The Complainant is Seiko Epson Kabushiki Kaisha, Japan, represented by Demys Limited, United Kingdom.
The Respondent is Geren, Lao Wang, China.
The disputed domain name <epsoneurope.com> is registered with NameSilo, LLC (the “Registrar”).
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on May 15, 2019. On the same day, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On the same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the disputed domain name that differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to the Complainant on May 20, 2019, 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 May 21, 2019.
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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 28, 2019. In accordance with the Rules, paragraph 5, the due date for Response was June 17, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on June 18, 2019.
The Center appointed Matthew Kennedy as the sole panelist in this matter on June 26, 2019. 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.
The Complainant is a Japanese electronics company that also trades as Seiko Epson Corporation. It has a subsidiary named Epson Europe BV. The Complainant’s group has a significant presence in Europe and operates its European website at “www.epson.eu”. The Complainant has registered trademarks for EPSON in multiple jurisdictions, including Chinese trademark registration number 341555, registered on March 10, 1989, and specifying goods in class 17. That trademark registration remains current.
The Respondent is an individual ostensibly resident in China. The Respondent uses a privacy service to redact his name and contact information from the public WhoIs database. In the unredacted version, the Respondent’s contact name and organization are transliterations of Chinese words meaning “individual” and “old Mr. Wang” and there is no complete street address.
The disputed domain name was registered on February 15, 2019. It resolves to a website in Chinese that displays advertising for, and hyperlinks to, gambling and pornography websites.
The disputed domain name is confusingly similar to the Complainant’s EPSON trademark. The word “europe” is a generic geographical descriptor and does nothing to distinguish the disputed domain name from the Complainant’s famous EPSON marks, which remain the dominant element of the disputed domain name.
The Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent is not a licensee of the Complainant and has not received any consent or permission from the Complainant to use its marks or names in association with the registration of the disputed domain name or, indeed, any domain name, service or product. The Complainant has found no evidence that the Respondent has been commonly known by the name “Epson” or “Epson Europe” prior to, or after, the registration of the disputed domain name. The disputed domain name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain. The Respondent has made no demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods and services as the Respondent has no right to assume the Complainant’s marks or trading style.
The disputed domain name was registered and is being used in bad faith. The disputed domain name has been used for extremely misleading purposes. The disputed domain name was chosen precisely because it was confusingly similar to the Complainant’s marks in order to attract web users to the disputed domain name and increase traffic to the pornographic third-party advertising seen on the website associated with the disputed domain name.
The Respondent did not reply to the Complainant’s contentions.
Paragraph 4(a) of the Policy provides that the complainant must prove each of the following elements:
(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 disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Based on the evidence submitted, the Panel finds that the Complainant has rights in the EPSON trademark.
The disputed domain name wholly incorporates the Complainant’s EPSON trademark as its initial element. The disputed domain name adds the word “europe” but, as a mere geographic term, that word is unable to dispel the confusing similarity between the disputed domain name and the trademark. See, for example, ELS Educational Services, Inc. v. Domaincar, WIPO Case No. D2005-1348.
The only other element in the disputed domain name is the generic Top-Level Domain (“gTLD”) suffix “.com”. A gTLD suffix is generally disregarded for the purposes of assessing confusing similarity under the Policy. See LEGO Juris A/S v. Chen Yong, WIPO Case No. D2009-1611; Dr. Ing. h.c. F. Porsche AG v. zhanglei, WIPO Case No. D2014-0080.
Therefore, the Panel finds that the disputed domain name is confusingly similar to a trademark in which the Complainant has rights. The Complainant has satisfied the first element in paragraph 4(a) of the Policy.
Paragraph 4(c) of the Policy sets out the following circumstances which, without limitation, if found by the Panel, shall demonstrate that the respondent has rights to, or legitimate interests in, a disputed domain name, for the purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to [the respondent] of the dispute, [the respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or
(ii) [the respondent] (as an individual, business, or other organization) [has] been commonly known by the [disputed] domain name, even if [the respondent has] acquired no trademark or service mark rights; or
(iii) [the respondent is] making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s trademark, in connection with a website displaying hyperlinks to gambling and pornography websites. The Complainant informs the Panel that the Respondent is not a licensee of the Complainant and has not received any consent or permission from the Complainant to use its marks or names in association with the registration of the disputed domain name or, indeed, any domain name, service, or product. These circumstances indicate that the Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services, nor is the Respondent making a legitimate noncommercial or fair use of the disputed domain name, within the terms of paragraph 4(c)(i) or (iii) of the Policy.
The Respondent’s contact name is listed in the WhoIs database as “geren” and “lao wang”, although it is unlikely that either is the Respondent’s actual name. There is no evidence that the Respondent has been commonly known as “Epsoneurope” or even “Epson”. This circumstance does not fall within the terms of paragraph 4(c)(ii) of the Policy.
In view of the above circumstances, the Panel considers that the Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Respondent failed to rebut that case because he did not respond to the Complaint.
Therefore, based on the record of this proceeding, the Panel finds that the Respondent has no rights or legitimate interests in respect of the disputed domain name. The Complainant has satisfied the second element in paragraph 4(a) of the Policy.
Paragraph 4(b) of the Policy provides that certain circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith. The fourth circumstance is as follows:
“(iv) by using the [disputed] domain name, [the respondent has] intentionally attempted to attract, for commercial gain, Internet users to [the respondent’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.”
The Respondent registered the disputed domain name in 2019, many years after the Complainant obtained its earliest trademark registrations, including in China, where the Respondent is ostensibly resident. The disputed domain name wholly incorporates the Complainant’s EPSON trademark, which is not a dictionary word. The Respondent has acquired a considerable reputation in its trademark through long-standing use and promotion. The disputed domain name combines the Complainant’s EPSON trademark with the word “Europe” which not only forms the name of the Complainant’s subsidiary company but also gives the impression that the disputed domain name is used in connection with a website associated with the Complainant’s business in Europe. In view of these circumstances, the Panel is persuaded that the Respondent was aware of the Complainant’s trademark rights in EPSON at the time of registration of the disputed domain name and that the disputed domain name was registered in bad faith.
The Respondent uses the disputed domain name, which is confusingly similar to the Complainant’s trademark, in connection with a website displaying advertising for, and hyperlinks to, gambling and pornography websites. The hyperlinks are not merely incidental to the content on the Respondent’s website. This use is intentional and either for the Respondent’s own commercial gain, if he is paid to direct traffic to other websites, or for the commercial gain of the operators of those other websites, or both. In each scenario, these facts satisfy the requirements of paragraph 4(b)(iv) of the Policy. See Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, WIPO Case No. D2007-0267. Therefore, the Panel finds that the Respondent is using the disputed domain name in bad faith.
Therefore, the Panel finds that the disputed domain name has been registered and is being used in bad faith. The Complainant has satisfied the third element in paragraph 4(a) of the Policy.
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 <epsoneurope.com> be transferred to the Complainant.
Matthew Kennedy
Sole Panelist
Date: July 1, 2019