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EPSON Europe BV v. M31 Internet Palma, S.L. [2005] GENDND 1804 (7 October 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

EPSON Europe BV v. M31 Internet Palma, S.L.

Case No. D2005-0604

1. The Parties

The Complainant is EPSON Europe BV, Amsterdam, Netherlands, represented by Demys Limited, Edinburgh, United Kingdom of Great Britain and Northern Ireland.

The Respondent is M31 Internet Palma, S.L., Palma de Mallorca, Baleares, Spain.

2. The Domain Name and Registrar

The disputed domain name <proyectoresepson.com> is registered with Arsys Internet, S.L. dba NICLINE.COM.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 10, 2005. On June 10, 2005, the Center transmitted by email to Arsys Internet, S.L. dba nicline.com a request for registrar verification in connection with the domain name at issue. On June 13, 2005, Arsys Internet, S.L. dba nicline.com 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 and technical contact. In response to a notification by the Center that the Complaint was administratively deficient, the Complainant filed an amendment to the Complaint on June 17, 2005. The Center verified that the Complaint, together with the amendment to 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 June 23, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 13, 2005. An e-mail response was filed with the Center on June 23 and June 27, 2005.

The Center appointed Kiyoshi I. Tsuru as the sole panelist in this matter on August 10, 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.

3.1 Language

According to paragraph 11(a) of the Rules, the language of the administrative proceeding shall be the language of the Registration Agreement. The Registration Agreement of the Registrar, i.e. Arsys Internet, S.L. dba nicline.com. is currently posted both in Spanish and English. Neither Complainant nor Respondent have made it clear to this Panel whether the Registration Agreement executed between Respondent and the Registrar was written in English or Spanish.

Complainant is based in the Netherlands. Respondent is based in Spain. Complainant filed its Complaint in Spanish. Respondent has responded in English and Spanish.

The circumstances of the case indicate to this Panel that both Complainant and Respondent seem comfortable communicating in English. Complainant’s Spanish Complaint seems to be a Spanish translation of a Complaint originally written in English by Complainant’s authorized representative, Demys Limited (who is in turn based in the United Kingdom). Respondent’s Response was submitted by a Mrs. Doherty.

The Center initiated this proceeding in Spanish. Taking into account that the parties are fluent in English, the Panel determines that said proceeding should continue in English. Considering that the Panel can communicate in both Spanish and English, and in order not to impose unnecessary burdens upon the parties, the Panel will translate the Spanish documents into English.

4. Factual Background

Complainant is the holder of the following trademark registrations:

TM Reg. No.	Jurisdiction	Trademark	Registration date	Goods covered
M 1087745	Spain	EPSON	July 1, 1989	09 – video projectors, etc.
004147229	European Union	EPSON	November 29, 2004	02 – toner for computer printers 09 - apparatus for recording, transmitting or reproducing sounds or images 16 – ink tapes, etc.

The disputed domain name <proyectoresepson.com> was registered on June 2, 2004.

5. Parties’ Contentions

A. Complainant

Through its subsidiary Epson Europe BV, which is the Complainant in 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 a wide range of information-related equipment, such as equipment related to information, electronic devices, precision products and other products.

A.1 Identical or Confusingly Similar

Complainant invests considerable amounts of money every year in advertising and marketing the trademark EPSON, which has resulted in a wide recognition of the brand among European peripherals consumers.

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.

EPSON is a widely renowned term; it forms the dominant, most distinctive element of the disputed domain name.

The word “proyectores” added to the trademark EPSON is not dominant; it is generic and descriptive.

Said word “proyectores” is descriptive of the products manufactured and sold by Complainant, thus clearly placing the focus on the EPSON element of the disputed domain name.

The trademark EPSON is registered in a series of jurisdictions in International class 09, which specifically relates to devices for recording, transmitting or reproducing sound or images. Therefore, the addition of the term “proyetcores” to the mark EPSON in the disputed domain name adds to and increases the confusing similarity existing between the disputed domain name and Complainant’s trademark.

If the disputed domain name did not include the trademark EPSON, its significance and importance would have been completely different in the sense that it would not specifically relate to Complainant or its products (and cites Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Inja, Kil, WIPO Case No. D2000-1409.

A.2. Respondent’s lack of rights or legitimate interests in respect of the domain name

Even if Respondent uses the disputed domain name to sell Complainant’s products, said use does not grant Respondent rights or legitimate interests to use a domain name that contains Complainant’s trademark (and cites Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903.)

