Nominet UK Dispute Resolution Service
DRS Number 2962
EPSON Europe BV for and on behalf of Seiko Epson Corporation
v
Elogicom Ltd
Decision of Independent Expert
Complainant: EPSON Europe BV for and on behalf of Seiko Epson Corporation
Country: NL
Respondent: Elogicom Ltd
Country: GB
Epson-ink.co.uk
The Complaint was lodged with Nominet on 13 September 2005. Nominet validated the Complaint and notified the Respondent of the relevant Complaint on 15 September 2005 and informed the Respondent that it had 15 days within which to lodge a Response.
No response was received. No mediation having been possible, on 11 October 2005 the dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee for a decision of an Expert pursuant to paragraph 6 of the Nominet UK Dispute Resolution Service Policy ("the Policy").
David Flint, the undersigned, ("the Expert") confirmed to Nominet that he knew of no reason why he could not properly accept the invitation to act as expert in this case and further confirmed that he knew of no matters which ought to be drawn to the attention of the parties, which might appear to call into question his independence and/or impartiality.
None
The Complainant is a global corporation involved in the development, manufacture, sales, marketing and servicing of a wide range of products including computers, printers and other electronic devices and precision products. The Respondent sells ink cartridges for Epson and other computer printers from its website at www.epson-ink.co.uk.
Complainant
1. On or about 1 March 2003 Seiko EPSON Corporation ("SEC") granted a Power of Attorney in favour of EPSON Europe BV ("EPSON Europe") in terms of which the latter is "authorised and instructed by SEC to take legal action or request administrative action in the Territory to protect the interests and property of SEC."
2. EPSON Europe derives its right to bring the present complaint for and on behalf of, and in the name of, SEC through the said Power of Attorney.
3. The Complainant asserts that it has Rights in respect of the name or mark EPSON; that in the hands of the Respondent the Domain Name is an Abusive Registration and requests that the Domain Name should be transferred to the Complainant. Before submitting this Complaint the Complainant's agents wrote to the Respondent at the address given on the WHOIS in an attempt to settle this matter amicably. However, no response was received and the present Complaint was consequently brought.
4. SEC is a global corporation concerned with the development, manufacturing, sales, marketing and servicing of information-related equipment (computers and peripherals, including PCs, printers, scanners and projectors), electronic devices and precision products (watches, plastic corrective lenses, and factory automation equipment).
5. SEC maintains an extensive portfolio of registered trade marks relating to the EPSON mark in a large number of territories throughout the world.
6. The Complaint contends that it has extremely strong Rights in the EPSON mark and submits that the Domain Name is similar to such marks for the following reasons:
- EPSON is an extremely well-known 'made-up' term and forms the first, dominant, most significant and distinctive element of the Domain Name;
- the additional word "ink" is descriptive of the type of products manufactured and sold by the Complainant.
- had the Domain Name not included the EPSON mark its meaning and significance would be entirely different in that it would not relate specifically to the Complainant or its products.
Respondent is not permitted to use the EPSON mark.
At no point during the Domain Name's registration has the Respondent been commonly known by the trade mark EPSON. The Respondent is not a licensee of the Complainant and has not received any permission or consent from the Complainant to use the Complainant's trade marks. The Respondent is not named or commonly known as EPSON and owns no trade marks or service marks incorporating the EPSON mark and product names. Furthermore the Respondent is not an authorised distributor of the Complainant.
The Domain Names are likely to confuse Internet users
It is likely that Internet users who type in the Domain Name, or who find it through a search engine, will be looking for a web site operated by the Complainant rather than the Respondent. The Domain Name is extremely likely to confuse Internet users trying to find EPSON products as a result of the incorporation of the EPSON mark. The use of the EPSON mark also makes a false representation, in favour of the Respondent's business, of a commercial connection with or endorsement by the Complainant, causing further confusion in the eyes of Internet users.
Such confusion, and apparent endorsement of either the Respondent's business or products, is likely to be of considerable benefit to the Respondent in that it will attract large numbers of users to the Respondent's web site and increase sales of the products offered there, to the unfair detriment of the Complainant, its authorised distributors and other legitimate resellers of the Complainant's products. The Respondent's use clearly employs the fame of the EPSON mark to mislead users into visiting its website instead of the Complainant's.
