Generic Top Level Domain Name (gTLD) Decisions

The Complainant is Seiko Epson Corporation et al , Long Beach, CA, USA ("Complainant"). The Respondent is JIT Consulting, New York , NY, USA ("Respondent").

The domain name at issue is epsondirect.com registered with Network Solutions.

The Panelist certifies that she has acted independently and impartially and to the best of her knowledge, has no known conflict in serving as the panelist in this proceeding.

Honorable Carolyn Marks Johnson sits as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum ("the Forum") electronically on August 23, 2000; The Forum received a hard copy of the Complaint on August 21, 2000.

On August 24, 2000, Network Solutions confirmed by e-mail to the Forum that the domain name epsondirect.com is registered with Network Solutions and that the Respondent is the current registrant of the name. Network Solutions has verified that Respondent is bound by the Network Solutions 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s UDRP.

On August 30, 2000, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 19, 2000 by which Respondent could file a Response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts, and to postmaster@epsondirect.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On October 6, 2000, pursuant to Complainant’s request to have the dispute decided by a One Member panel, the Forum appointed Honorable Carolyn Marks Johnson as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Uniform Rules "to employ reasonably available means calculated to achieve actual notice to Respondent." Therefore, the Panel may issue its Decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum’s Supplemental Rules and any rules and principles of law that the panel deems applicable, without the benefit of any Response from the Respondent.

Complainant requests that the domain name be transferred from Respondent to Complainant.

B. Respondent

Respondent did not file an appearance nor respond.

Complainant Seiko Epson Corporation ("Seiko Epson") is the holder of several registered trademarks for EPSON in association with variety of products marketed under the EPSON brand name. Epson Direct Corporation ("Epson Direct") is a subsidiary of Seiko Epson, and a licensee of the EPSON trademark as it relates to its business.

Respondent registered the <epsondirect.com> domain name January 28, 1999. Respondent has not yet established any web site using the domain name. On January 19, 2000, Complainant sent Respondent a cease-and-desist letter advising Respondent that that use of the <epsondirect.com> domain name constitutes trademark infringement, unfair competition, trademark dilution, and domain name piracy. Complainant demanded that Respondent cease-and-desist any use of the <epsondirect.com> domain name. Respondent did not respond. On June 9, 2000, Complainant sent a follow up cease-and-desist letter to Respondent, demanding that the domain name be transferred to Complainant and that Respondent contact Complainant’s counsel no later than June 16, 2000. The letter was sent via certified mail, facsimile, and to the e-mail address listed in Network Solutions WHOIS database. Respondent did not respond to the e-mail. The facsimile number was answered but no one had ever heard of Respondent at that number. The certified letter was returned undelivered.

Respondent is the holder of over 80 domain names that appear to be confusingly similar to famous trademarks and service marks including, inter alia, ABC, American Express, AOL BMW, Canon, CBS, Chrysler, Citibank, General Motors, Honda, Kodak, Mercedes, Microsoft, NBC, Nike, Prudential, Rolex, Sprint, Wall Street Journal, and Yahoo.

Paragraph 4(a) of the ICANN Uniform Domain Name Dispute Policy ("Policy") requires that the complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:

(1) the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

(2) the Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

The Panel finds that the domain name <epsondirect.com> is, in part, identical to Complainant’s federally registered EPSON marks and in its entirety, confusingly similar to Complainant’s EPSON marks. See Epson Corp. & Epson America, Inc. v. Distribution Purchasing & Logistics Corp., FA94219 (Nat. Arb. Forum, April 5, 2000) (finding <epsonstore.com> confusingly similar to Complainant’s EPSON marks); State Farm Mutual Automobile Insurance Co. v. JIT Consulting, FA 94355 (Nat. Arb. Forum April 24, 2000) (finding <statefarmdirect.com> to be identical or confusingly similar to Complainant’s STATE FARM marks).

Respondent, who carries the burden of proof on this issue, has not shown any rights or legitimate interest in the domain name. The Panel finds that Respondent’s failure to answer Complainant’s numerous attempted contacts combined with Respondent’s failure to answer this UDRP complaint can only be interpreted to mean that Respondent cannot establish rights and legitimate interest in the <epsondirect.com> domain name and that the proof before the Panel warrants an inference that Respondent has no rights or interests.

The decision of another Panel that divested this same Respondent of the domain name <cignadirect.com> is instructive on this issue. There the Panel found that Respondent’s complete failure to assert any rights acted as an "admission-by-silence." See Cigna Corp. v. JIT Consulting, AF-00174 (eResolution, June 6, 2000) (finding that if Respondent had considered Complainant’s claim to be in error, Respondent would have answered and corrected the inaccurate claim). The same situation exists here, and this Panel adopts the same reasoning.

Complainant makes several arguments to demonstrate that Respondent registered and is using the <epsondirect.com> domain name in bad faith. From the fact that Respondent has registered over 80 domain names that incorporate distinctive or famous trademarks, Complainant argues that Respondent’s intent can only be to sell, rent, or otherwise transfer the domain names to their respective owners in violation of ICANN Policy 4(b)(i). See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name "is so obviously connected with the Complainant…that its very use by someone with no connection with Complainant suggests opportunistic bad faith"); See also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum, April 17, 2000) (evidence of bad faith found where domain name incorporated a commonly known mark at the time of registration).

Further, Complainant argues that Respondent’s numerous domain name registrations indicate a pattern of conduct to prevent trademark owners from reflecting their marks in corresponding domain names in violation of ICANN Policy 4(b)(ii). The question then becomes whether bad faith intent can be inferred from the registration of multiple domain names. Several Panels have answered this question in the affirmative. See The Pep Boys Manny, Moe, and Jack v. E-Commerce Today, Ltd., AF-0145 (eResolution May 3, 2000) (finding that where the Respondent registered many domain names, held them hostage, and prevented the owners from using them constituted bad faith); America Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum) (finding a pattern of conduct where Respondent has registered many domain names unrelated to the Respondent’s business which infringe on famous marks and websites); Hitachi, Ltd. v. Fortune Int’l Dev. Ent, D2000-0412 (WIPO July 2, 2000) (finding a pattern of conduct where the Respondent registered numerous domain names with the number 2000, including <bmw2000.com>, <mercedesbenz2000.com>, <saab2000.net>, etc.). The fact that one Panel disagreed that bad faith can be inferred from the mere registration of numerous domain name registrations does not prevent the outcome that is appropriate here. See Cigna Corp. v. JIT Consulting, AF-00174 (eResolution, June 6, 2000) (refusing to find that a list of domain name registrations alone is sufficient to infer bad faith intent at the time of registration since no evidence of conscious malfeasance was presented).

Epson also argues that Respondent’s provision of inaccurate contact information and his failure to answer numerous cease-and-desist letters as well as to respond to this complaint is evidence of bad faith. This panel agrees. See Epson Corp. & Epson America, Inc. v. Distribution Purchasing & Logistics Corp., FA94219 (Nat. Arb. Forum, April 5, 2000) (finding that failure to provide updated contact information can be evidence of bad faith). See also Cigna Corp. v. JIT Consulting, AF-00174 (eResolution, June 6, 2000) (finding that failure to respond to cease-and-desist letters amounts to and "admission-by-silence" is evidence of both registration and use in bad faith).

Having established all three elements required by the ICANN Policy, it is the decision of this panel that Complainant is entitled to the requested relief and it is hereby granted.

Accordingly, it is ordered that the domain name <epsondirect.com> be transferred from Respondent to Complainant.

Honorable Carolyn Marks Johnson, Panelist