Epsonchipresetters.com

The timeline behind epsonchipresetters.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Seiko Epson Corporation and Epson America Inc. v. Jacob Aboud Claim Number: FA0710001092824 PARTIES Complainant is Seiko Epson Corporation and Epson America Inc. (collectively “Complainant”), represented by R. Parrish Freeman, of Workman Nydegger, 1000 Eagle Gate Tower, 60 East South Temple, Salt Lake City, UT 84111. Respondent is Jacob Aboud (“Respondent”), 3 Clifton Ave., Waterbury, CT 06710, USA. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <epsonchipresetters.com>, registered with Godaddy.com. PANEL The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding. Honorable Paul A. Dorf (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on October 11, 2007; the National Arbitration Forum received a hard copy of the Complaint on October 12, 2007. On October 11, 2007, Godaddy.com confirmed by e-mail to the National Arbitration Forum that the <epsonchipresetters.com> domain name is registered with Godaddy.com and that the Respondent is the current registrant of the name. Godaddy.com has verified that Respondent is bound by the Godaddy.com 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 October 17, 2007, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of November 6, 2007 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@epsonchipresetters.com by e-mail. A timely Response was received and determined to be complete on November 5, 2007. On November 13, 2007, Complainant submitted a timely Additional Submission that was determined to be complete. On November 19, 2007, Respondent submitted a timely Additional Submission that was determined to be complete. On November 15, 2007, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant Complainant contends that the <epsonchipresetters.com> domain name is confusingly similar to Complainant’s mark; that Respondent does not have any rights or legitimate interests in the <epsonchipresetters.com> domain name; and that Respondent registered and used the <epsonchipresetters.com> domain name in bad faith. B. Respondent Respondent contends that the domain name at issue is not identical and/or confusingly similar to Complainant’s mark; that Respondent has rights and legitimate interests in the domain name at issue; and that the domain name at issue was not registered in bad faith. C. Additional Submissions A. Complainant In its Additional Submission, Complainant restates and reinforces the contentions set forth in the original Complaint. B. Respondent Respondent reiterates its position as stated in its Response. FINDINGS Complainants are a multinational manufacturer of high technology products, including printers and supplies, including ink cartridges. Complainants registered the EPSON mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980). Respondent has not provided any evidence of its business operations. DISCUSSION Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.” 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. Identical and/or Confusingly Similar Complainant has established its rights in the EPSON mark pursuant to Policy ¶ 4(a)(i) through registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,134,004 issued April 29, 1980). Complainant has submitted evidence sufficient to establish rights in the EPSON mark for purposes of Policy ¶ 4(a)(i). See U.S. Office of Pers. Mgmt. v. MS Tech. Inc., FA 198898 (Nat. Arb. Forum Dec. 9, 2003) (“[O]nce the USPTO has made a determination that a mark is registrable, by so issuing a registration, as indeed was the case here, an ICANN panel is not empowered to nor should it disturb that determination.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). The domain name at issue, <epsonchipresetters.com>, is confusingly similar to Complainant’s EPSON mark as it contains Complainant’s EPSON mark in its entirety and adds the generic terms “chips” and “resetters.” The addition of generic terms and the generic top-level domain “.com” is an insufficient means of distinguishing a disputed domain name from an established mark pursuant to Policy ¶ 4(a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar). Rights or Legitimate Interests It appears from the evidence presented that Respondent is using the <epsonchipresetters.com> domain name to operate a website featuring links to other various commercial websites, some of which offer products in competition with those offered by Complainant. This “click-through” use of the domain name at issue would not be construed as a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. Ali Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name as the respondent is merely using the domain name to operate a website containing links to various competing commercial websites, which is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 5, 2007) (finding that were a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites is not a use in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). No evidence has been presented to indicate that Respondent is commonly known by the <epsonchipresetters.com> domain name or is licensed to register a domain name featuring the EPSON mark. Respondent has failed to sufficiently establish that it is commonly known by the <epsonchipresetters.com> domain name and as a result, has failed to establish rights or legitimate interests under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name). Registration and Use in Bad Faith A review of the evidence presented reveals that Respondent is using the domain name at issue to operate a website that provides links to various websites offering products that compete with Complainant’s business. Such use of the domain name at issue constitutes a disruption of Complainant’s business and is therefore evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites). Moreover, Respondent’s manner of use of the domain name at issue is likely to lead to confusion among Internet users as to Complainant’s sponsorship of or affiliation with the resulting website. This is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Nat. Arb. Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain). DECISION Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED. Accordingly, it is Ordered that the <epsonchipresetters.com> domain name be TRANSFERRED from Respondent to Complainant. Honorable Paul A. Dorf (Ret.), Panelist Dated: December 3, 2007 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.