WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Andrey Ushakov

Case No. D2014-0388

1. The Parties

The Complainant is EPSON Europe BV, acting for and on behalf of Seiko EPSON Corporation, Amsterdam, the Netherlands, represented by Demys Limited, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Andrey Ushakov, Kharkov, Ukraine.

2. The Domain Names and Registrar

The disputed domain names <epsonxp200.info>, <epsonxp400.info>, <epsonxp600.info>, <epson30.info>, <epson4020.info>, <epson7010.com>, <epson7010.info>, <epson730.info>, <epson7510.info>, <epson7520.info>, <epson837.com> and <epson837.info> are registered with DomainContext, Inc. (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on March 12, 2014. On March 13, 2014, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain names. On April 2, 2014, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain names, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on April 3, 2014 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 April 3, 2014.

The Center verified that the Complaint together with the 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(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 7, 2014. In accordance with the Rules, paragraph 5(a), the due date for Response was April 27, 2014. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default.

The Center appointed Assen Alexiev as the sole panelist in this matter on May 19, 2014. 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 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. The global business of SEC reported net sales of USD 9 billion to the year ended March 31, 2013 with an operating income of USD 225 million over the same period.

The Complainant acts on the basis of a Power of attorney issued by SEC. Being a subsidiary of SEC active in the European region, it has generated approximately 25% of the net sales of SEC for the year 2013.

SEC is the owner of the following trademark registrations (the “EPSON trademark”):

The main global website of SEC is located at “www.epson.com”.

The disputed domain names <epson30.info>, <epson7010.info>, <epson730.info>, <epson7510.info>, <epson7520.info>, <epson4020.info> <epson837.info>, <epsonxp200.info>, <epsonxp400.info> and <epsonxp600.info> were registered on March 10, 2013. The disputed domain name <epson7010.com> was registered on January 30, 2013, and the disputed domain name <epson837.com> was registered on February 27, 2013.

5. Parties’ Contentions

A. Complainant

The Complainant submits that there is a high level of consumer awareness of the EPSON brands worldwide as a result of its advertising and marketing efforts. The Complainant has a strong presence in Ukraine, where the Respondent is apparently based, and operates a Ukrainian website at “www.epson.ua”.

According to the Complainant, the Respondent operates a business called “Ink System” which is engaged in the sale of “Continuous Ink Supply Systems” (CISS). The Respondent’s business is not authorized by or associated with the Complainant. The Respondent was also the respondent in a previous administrative proceeding under the Policy, initiated jointly by SEC and another group company - Seiko Epson Corporation and Epson America, Inc. v. N/A / Andrey Ushakov, NAF Claim No. FA01492913. That dispute concerned a number of domain names in the generic Top-Level Domain (gTLD) “.com”, similar to the current disputed domain names, which were made up of a combination of the EPSON trademark and printer model numbers, and the complainants obtained a decision for the transfer of the domain names to them. Afterwards, the Respondent registered the corresponding names in the “.info” gTLD and purchased additional “.com” domain names. The websites linked to the domain names that were the subject of the previous dispute were identical to those associated with the disputed domain names and their registrar and name servers were also identical.

The Complainant maintains that the disputed domain names are identical or confusingly similar to the EPSON trademark of the Complainant’s parent company SEC. EPSON is a well-known made-up term and forms the first, dominant, most significant and distinctive element of each of the disputed domain names, and the additional words or characters in the disputed domain names represent the model numbers of printers made by the Complainant as follows:

The Complainant further contends that the Respondent has no rights or legitimate interests in the respect of the disputed domain names. The Respondent is not commonly known by them and owns no trademarks or service marks incorporating the EPSON trademark; it is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the EPSON trademark. The Complainant does not permit third parties or even authorized resellers of its products to incorporate the EPSON trademark in domain names.

The Complainant maintains that the disputed domain names are not used for a bona fide offering of goods and services. While the Complainant does not necessarily object to third party manufacturers producing consumables for its printers, it objects to the appropriation of the EPSON trademark and model numbers to advertise and promote unrelated third party products.

