Generic Top Level Domain Name (gTLD) Decisions

Complainant is Judith S. Bain Seiko Epson Corporation, Long Beach, CA, USA ("Complainant") represented by Erin Moore, of Pillsubry Winthrop LLP. Respondent is Price-less Inkjet Cartridge Co., Port Charlotte, FL, USA ("Respondent").

The domain names at issue are "epsonink.net", "epsoninkjet.net", "epsoninkjet.com", epsoninkjets.com" registered with Network Solutions, Inc.

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

John J. Upchurch as Panelist.

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on March 15, 2001; the Forum received a hard copy of the Complaint on March 16, 2001.

On March 19, 2001, Network Solutions, Inc. confirmed by e-mail to the Forum that the domain names "epsonink.net", "epsoninkjet.net", "epsoninkjet.com", epsoninkjets.com" are registered with Network Solutions, Inc. and that Respondent is the current registrant of the name. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, Inc. 4.0 registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the "Policy").

On March 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 9, 2001 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@epsonink.net, postmaster@epsoninkjet.net, postmaster@epsoninkjet.com, postmaster@epsoninkjets.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 April 13, 2001, pursuant to Complainant’s request to have the dispute decided by a one member Panel, the Forum appointed John J. Upchurch 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 Rules for Uniform Domain Name Dispute Resolution Policy (the "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 Respondent.

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

B. Respondent

Respondent has not submitted a response in this matter.

Complainant, Seiko Epson Corporation, is a world leader in the manufacture, design, production and distribution of high technology products, including printers, scanners, digital cameras, and video projectors. Complainant owns the registered mark EPSON, which it has used, in the United States and around the world for more than twenty-five (25) years. To date, Complainant has invested millions of dollars in developing, launching, and maintaining its operations. Accordingly, Complainant’s mark has achieved strong consumer product recognition, especially in association with its inkjet printers.

Respondent, Price-less Inkjet Cartridge Co., uses three of the disputed domain names (epsonink.net, epsoninkjet.com, epsoninkjets.com) to promote the sale of Complainant’s printers as well as a wide variety of consumable supplies of other famous brands. The fourth disputed domain name is not currently an active web site. Respondent is not licensed or otherwised permitted to use Complainant’s mark, or to register any domain names which incorporate the Complainant’s mark. On January 20 and 21, 2000, Complainant sent two Cease-and-Desist letters to Respondent, explaining that Respondent’s domain name registrations constitute trademark infringement, unfair competition, trademark dilution, and domain name piracy. On December 22, 2000, Complainant sent a follow-up Cease-and-Desist letter to Respondent via overnight mail and e-mail, to no avail. In addition to the domain names at issue, Respondent has registered other infringing domain names.

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."

In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of the Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules.

Paragraph 4(a) of the 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.

Complainant’s rights are evidenced by it registered mark, EPSON.

Respondent’s domain names, (epsonink.net, epsoninkjet.net, epsoninkjet.com, epsoninkjets.com), are confusingly similar to Complainant’s well-established mark because the domain names are primarily comprised of Complainant’s mark. See NIIT Ltd. v. Parthasarathy Venkatram, D2000-0497 (WIPO Aug. 4, 2000) (finding that the "domain name ‘myniit.com,’ which incorporates the word NIIT as a prominent part thereof, is confusingly similar to the Complainant’s trade name and trademark NIIT").

Also, Respondent’s domain names are confusingly similar because the domain names are a combination of Complainant’s mark and a generic term that directly relates to Complainant’s business. See Space Imaging LLC v. Brownwell, AF-0298 (eResolution Sept. 22, 2000) (finding confusing similarity where the Respondent’s domain name combines the Complainant’s mark with a generic term that has an obvious relationship to the Complainant’s business); see also Treeforms, Inc. v. Cayne Indus. Sales Corp., FA 95856 (Nat. Arb. Forum Dec. 18, 2000) (finding that confusion would result when Internet users, intending to access Complainant’s web site, think that an affiliation of some sort exists between the Complainant and the Respondent, when in fact, no such relationship would exist).

The evidence supports the conclusion that although Respondent sells Complainant’s products, it is not commonly known by the disputed domain names, nor is Respondent licensed or authorized to use Complainant’s mark. See Ullfrotté AB v. Bollnas Imports, D2000-1176 (WIPO Oct. 23, 2000) (finding that although the Respondent legitimately sells goods originating from the Complainant, this does not give him the right to register and the use the mark as a domain name without the consent of the holder of the trademark); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where Respondent was not commonly known by the mark or never applied for a license or permission from Complainant to use the trademarked name).

Moreover, Respondent asserted no rights or legitimate interests in the disputed domain names, which entitles the Panel to conclude Respondent has no such rights or legitimate interests in the domain names at issue. See Canadian Imperial Bank of Commerce v. D3M Virtual Reality Inc. and D3M Domain Sales, AF-0336 (eResolution Sept. 23, 2000) (finding no rights or legitimate interest where no such right or interest is immediately apparent to the Panel and Respondent has not come forward to suggest any such right or interest that it may possess); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that "Respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the Domain Names").

Accordingly, the Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Clearly, Respondent registered the disputed domain names to intentionally attract Internet users to its web site, or other online locations, via a likelihood of confusion with Complainant’s famous mark. See Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the Respondent had engaged in bad faith use and registration by linking the domain name to a website that offers services similar to Complainant’s services, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s marks).

Further, Respondent was aware, or should have been aware of Complainant’s mark prior to registering the disputed domain names, which also constitutes bad faith. See Reuters Ltd. v. Teletrust IPR Ltd., D2000-0471 (WIPO Sept. 8, 2000) (finding that the Respondent demonstrated bad faith where the Respondent was aware of the Complainant’s famous mark when registering the domain name as well as aware of the deception and confusion that would inevitably follow if he used the domain names).

Finally, Respondent has engaged in a pattern of conduct by registering several infringing domain names. See Encyclopaedia Britannica Inc. v Shedon.com, D2000-0753 (Sept. 6, 2000) (finding bad faith where the Respondent engaged in the practice of registering domain names containing the trademarks of others); see also Armstrong Holdings, Inc. v. JAZ Associates, FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the Respondent has registered numerous domain names that infringe upon the Complainant’s marks and in addition, the Respondent has registered domain names that infringe upon other entities’ marks).

Consequently, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

Having established all three elements required under ICANN Policy, the Panel concludes that the requested relief shall be and is hereby granted.

Thus, it is Ordered that the domain names, epsonink.net, epsoninkjet.net, epsoninkjet.com and epsoninkjets.com, be transferred from Respondent to Complainant.