Respondent
No response was received from the Respondent.
General
To succeed in this Complaint the Complainant has to prove to the Expert pursuant to paragraph 2 of the Policy on the balance of probabilities, first, that it has rights (as defined in paragraph 1 of the Policy) in respect of a name or mark identical or similar to the Domain Name and, secondly, that the Domain Name, in the hands of the Respondent, is an Abusive Registration (as defined in paragraph 1 of the Policy).
Complainant's Rights
In this case the first limb of that task is straightforward. The Complainant is the proprietor of several UK and European Community registered trade marks in respect of the word EPSON registered at various times. The Expert is also satisfied that it has very substantial goodwill and reputation in the name as a result of its trading activities over many years. The question that arises, however, is whether the name EPSON is similar to the Domain Name (ignoring the suffix ".co.uk"), namely epson-ink. The Expert accepts the submission of the Complainant that the word "ink" is a descriptive term with little significance, particularly in contrast with the very strong consumer recognition of the name EPSON. In those circumstances the Expert is satisfied that "EPSON" is similar to "epson-ink" and finds that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.
Abusive Registration
This leaves the second limb. Is the Domain Name, in the hands of the Respondent, an Abusive Registration? Paragraph 1 of the Policy defines "Abusive Registration" as:-
"a Domain Name which either:
i. was registered or otherwise acquired in a manner, which at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; OR
ii. has been used in a manner, which took unfair advantage of or was unfairly detrimental to the Complainant's Rights."
A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration is set out in paragraph 3a of the Policy. There being no suggestion that the Respondent has engaged in a pattern of making Abusive Registrations and there being no suggestion that the Respondent has given to Nominet false contact details, the only potentially relevant 'factors' in paragraph 3 are to be found in subparagraphs i and ii, which read as follows:
i Circumstances indicating that the Respondent has registered or otherwise acquired the Domain Name primarily:
A. for the purposes of selling, renting or otherwise transferring the Domain Name to the Complainant or to a competitor of the Complainant, for valuable consideration in excess of the Respondent's documented out-of-pocket costs directly associated with acquiring or using the Domain Name;
B. as a blocking registration against a name or mark in which the Complainant has Rights; or
C. for the purpose of unfairly disrupting the business of the Complainant;
ii Circumstances indicating that the Respondent is using the Domain Name in a way which has confused people or businesses into believing that the Domain Name is registered to, operated or authorised by, or otherwise connected with the Complainant."
The Expert interprets "as" in sub-paragraph i. B as being synonymous with "for the purpose of". Were it to be interpreted otherwise all domain name registrations would inevitably constitute "blocking registrations" for any later arrival wishing to use the name in question.
In this case, the Expert considers that there is an inherent misrepresentation constituted by the Respondent's use of the Domain Name that is bound to confuse Internet users both as to what the Respondent is selling and as to the connection between the Respondent and the Complainant.
There is no evidence that the products being offered for sale by the Respondent on its website are genuine products obtained from the Complainant or with its authority as opposed to compatible ink cartridges.
The Expert considers that the use of the domain name epson-ink.co.uk could have the effect of confusing consumers into believing that there was some connection between the Complainant and the Respondent and that he is entitled to reach that view without their being any direct evidence of actual confusion. The Respondent is using the Domain Name with the EPSON element to draw visitors to its website in a manner that is not permissible.
Accordingly, the Expert finds that the Domain Name is an Abusive Registration within the definition of that term in paragraph 1 of the Policy on the basis that it was registered in a manner which, at the time when the registration took place, took unfair advantage of the Complainant's rights.
In light of the foregoing findings, namely that the Complainant has rights in respect of a name or mark which is identical to the Domain Name and that the Domain Name, in the hands of the Respondent, is an Abusive Registration, the Expert directs that the Domain Name epson-ink.co.uk be transferred to Seiko Epson Corporation.
David Flint
1 November 2005