The Complainant contends that an unrelated domain name registrant cannot legitimately adopt the trading style and reflect the trademarks of a rights holder in a domain name. The website at each of the disputed domain names links to a page offering a “Continuous Ink Supply System” (CISS) manufactured by the Respondent for the related printer. The Complainant does not manufacture, promote or endorse CISS’s for its own or any third party printer models, and contends that the Respondent has used the attractive force of the EPSON trademark within the disputed domain names to lure web users to its network of websites. Once arriving at these sites web users will be diverted to products manufactured by the Respondent. The websites linked to the disputed domain names do not disclose the lack of relationship between the Respondent and the Complainant. The disputed domain names are combinations of the EPSON trademark and the model numbers of the Complainant’s products, and their registration is an attempt to prevent the Complainant from reflecting its product names in the domain name space. The Complainant also notes that the Respondent has engaged in a pattern of registering similar domain names as noted in the domain name dispute referred to above and has continued to do so after its conclusion. The Respondent has not registered a domain name in every space relating to every product manufactured by the Complainant, but has registered a significant number of domain names relating to the Complainant’s important product lines. The Complainant contends this is indicative that the Respondent has attempted to corner the market in domain names relating to the Complainant’s products.

The Complainant further asserts that the Respondent’s use of the disputed domain names cannot be construed as noncommercial or fair. The disputed domain names were designed to attract web users to the Respondent’s commercial web sites and were therefore put to a commercial use in terms of the Policy.

The Respondent’s use of the disputed domain names is not fair use, as the Respondent has sought, with intent for commercial gain, to misleadingly attract consumers to its websites through the use of the EPSON trademark in the disputed domain names. The Complainant contends that there is no conceivable use to which the disputed domain names could be put that would confer any legitimate interest upon the Respondent given the similarity of the disputed domain names to the EPSON trademark.

The Complainant asserts that the Respondent has registered and is using the disputed domain names in bad faith. It is likely that Internet users who type in the disputed domain names or find them through a search engine will be looking for a website operated by the Complainant rather than the Respondent. The disputed domain names are likely to confuse Internet users trying to find the Complainant's official website or purchase consumables for the Complainant’s printers. Such confusion will result due to the incorporation of the EPSON trademark as the most prominent element of each of the disputed domain names and the addition to them of the Complainant’s model numbers. The use of the EPSON trademark and printer model numbers makes a false representation of a commercial connection with or endorsement by the Complainant. Such confusion and apparent endorsement of the Respondent’s products is likely to be of considerable commercial benefit to the Respondent in that it will draw large numbers of users to the Respondent’s websites through the attractive force of the EPSON trademark. Thus, the Respondent's use of the disputed domain names employs the fame of the EPSON trademark to mislead users into visiting its website instead of the Complainant’s, and causes detriment and disruption of the Complainant’s business.

B. Respondent

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

6. Discussion and Findings

Pursuant to Policy, paragraph 4(a), the Complainant must prove each of the following to justify the transfer of the disputed domain names:

(i) the disputed domain names are 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 disputed domain names; and

(iii) the Respondent has registered and is using the disputed domain names in bad faith.

By Rules, paragraph 5(b)(i), it is expected of a respondent to: “[r]espond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain name holder) to retain registration and use of the disputed domain name…”

In this case, the Center has employed the required measures to achieve actual notice of the Complaint to the Respondent, in compliance with Rules, paragraph 2(a), and the Respondent was given a fair opportunity to present his case. The Respondent has chosen not to submit a Response. This conduct of the Respondent leads the Panel to conclude that he has no arguments or evidence to rebut the assertions of the Complainant. The Panel has to take his decision on the basis of the statements and documents before it and in accordance with the Policy, the Rules, and any rules and principles of law that it deems applicable.

A. Identical or Confusingly Similar

The Complainant has provided evidence and has thus established the rights of its parent company SEC in the well-known EPSON trademark, registered for the territories of various countries around the world, including Ukraine, where the Respondent appears to be located. The Complainant has also shown that it is authorized by SEC to initiate administrative proceedings for the protection of its trademark rights and legitimate interests.

The Complainant has shown that each of the disputed domain names contains a combination of the element “epson” and a descriptive element which coincides with the model number of a printer made by the Complainant or its parent company. The element “epson” is the most prominent element of the disputed domain names, and it is identical to the EPSON trademark. Therefore, the attention of an average Internet user would be mainly attracted by it. In view of this, it is likely that Internet users would regard the additional descriptive element of each of the disputed domain names as a supplementary element and an indication of a specific product of the Complainant to which the respective disputed domain name refers.

It is possible under the Policy to disregard the gTLDs such as the “.com” and the “.info” sections of domain names for the purposes of the comparison under the Policy, paragraph 4(a)(i).

For these reasons, the Panel finds that each of the disputed domain names is confusingly similar to the EPSON trademark, and the Complainant has established the first element of the test under Policy, paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant claims that the Respondent has no rights or legitimate interests in the disputed domain names, and supports its claim with the arguments cited in Section 5 above. Thus, the Complainant establishes a prima facie case under Policy, paragraph 4(a)(ii).

