WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Seiko Epson Kabushiki Kaisha v. Domain Admin, Whois Privacy Corp.

Case No. D2018-2894

1. The Parties

The Complainant is Seiko Epson Kabushiki Kaisha of Tokyo, Japan, represented by Demys Limited, United Kingdom.

The Respondent is Domain Admin, Whois Privacy Corp. of Nassau, New Providence, Bahamas.

2. The Domain Name and Registrar

The disputed domain name <help-epson.com> (the “Disputed Domain Name”) is registered with Internet Domain Service BS Corp (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 19, 2018. On December 19, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Disputed Domain Name. On December 21, 2018, 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on January 7, 2019. In accordance with the Rules, paragraph 5, the due date for Response was January 27, 2019. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on January 28, 2019.

The Center appointed Mariya Koval as the sole panelist in this matter on January 29, 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.

4. Factual Background

The Complainant is a Japanese electronics company and one of the world’s largest manufacturers of computer printers, imaging equipment, including inkjet, dot matrix and laser printers, scanners, desktop computers, business, multimedia and home theatre projectors, large home theatre televisions, robots and industrial automation equipment, and information and imaging related equipment. The Complainant was founded more than 150 years ago and today has sales and marketing sites, service sites, as well as production and R&D sites all over the world.

The Complainant has a diverse trademark portfolio worldwide, however for the purpose of this proceeding it has selected the following trademark registrations:

The Complainant, having a significant online presence, operates a large number of domain names with incorporation of the EPSON Trademark (the “EPSON Trademark”), namely the main global website <global.epson.com> and many others, such as <epson.ru>, <epson.com>, <epson.net>, etc. Through its websites the Complainant sells and promotes its products and services.

According to the WhoIs and the Registrar the Respondent is based in Bahamas, however the website at the Disputed Domain Name resolves to a website indicating a presence in the Russian Federation.

The Complainant has a strong presence in the Russian Federation, having its local subsidiary company where, based upon the information on the website under the Disputed Domain Name, the Respondent is presumably based.

The Disputed Domain Name was registered on April 5, 2018. At the date of this decision, the website under the Disputed Domain Name is inactive. However, as the screenshots of the website associated with the Disputed Domain Name, presented by the Complainant (Annex 6 to the Complaint) witness, on the date of the Complaint’s filing the Disputed Domain Name resolved to a commercial website where the printer maintenance and repair services were offered. At the same time, the website under the Disputed Domain Name appeared to be very similar to the Complainant’s Russian language website (<epson.ru>) and contained the Complainant’s logo at the page’s top left.

5. Parties’ Contentions

A. Complainant

The Complainant contends that, being one of the world’s largest manufacturers of printers and imaging products, it invests great sums every year in advertising and marketing of its brands globally, resulting in high level brands awareness of its products by consumers worldwide. The Complainant notes that it has previously brought a number of complaints under the UDRP in view of constant illegal exploitation of its EPSON Trademark.

The Complainant also contends that the Disputed Domain Name is confusingly similar to the Complainant’s EPSON Trademark because the Disputed Domain Name consists of the Complainant’s famous EPSON Trademark as a dominant element and it differs from the Complainant’s registered Trademark only by adoption of the additional word “help” which, in its turn, is a descriptive term and does nothing for distinguishing the Disputed Domain Name from the Complainant’s EPSON Trademark.

The Complainant alleges that the Respondent does not have any rights or legitimate interests in the Disputed Domain Name in view of there is no evidence that the Respondent has been commonly known by the name “Epson” or “Help Epson” prior to or after the registration 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.

The Complainant further claims that the Disputed Domain Name has not been used in connection with any legitimate noncommercial or fair use, without intent for commercial gain, in terms of paragraph 4(c)(iii) of the Policy.

The Complainant asserts that 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 Complainant objects to the appropriation of its famous marks to advertise and promote unrelated third-party repair services.

The Complainant also contends that the Respondent has registered the Disputed Domain Name for the only purpose of disrupting the Complainant’s business in view of the Disputed Domain Name is extremely likely to confuse Internet users trying to find the Complainant’s official website or a member of its authorized service center and repair network. Such confusion will inevitably occur due to the incorporation of the Complainant’s famous mark as the most prominent element of the Disputed Domain Name, the lack of any disclaimer and the misleading use of photographs and imagery in order to give the impression the Respondent is associated with the Complainant.

The Complainant finally asserts that the Respondent employs the fame of the EPSON Trademark to mislead Internet users into visiting its website instead of the Complainant's one and has therefore been registered and used in bad faith in terms of the Policy.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant must prove that:

(i) the Respondent has registered the Disputed Domain Name which 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 Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant is the owner of the EPSON Trademark for almost forty years. Moreover, many previous panels have acknowledged the EPSON Trademark as well-known, see e.g. EPSON Europe BV for and on behalf of Seiko EPSON Corporation v. Andrey Ushakov, WIPO Case No. D2014-0388 (“the Complainant has provided evidence and has thus established the rights of its parent company SEC in the well-known EPSON trademark”); Seiko EPSON Corporation v. deletedvideorecovery, WIPO Case No. D2012-1130 (with the EPSON trade mark being distinctive and well-known).

The Panel finds that the Disputed Domain Name reproduces the Complainant’s EPSON Trademark in its entirety with addition of the dictionary word “help”, hyphen and and the generic Top-Level Domain (“gTLD”) “.com”. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.8 where the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. Also, addition of a hyphen is typically irrelevant to the consideration of confusing similarity between a trademark and a domain name. The gTLD “.com” should be disregarded under the confusing similarity test as a standard registration requirement.

