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Epson Europe BV v. Ink2U [2005] GENDND 1088 (13 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Epson Europe BV v. Ink2U

Case No. D2005-0467

1. The Parties

The Complainant is Epson Europe BV, of Amsterdam, The Netherlands (“the Complainant”), represented by Demys Limited, Edinburgh, United Kingdom of Great Britain and Northern Ireland.

The Respondent is Ink2U, of Somerset United Kingdom of Great Britain and Northern Ireland (“the Respondent”). The Respondent is not represented.

2. The Domain Name and Registrar

The disputed domain name <epson-cartridges.com> (the “Domain Name”) is registered with Tucows, Inc. of Toronto, Ontario, Canada (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 28, 2005. On April 29, 2005, the Center transmitted by email to Tucows a request for registrar verification in connection with the domain name at issue. On April 29, 2005, Tucows transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), 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 May 3, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was May 23, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on May 24, 2005.

The Center appointed Zoltán Takács as the Sole Panelist in this matter on May 30, 2005. 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 language of the proceeding was English that being the language of the registration agreement.

4. Factual Background

Through its subsidiary Epson Europe BV, which is the Complainant is this proceeding; Seiko Epson Corporation is a major manufacturer and supplier of computer peripherals in the European region, which sold over 45 million units of EPSON consumables across Europe in the financial year 2002/2003. The Complainant’s mother company, Seiko Epson Corporation is a globally recognized corporation, developing, manufacturing, selling, marketing and servicing of wide range of information-related equipment, such as computers and peripherals, including PC’s, printers, scanners and projectors.

Seiko Epson Corporation owns numerous trademark registrations for the EPSON mark throughout the world, including the UK Registration No. 2103114 “EPSON”, with priority of June 19, 1996, and the CTM Registration No. 4147229 “EPSON”, with priority of November 29, 2004. Both trademarks, among other goods protect ink cartridges and toner cartridges for printers.

The Complainant maintains an exclusive online presence, through which it sells consumables such as inkjet cartridges, printer paper and laser toner, in addition to a range of computer peripherals.

The EPSON brand received the “Brand of the Year 2002” and “Best Inkjet Brand 2002” awards in the PC Advisor Brand Awareness survey, which was conducted by the world’s largest IT publisher, IDG.

The Respondent is a UK-based limited liability company engaged in the sale of so-called “compatible” cartridges manufactured by third parties, in addition to remanufactured and original cartridges for a variety of inkjet printed brands.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the disputed domain name is confusingly similar to the EPSON trademark of Seiko Epson Corporation; the company for and on behalf the Complainant is acting.

The Complainant alleges that the Respondent has no rights or legitimate interests in respect of the domain name at issue, since it does not own any trade or service mark rights incorporating the EPSON mark, it has not been commonly known by the name Epson, nor it has made any legitimate non-commercial or fair use of the disputed domain name. The Complainant asserts that when put to the primary use, the Domain Name was a gateway page designed to attract web users to the Respondent’s principal website where it sold printer ink cartridges in competition with the Complainant. After the Complainant’s agents contacted the Respondent in December of 2004, the Respondent changed the Domain Name by forwarding it to a parking page which offered, and as at the date of submission of this Complaint (April 28, 2005) was offering the domain name at issue for sale for a sum of 10,000 pounds sterling. In addition, the parking page included links to third party websites, which earned the Respondent “pay-per-click” income when Internet users clicked the links. In the Complainant’s opinion, neither of the above uses falls into the legitimate interests concept of the Policy.

Finally, the Complainant contends that all uses the Respondent made of the Domain Name and its attempt to sell it for a sum in excess of out of pocket costs indicate that the Domain Name was registered and used in bad faith.

The Complainant requests that <epson-cartridges.com> be transferred to the Complainant in accordance with paragraph 4(b)(i) of the Policy.