In addition to advertising Complainant’s products, Respondent’s Web site also features the products of Complainant’s competitors. Complainant states that Respondent is using the fame of the trademark EPSON to attract Internet users and to increase its sales of projectors, including Complainant’s projectors, together with the rest of the products and services that it offers (and cites Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.)

A.3 Bad faith registration and use

Respondent did not include any disclaimer in its Web site, or any other text stating that Respondent simply resells Complainant’s and other manufacturers’ products (and cites again Oki Data –supra).

Respondent’s use of the disputed domain name in connection with a commercial site cannot be considered as good faith use, because said domain name includes Complainant’s trademark as its dominant element (and cites Canon Kabushiki Kaisha v. Price-less Inkjet Cartridge Company, WIPO Case No. D2000-0878. Complainant also cites Savin Corporation v. Cal Toner c/o Domain Manager, National Arbitration Forum (NAF) Case No. 230934.

Respondent has not been commonly known under the trademark EPSON. Respondent is not a licensee of Complainant and has not been granted permission or consent from Complainant to use Complainant’s registered trademarks. Respondent is not commonly known as EPSON and does not own trademarks that incorporate the EPSON trademark.

This is more evident from the fact that Respondent does business in commerce under the name “M31 Internet Palma, S.L”; moreover, the disputed domain name is registered to an “M31 Internet Palma, S.L.”

Respondent has registered <proyectoresnec.com>, <proyectoresmitsubishi.com> and <proyectoreshitachi.com>. This constitutes a pattern of conduct consisting of registering a domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name (and cites Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649.)

Respondent is not an official distributor of Complainant. There is no commercial connection between Complainant and Respondent. Nevertheless, Respondent’s use of the trademark EPSON within the disputed domain name creates the false impression that there exists, in fact, a commercial relationship between the parties.

Complainant asserts that the disputed domain name was designed to attract Internet users to Respondent’s Web site where Respondent sold Complainant’s and other manufacturers’ products, and that it was clearly used for commercial purposes.

Respondent’s use of the disputed domain name cannot be catalogued as fair use because Respondent intended to attract, in bad faith and for commercial gain, Internet users to its Web site, and cites Savin Corporation v. Cal Toner c/o Domain Manager (supra).

Respondent is disrupting Complainant’s business. Respondent’s site, to which the disputed domain name resolves, sells printers and projectors from a number of different manufacturers. Respondent’s Web site publicizes the products of Mitsubishi, Philips, HP, Sanyo, Toshiba and others –all of which are Complainant’s competitors (and cites Hewlett-Packard Company v. NA, NAF Case No. FA154141).

B. Respondent

Respondent did not submit a formal Response in accordance with the Rules, paragraph 5. However, Respondent submitted two e-mails, which this Panel will take into consideration in deciding the present case:

Respondent’s e-mail dated June 23, 2005;

“This morning we received an e*mail notifying us of the demand against us by EPSON. An email was sent inmediatly responding to your email.

I will include the emails we, M31 INTERNET PALMA S.L. sent to ARSYS, June the 13, 2.005, requesting that the domain proyectoresepson.com be unregistered.

I personally do not understand why we are being bombarded with: email, register mail and fax, when we are not as of June 13 the registrant of proyectoresepson.com, as requested by your company and Demys, acting on behalf of Epson.

If you could kindly respond with a “normal” email to the emails I have sent, perhaps this misunderstanding could be solved, I would also appreciate is you could acknowledge the emails I have sent to your company this morning and this afternoon.

As far as M31 INTERNET PALMA S.L. is concerned, proyectoresepson.com no longer under our name, we are no longer the registrant. If it continues to be in the data base of WHOIS/ARSYS it is not our problem, for as I said, we notified ARSYS by email that we wanted that domain name to be unregistered by our company.

Miss Smith, I will be waiting for a response from you.

Kind Regards

[Mrs.] Doherty

M31 INTERNET PALMA S.L.

[respondent’s e-mail address]”

Respondent’s e-mail dated June 27, 2005

“Mrs. Smith:

As far as we are concerned, by sending the last emails with a copy of our request to ARSYS to unregister the domain name proyectoresepson.com, we have clearly demonstrated that we are no longer the registrant of that domain, which means that we do not want to continue with the dispute over the domain.

WE REQUEST THAT THE DISPUTE OVER THE DOMAIN PROYECTORESEPSON.COM BE SUSPENDED

We do not understand legal terminology, but what is very clear to us, is that we have stated and demonstrated that we do not want to continue with the dispute, but you continue to send documents as if you had not received our numerous emails requesting this to finish. We feel you are harrasing us and in any language, the word harrasment is clearly understood, no need to be a lawyer.