In view of the above the Panel concludes that the Disputed Domain Name, completely incorporating the Complainant’s highly distinctive EPSON Trademark, is confusingly similar to the Complainant’s Trademark and that the Complainant has established the first element under Policy, paragraph 4(a).

B. Rights or Legitimate Interests

The Complainant alleges that the Respondent has no rights with respect to the EPSON Trademark, it is not commonly known by the Disputed Domain Name, it does not use the Disputed Domain Name with any legitimate noncommercial or fair use and nothing suggests that the Respondent owns any trademarks incorporated or similar (identical) to the terms “epson” or “help epson”.

The Panel finds that the Complainant has established a prima facie case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Complainant has used its EPSON Trademark for more than forty years, having been recognized by the consumers all over the world and obtained the notoriety for its EPSON Trademark.

According to the section 2.5.1 of the WIPO Overview 3.0 UDRP, panels have found that domain names identical to a complainant’s trademark carry a high risk of implied affiliation. Even where a domain name consists of a trademark plus an additional term (at the second- or top-level), UDRP panels have largely held that such composition cannot constitute fair use if it effectively impersonates or suggests sponsorship or endorsement by the trademark owner. In this case, the Disputed Domain Name contains the Complainant’s Trademark in its entirety and addition of the dictionary term “help” only enhances an impression of the Respondent’s relation to the Complainant (that is not consistent with the reality), that, correspondingly, cannot constitute fair use of the Disputed Domain Name.

The Panel finds that the Respondent is not affiliated with the Complainant in any way, it has not been ever authorized by the Complainant to use the Complainant’s EPSON Trademark. There is no evidence that the Respondent is commonly known by the Disputed Domain Name.

The Respondent did not respond to the Complaint and did not participate in this proceedings, and as a result the Respondent failed to present any evidence and/or explanation which may show any rights or legitimate interests in the Disputed Domain Name.

Moreover, the website (is inactive now) under the Disputed Domain Name does not contain any information about the Respondent’s relationship or connection with the Complainant. Conversely, the presence of the Complainant’s EPSON Trademark on the website under the Disputed Domain Name gave an impression that the Respondent’s website is an official website of the Complainant in the Russian Federation. This impression was strengthened by the Respondent’s contact page where address details were prominently headed “Central EPSON Service Center”. The Internet users who seek the Complainant’s services could visit the Respondent’s website with the confidence that the Respondent is an official representative of the Complainant. Such Respondent’s actions cannot in any way be considered as a bona fide offering of goods and services.

In addition, the Respondent is not only offering the Complainant’s goods and services (including repair service), but it offers also third party services.

In view of the above, the Panel concludes that the Complainant has satisfied the second requirement that the Respondent has no rights or legitimate interests in the Disputed Domain Name, under paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Panel finds that the Respondent registered the Disputed Domain Name in 2018, which is more than forty years after the Complainant obtained its first EPSON Trademark registrations. At the same time, the Complainant has made long and extensive use of its EPSON trademark and has invested massively in its promotion and its recognition.

The Disputed Domain Name completely reproduces the Complainant’s well-known EPSON Trademark. According to the WIPO Overview 3.0, section 3.1.4, panels have consistently found that the mere registration of a domain name that is identical or confusingly similar (particularly domain names comprising typos or incorporating the mark plus a descriptive term) to a famous or widely-known trademark by an unaffiliated entity can by itself create a presumption of bad faith.

Further, taking into account the global notoriety of the Complainant’s EPSON Trademark and the use of the Disputed Domain Name, in the Panel’s opinion that it is almost impossible that the Respondent was unaware of the Complainant’s Trademark at the time of registration of the Disputed Domain Name. By creating a website (which is inactive now) offering the services of the EPSON printers’ maintenance, on which the Complainant’s logo was placed, the Respondent not only demonstrated the very good knowledge about the Complainant, its activity and its EPSON Trademark, but also showed its endeavor to create strong impression of connection with the Complainant.

The Panel finds it is obvious that the Respondent registered the Disputed Domain Name for the only purpose of operating a website in order to offer the analogous services to the Complainant’s services, using the Complainant’s EPSON Trademark on it, and to create strong impression that its website is the Complainant’s website.

Accordingly, the Panel concludes that the Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant and its EPSON Trademark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.

In accordance with the section 3.6 of WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), where it appears that a respondent employs a privacy or proxy service merely to avoid being notified of a UDRP proceeding filed against it, panels tend to find that this supports an inference of bad faith; a respondent filing a response may refute such inference. As established in many previous decisions, the use of a privacy registration service is not per se an indication of bad faith. However, the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith, see e.g. WhatsApp, Inc. v. Whois Agent, Whois Privacy Protection Service, Inc. / Mohammed Alkalbani, Ops Alkalbani, M. Rashid Alkalbani, WIPO Case No. D2016-2299.In this case the Panel concludes that the use of privacy service combined with another facts, such as the Respondent’s use of the Complainant’s well-known EPSON Trademark on its website and its aspiration of creating an impression of connection with the Complainant constitutes an inference of bad faith registration and use of the Disputed Domain Name.

Finally, the Respondent did not file any response and did not take any efforts for justification of its actions with respect to the Disputed Domain Name registration and use.

In view of the foregoing, the Panel finds that the Complainant has proven that the Respondent registered and is using the Disputed Domain Names in bad faith. Accordingly, the Panel concludes that the third element has been successfully satisfied.

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 Name <help-epson.com> be transferred to the Complainant.

Mariya Koval
Sole Panelist
Date: February 12, 2019