainant, which has not licensed or otherwise authorised the Respondent to use or register any domain name incorporating the Complainant’s trademark. The Respondent does not appear to be commonly known by the name “Epson” or by a similar name, and has not alleged any facts to justify any rights or legitimate interests in the Domain Name. The Respondent does not appear to make any legitimate use of the Domain Name for noncommercial activities.

Finally, the Respondent has not replied to the Complainant’s request of explanations regarding its registration of the Domain Name. The Respondent did also not reply to the Complaint, proving or at least alleging in any other way any rights or legitimate interests in the Domain Name.

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

C. Registered and Used in Bad Faith

For the purpose of paragraph 4(a)(iii) 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:

i) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the holder’s documented out-of-pocket costs directly related to the domain name; or

ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the holder’s 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 the respondent’s website or location or of a product or service on the respondent’s website or location.

Accordingly, for the Complainant to succeed, the Panel must be satisfied that the Domain Name has been registered and is being used in bad faith.

Considering that the Complainant is well-known internationally and has been carrying on business activities under the EPSON trademarks for many decades; the high distinctiveness of the EPSON trademarks in connection with electronic devices (inkjet, laser printers, scanners, desktop computers etc.) and the fact that the Respondent presents itself as an Epson repair service center, it is inconceivable that the Respondent registered the Domain Name, which consists of the Complainant’s EPSON trademark and the word “teknikservis”, without knowledge of the Complainant’s rights in the EPSON trademark.

The Panel is therefore of the opinion that the Respondent registered the Domain Name aware of the Complainant’s trademark registrations and rights to the name “epson".

In addition, the Respondent used the Domain Name for a website offering “repair services” for Epson printers (even after being informed by the Complainant’s representative of the Complainant’s rights), in all likelihood trying to divert traffic intended for the official websites of the Complainant and/or of the Complainant’s authorised repair service centers. This Panel agrees with the Complainant that this use amounts to use in bad faith of the Domain Name.

In the absence of contrary evidence, the Panel finds that:

1) the Respondent knew of the Complainant’s trademarks, products and services and intentionally intended to create an association with the Complainant and its business;

2) that the Respondent, as shown by the contents displayed on its website at the Domain Name, must have had actual knowledge of the Complainant’s trademark at the time of the registration of the Domain Name;

3) that the above described use of the Domain Name, i.e., to divert Internet traffic to the Respondent’s website supports an inference of bad faith registration and use of the Domain Name.

Accordingly, the Panel finds on the basis of the evidence presented, that the Respondent has registered and is using the Domain Name in bad faith.

Therefore, the Complainant has satisfied 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 domain name <epsonteknikservis.com> be transferred to the Complainant.

Fabrizio Bedarida
Sole Panelist
Dated: October 4, 2012