It is well established that once a complainant makes out a prima facie case that the respondent has no rights or legitimate interests in a domain name, the burden shifts to the respondent to rebut the showing by providing evidence to the contrary.

In the present case, the Respondent has chosen not to present to the Panel any allegations or documents in its defense despite the burden under the Rules, paragraph 5(b)(i) and 5(b)(ix), or the consequences that a panel may extract from the fact of a default (Rules, paragraph 14). If the Respondent had any justification for registering or using the disputed domain names, it could have provided it. In particular, the Respondent has not contended that any of the circumstances described in Policy, paragraph 4(c) — or any other circumstance — is present in his favor.

The only information available about the Respondent is the publicly available WhoIs information, provided by the Registrar, and the content of the websites, associated to the disputed domain names. The WhoIs information does not contain any evidence of rights or legitimate interests of the Respondent in respect of any of the disputed domain names. As submitted by the Complainant and not denied by the Respondent, the websites associated to the disputed domain names are very similar – each of them provides information for a specific printer model manufactured by the Complainant and offers ink supply systems manufactured by the Respondent for the same printer, without disclosing the lack of endorsement of these products by the Complainant.

As discussed above, the disputed domain names are confusingly similar to the well-known EPSON trademark, which is registered for the territory of Ukraine, and the Respondent has provided no explanation for their registration and use. The Panel accepts that it is possible that Internet users seeking information about the Complainant’s products may reach the Respondent’s websites expecting them to be affiliated to or endorsed by the Complainant, and then be exposed to the content of these websites. In view of this, the Panel is satisfied that the Respondent is aware of the goodwill of the Complainant and of the EPSON trademark, and it is likely that this goodwill has motivated the Respondent to choose to register the disputed domain names and to link them to websites offering ink supplies manufactured by the Respondent for the Complainant’s products.

The Panel does not regard such conduct as giving rise to rights and legitimate interests of the Respondent in the disputed domain name. Rather, it is an illegitimate attempt by the Respondent to attract customers to its websites and to products that are not endorsed by the Complainant by exploiting the goodwill of the EPSON trademark. Therefore, and in the lack of any evidence or allegations to the contrary, the Panel finds that the Respondent has no rights or legitimate interests in the disputed domain names within the meaning of the Policy, paragraph 4(a)(ii).

C. Registered and Used in Bad Faith

For the purposes of Policy, paragraph 4(a)(iii), 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 holder 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 holder 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 holder has engaged in a pattern of such conduct; or

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

(iv) by using the domain name, the holder 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 your website or location or of a product or service on the holder’s website or location.

In the present case, the disputed domain names are confusingly similar to the EPSON trademark, and were registered by the Respondent without rights or legitimate interests. Having registered them, the Respondent has used the disputed domain names to link them to websites offering ink supplies for the printers manufactured by the Complainant. This makes it clear that the Respondent was well aware of the Complainant and of its products. The confusing similarity between the disputed domain names and the EPSON trademark, coupled with the content of the Respondent’s websites, make it possible that Internet users searching for information about the Complainant’s products may reach the Respondent’s websites expecting them to be endorsed by the Complainant, and then to be affected in their buying decisions by the content of these websites. In such situation the Respondent may extract commercial benefit from the initial interest confusion of Internet users and divert business away from the Complainant.

Taking all the above into account, and in the lack of any contrary evidence, the Panel is prepared to accept that the Respondent has registered and used the disputed domain names in bad faith by intentionally attempting to attract, for commercial gain, Internet users to the websites at the disputed domain names and to the products offered there by creating a likelihood of confusion with the EPSON trademark as to the source, sponsorship, affiliation, or endorsement of these websites and products. This conduct represents bad faith registration and use of the disputed domain names under Policy, paragraphs 4(a)(iii) and 4(b)(iv).

The bad faith of the Respondent is further aggravated by the number of disputed domain names and by the uncontroverted fact that this is a repeated conduct of the Respondent that has taken place after the previous decision in Seiko Epson Corporation and Epson America, Inc. v. N/A / Andrey Ushakov, NAF Claim No. FA01492913, where the Respondent was found to have engaged in essentially the same conduct targeting the EPSON trademark.

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 names <epsonxp200.info>, <epsonxp400.info>, <epsonxp600.info>, <epson30.info>, <epson4020.info>, <epson7010.com>, <epson7010.info>, <epson730.info>, <epson7510.info>, <epson7520.info>, <epson837.com> and <epson837.info> be transferred to the Complainant.

Assen Alexiev
Sole Panelist
Date: June 2, 2014