B. Respondent

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

6. Discussion and Findings

Procedural issues

In March 2003, Seiko Epson Corporation granted a Power of Attorney in favor of the Complainant, its wholly owned subsidiary and authorized distributor of Epson products in many countries of the world, to – among others – take legal actions or administrative proceedings in order to protect its interests and property. The Panel found that the Complainant properly derived the right to bring this Complaint for and on behalf of Seiko Epson Corporation.

Substantive issues

Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements in order to succeed with the Complaint:

(i) the 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 domain name, and

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

A. Identical or Confusingly Similar

The Complainant has established rights in the EPSON mark through a number of registrations, including but not limited to the UK and CTM registrations in favor of its mother corporation Seiko Epson Corporation upon whose mandate the Complainant acts in this proceeding. It is reasonable for the Panel to presume that the EPSON mark is inherently distinctive since no circumstance refuting this has been brought to the Panel’s attention by the Respondent.

It is obvious that the <epson-cartridges.com> domain name contains the EPSON trademark in its entirety and in addition the generic term “cartridges”, which is not sufficient to distinguish the Domain Name from the EPSON trademark. The <epson-cartridges.com> combines the EPSON trademark with a descriptive term (“cartridges”), which has obvious relationship to the business of both the Complainant and its mother company Seiko Epson Corporation, owner of the EPSON trademark.

The Panel is convinced that the Complainant has proved that the disputed domain name is confusingly similar to the EPSON mark.

B. Rights or Legitimate Interests

Since the Respondent did not file any response, there is no explanation as to why it chose to register the Domain Name. Having failed to respond to the Complaint, the Respondent has passed the opportunity to show that it has rights or legitimate interests in the Domain Name. The Respondent has not been commonly known by the disputed domain name, and it is also clear that it has never been authorized to use the EPSON mark in any way.

Under paragraph 4(c) of the Policy, Respondents may demonstrate their rights and interests to the disputed domain name by showing any of the following circumstances, in particular but without limitation:

(i) their use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services before any notice to them of the dispute, or

(ii) they (as individuals, businesses, or other organizations) have been commonly known by the domain name, even if they have acquired no trademark or service mark rights, or

(iii) they are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Respondent’s use does not qualify as bona fide offering of goods and services. When the Domain Name came to the Complainant’s attention, it was used as a gateway page to the Respondent’s principal trading website. The Respondent utilized the Domain Name in order to sell goods in direct competition with the Complainant, and this Panel fully agrees with findings of previous panels that such use deprives the user of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy.

The panel finds that the Respondent has no rights or legitimate interests in the <epson-cartridges.com> domain name and that the Complainant has proven this element.

C. Registered and Used in Bad Faith

The Panel finds that the <epson-cartridges.com> domain name has been registered and used in bad faith.

Paragraph 4(b) of the Policy states that any of 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 Respondent has registered or 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 trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name, or

(ii) the Respondent 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 Respondent has engaged in a patter of such conduct, or

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

(iv) by using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-line 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 Panel is convinced that the Respondent, by appropriating the EPSON trademark to sell competing goods at its principal trading website has created a likelihood of confusion for commercial gain, which is evidence of bad faith registration and use pursuant to paragraph 4(b)(iv).

The Complainant has proven that the Respondent registered and used other domain names incorporating third party trademarks, such as the HP mark in its <hp-cartridges.com> domain name. In the Panel’s view this is evidence that the Respondent’s such conduct is within the meaning of paragraph 4(b)(ii) of the Policy.

Although as far as this Panel is concerned these indications clearly make this element of the Policy proven, the Panel took notice and considered some other circumstances in relation to the Respondent’s use of the domain name at issue. When the Complainant came across the primary use of the Domain Name and through its agent sent a notice on infringement, the Respondent forwarded the Domain Name to a parking page which at the time of submission of the Complaint was offering the <epson-cartridges.com> domain name for sale for a sum of 10,000 pounds sterling, an amount clearly in excess of the Respondent’s out of pocket costs. This use, when considered along with the whole circumstances of the case the Panel takes as an addition for the bad faith registration and use finding.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <epson-cartridges.com> be transferred to the Complainant.

Zoltán Takács
Sole Panelist

Dated: June 13, 2005