To conclude: PROYECTORESEPSON.COM does not belong to M31 INTERNET PALMA S.L. as of June 13, 2005, therefore, the time limit given to suspend the procedure cannot be taken into consideration. Your last notification is dated June 23* 10 days after our notification to ARSYS. The second notification was dated June 14, 1 day after our notification.

Kind regards

[Mrs.] Doherty”

6. Discussion and Findings

In accordance with the Policy, Paragraph 4(a), the Complainant must prove that:

“(i) the domain name in question 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.”

In the administrative proceeding, the Complainant must prove that each three of these elements are present.

A. Identical or Confusingly Similar

Complainant has submitted evidence showing that it holds exclusive rights to the trademark EPSON in Spain and the European Union. The trademark EPSON is well publicized.

The disputed domain name <proyectoresepson.com> entirely incorporates Complainant’s trademark EPSON. The mere addition of the generic term “proyectores” does not per se render the said disputed domain name distinctive, when compared to such trademark. See, mutatis mutandis, Quixtar Investments, Inc. v. Scott A. Smithberger and Quixtar-IBO, WIPO Case No. D2000-0138; GA Modefine S.A. v. Mark O’Flynn, WIPO Case No. D2000-1424. See also PepsiCo, Inc. v. Diabetes Home Care, Inc. and DHC Services, WIPO Case No. D2001-0174; Sony Kabushiki Kaisha (also trading as Sony Corporation) v. Kil Inja, WIPO Case No. D2000-1409 and America Online, Inc. v. Chris Hoffman, WIPO Case No. D2001-1184.

This Panel agrees with the Sony panel in that, mutatis mtandis:

“Each of the nineteen disputed domain names contains the whole of the complainant’s registered trademark SONY. Neither the addition of an ordinary descriptive word (either as prefix or suffix) nor the suffix “.com” detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY, instantly recognizable as one of the most famous trademarks in the world. A reader of any of the disputed domain names would be confused into thinking that it was associated with the complainant.”

To carry into effect the similarity analysis, we must not take into account the generic top-level domain (gTLD) “.com,” because such gTLD has no legal significance. See Ahmanson Land Company v. Vince Curtis, WIPO Case No. D2000-0859, (citing in turn Monty and Pat Roberts, Inc. v. J. Bartell, WIPO Case No. D2000-0300, J.P. Morgan & Co., Incorporated and Morgan Guaranty Trust Company of New York v. Resource Marketing, WIPO Case No. D2000-0035; see also Pomellato S.p.A. v. Richard Tonetti, WIPO Case No. D2000-0493, Rollerblade, Inc. v. Chris McCrady, WIPO Case No. D2000-0429, and Sony Kabushiki Kaisha v. Inja, Kil, supra).

In light of the above, the Panel concludes that the disputed domain name <proyectoresepson.com> is confusingly similar to the registered trademark EPSON to which Complainant holds exclusive rights. The first requirement of the Policy has therefore been met.

B. Rights or Legitimate Interests.

The following are examples of circumstances where Respondent may have rights or legitimate interests in a contested domain name:

“(i) before any notice to you of the dispute, your 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; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you 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.” (Policy, paragraph 4(c).

This Panel does not believe that before any notice of this dispute Respondent was using the disputed domain name in connection with a bona fide offering of goods or services. Complainant has submitted evidence showing that Respondent seems to be in the business of registering domain names that incorporate well-publicized trademarks belonging to other parties. For example, the record shows that Respondent has registered <proyectoresnec.com>, <proyectoresmitsubishi.com> and <proyectoreshitachi.com>. Taking this pattern of conduct into account, Respondent’s registration of <proyectoresepson.com> cannot constitute a bona fide offering of goods or services.

Respondent has not been commonly known as <proyectoresepson.com>. Respondent identifies itself as M31 Internet Palma S.L. (see Respondent’s e-mails, supra).

Complainant argued that Respondent is not a licensee of Complainant and has not been granted permission or consent from Complainant to use Complainant’s registered trademarks. Respondent did not contend this affirmation.

Respondent can certainly make a nominative fair use of the trademark EPSON when selling EPSON projectors. However, the Panel finds that it does not constitute nominative fair use to make Respondent’s Web site resolve to a domain name that does not reflect the name of Respondent, i.e. M31 internet Palma S.L., but the trademark over which Complainant holds exclusive rights, and the name with which Complainant has been commonly known in the market. On the other hand, Respondent can mention that it sells EPSON projectors, but the Panel finds that it is not legitimate to do so under a domain name that fully incorporates Complainant’s trademark. The Panel also notes that the Respondent has registered other domain names that fully incorporate other well-publicized brands.

The following quote from Canon Kabushiki Kaisha v. Price-Less Inkjet Cartridge Company, WIPO Case No. D2000-0878 is applicable to the present case, mutatis mutandis:

“Accordingly, although the offering of replacement inkjet cartridges is a lawful and legitimate business, the use of these three disputed domain names as the initial contact points and web page banners deprives that business of the character of being bona fide, within the meaning of paragraph 4(c)(i) of the Policy.”

Respondent is using the disputed domain name with intent for commercial gain to divert consumers to the site to which the disputed domain name resolves. It is likely that Internet users looking for Complainant will be deceived, mislead or confused when presented with Respondent’s disputed domain name. It is also likely that said Internet users believe that Respondent’s domain name is associated with, originated at or sponsored by Complainant. See Philip Morris Incorporated v. Alex Tsypkin, WIPO Case No. D2002-0946.

Therefore, this Panel finds no rights or legitimate interests on the side of Respondent, regarding the disputed domain name. The second element of the Policy has been fulfilled.

C. Registered and Used in Bad Faith

According to paragraph 4(b) of the Policy, the following circumstances shall be evidence of registration and use in bad faith:

“(i) circumstances indicating that you have registered or you have 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 the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have 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 you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your website or location or of a product or service on your website or location.”

The record shows that Respondent has engaged in a pattern of registering domain names to prevent the owner of the respective trademark from reflecting the mark in a corresponding domain name. In addition to <proyectoresepson.com>, Respondent has registered <proyectoresnec.com>, <proyectoresmitsubishi.com> and <proyectoreshitachi.com>. This constitutes a pattern of bad faith on the side of Respondent. See Dr. Ing. h.c. F. Porsche AG v. Limex, LLC, WIPO Case No. D2003-0649.

Complainant has argued that Respondent’s Web site to which the disputed domain name resolves sells printers and projectors from a number of different manufacturers. Respondent’s Web site publicizes the products of Mitsubishi, Philips, HP, Sanyo, Toshiba and others –all of which are Complainant’s competitors. This affirmation (and the evidence relating thereto remains uncontested). The Panel would like to cite Hewlett-Packard Company v. NA, NAF Case No. FA154141, and apply it mutatis mutandis to the present case:

“Uncontested evidence before the Panel indicates that Respondent’s <1-hpprintercartridges.com> domain name is used in connection with a website that sells cartridges and refill kits for printers manufactured by Complainant. However, although the printers are manufactured by Complainant, many of the cartridges advertised on Respondent’s website are marketed by Complainant’s competitors. Using a domain name that incorporates Complainant’s established HP mark to sell similar competing goods, goods that the mark specifically denotes, fails to establish rights in the domain name under Policy ¶¶ 4(c)(i) or (iii).”

The evidence filed with regard to this proceeding shows that Respondent has intended to attract, for commercial gain, Internet users to Respondent’s Web site, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of said site.

Respondent has chosen to register and use a domain name that fully incorporates Complainant’s trademark and link it to a Web site that displays no disclaimer as to the source, sponsorship, affiliation, or Complainant’s endorsement of said site (or absence thereof). It seems that Respondent is trying to mislead Internet users who find Respondent’s site through the disputed domain name, by creating a likelihood of confusion with Complainant and its mark.

This Panel believes that the following legal reasoning from a previous panel is applicable to the case at hand, mutatis mutanids:

“The similarities between “Guerlain” and the Domain Name [<buyguerlain.com>] cannot result from a mere coincidence. While Respondent could have chosen a million of other names for his company and his online store, he precisely chose a domain name incorporating Complainant’s name so as to be identical or at least extremely confusingly similar to Complainant’s trademark. By knowingly choosing a domain name consisting of Complainant’s trademark preceded by the verb “to buy”, Respondent intentionally created a situation which is at odds with the legal rights and obligations of the parties.” Guerlain S.A. v. HI Investments, WIPO Case No. D2000-0494.

The following discussion is also applicable to our case, mutatis mutandis:

“Respondent registered and used the disputed domain name <savintoner.com> in bad faith pursuant to Policy paragraph 4(b)(iv) because the name is confusingly similar to Complainant’s SAVIN mark and Respondent is using the name to intentionally divert potential customers of Complainant to Respondent’s website for commercial gain.” Savin Corporation v. Cal Toner c/o Domain Manager, NAF Case No. 230934.

Considering the above facts, this Panel finds that Complainant has met its burden under Paragraph 4(b)(iv) of the Policy.

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 <proyectoresepson.com>, be transferred to the Complainant.

Kiyoshi I. Tsuru
Sole Panelist

Dated: October 7, 2005