1. PARTIES
Complainant: Epson Europe BV
Country: NL
Respondent: Cybercorp Enterprises
Country: GB
2. DOMAIN NAMES
cheap-epson-ink-cartridge.co.uk, cheap-epson-ink-cartridges.co.uk, epson-compatible-ink-cartridges.co.uk, epson-ink-ink.co.uk, epson-inkjet-cartridge.co.uk, epson-ink-jet-cartridge.co.uk, epson-inkjet-printer-cartridge.co.uk, epson-inkjet-printer-cartridges.co.uk, epson-print-cartridges.co.uk, epson-printer-cartridges.co.uk, epson-printer-ink.co.uk
epson-printer-ink-cartridge.co.uk, epson-printer-ink-cartridges.co.uk, epson-stylus-ink-cartridges.co.uk. These are collectively referred to as "the Domain Names".
3. PROCEDURAL BACKGROUND
3.1 On 10 October 2005 notice of this dispute was received by Nominet. The Complaint was received in full on 12 October 2005. No Response was received within the time permitted. Mediation did not resolve the dispute and on 16 November 2005 Ms Victoria McEvedy was appointed as an expert to provide a Decision pursuant to paragraph 6 of the Nominet UK Dispute Resolution Policy (the "Policy").3.2 Ms McEvedy (the "Expert") provided her decision on 12 December 2005. The Expert concluded that the Complainant had Rights in marks which are similar to the Domain Names; but did not consider that the Complainant had discharged the burden of proving that the Domain Names were acquired or were being used in a manner which took unfair advantage of or was unfairly detrimental to those Rights. She therefore decided that no action should be taken. The full text of the Expert's decision is available on Nominet's website.
3.3 The Complainant/Appellant (hereinafter the "Complainant") gave notice of intention to appeal to Nominet on 28 December 2005 and lodged a written appeal notice on 28 January 2006. Once again there was no response from the Respondent.
3.4 On 15 February 2006 Nominet appointed Mr Philip Roberts, Mr Ian Lowe and Mr Keith Gymer as an appeal panel (the "Panel") to determine the appeal. The case file was duly sent to each of them by Nominet following individual confirmation to Nominet that they knew of no reason why they could not properly accept the invitation to act in this case, and knew of no matters which ought to be drawn to the attention of the parties which might appear to call into question their independence and/or impartiality.
3.5 The deadline for submitting the Panel's decision was set by Nominet as 31 March 2006.
4. THE NATURE OF THIS APPEAL
Paragraph 10(a) of the Policy provides that "the appeal panel will consider appeals on the basis of a full review of the matter and may review procedural matters". It is now well settled that this requires the Panel to re-hear the dispute rather than perform a detailed review of the Expert's Decision – DRS 00389 Hanna-Barbera Productions, Inc v. Graeme Hay (scoobydoo.co.uk).
5. FORMAL PROCEDURAL ISSUES
There are no outstanding procedural issues to be addressed.
6. FACTUAL BACKGROUND
6.1 Facts
6.1.1 The Complainant is part of the Seiko EPSON group of companies. The group is well known for designing, manufacturing and producing a wide range of electronic goods. For present purposes it is sufficient to note that it has, for many years, sold inkjet printers and consumables therefor.6.1.2 Seiko EPSON commercialises its products over the internet through a large number of domain names incorporating the word 'epson' including epson.com, epson.co.uk, epson-europe.com and epson.com.au.
6.1.3 Seiko EPSON Kabushiki Kaisha, also known as Seiko EPSON Corporation, is registered proprietor of the following three trade marks:
• UK registration number 1516493 ('EPSON STYLUS') as of 20 January 1992 in Class 9 (printers, printout apparatus, memory units, data monitoring units and data editing units, etc.)
• Community trade mark registration number 004147229 ('EPSON') as of 29 November 2004 in Class 2 (toner for computer printers), Class 9 (computer peripheral devices, computer printers, print heads for printers, etc.) and Class 16 (inking ribbons, etc.).
6.1.3 The Panel has been provided with a signed copy of a Power of Attorney dating from March 2003 by which the Complainant is authorized by Seiko EPSON Corporation "to take legal action or request administrative action in the Territory to protect the interests and property" of that Corporation.6.1.4 According to the whois information with which the Panel has been provided, the Domain Names are registered in the name of 'Cybercorp Enterprises' of Newport, Isle of Wight. They were registered on the following dates:
Domain Name Date cheap-epson-ink-cartridge.co.uk 2 March 2003 cheap-epson-ink-cartridges.co.uk 2 March 2003 epson-compatible-ink-cartridges.co.uk 2 March 2003 epson-ink-ink.co.uk 2 March 2003 epson-inkjet-cartridge.co.uk 21 April 2001 epson-ink-jet-cartridge.co.uk 2 March 2003 epson-inkjet-printer-cartridge.co.uk 2 March 2003 epson-inkjet-printer-cartridges.co.uk 2 March 2003 epson-print-cartridges.co.uk 2 March 2003 epson-printer-cartridges.co.uk 2 March 2003 epson-printer-ink.co.uk 2 March 2003 epson-printer-ink-cartridge.co.uk 2 March 2003 epson-printer-ink-cartridges.co.uk 2 March 2003 epson-stylus-ink-cartridges.co.uk 2 March 2003 6.1.4 According to the whois information annexed to the Complaint, the following domain Names are also registered in the name of 'Cybercorp Enterprises':
Domain Name Date canon-inkjet-cartridge.co.uk 21 April 2001 hp-inkjet-cartridge.co.uk 21 April 2001 lexmark-inkjet-cartridge.co.uk 21 April 2001 6.1.5 According to the printouts with which we have been provided, the Domain Names are being used to point to the home page of Calibre Computing (also based in Newport, Isle of Wight). The site sells IT-related goods including ink cartridges, ink refills, laser toners, paper, media, labeling, cables and software packages.
6.1.6 Neither the Respondent nor Calibre Computing – if indeed they are separate entities – is an Epson authorised distributor. The site does appear to sell some Epson-branded products, but the majority of the stock comprises products competitive with the goods of the Complainant.
6.1.7 The Complainant's agents wrote to the Respondent on 13 July 2005, asking for an explanation as to why the Respondent had registered the Domain Names. The letter was sent recorded delivery but no response was received.
7. PARTIES' CONTENTIONS
7.1 The Complainant
7.1.2 That it has rights in the name or mark EPSON, on the basis of its trading activities and its trade mark registrations;
7.1.3 That the mark EPSON is similar to the domain names because the word EPSON is the distinctive and dominant component of each of them (the residue being descriptive/generic);
7.1.4 That, "while there is nothing inherently wrong with the legitimate sale of its products by third parties, the appropriation and use of its EPSON mark as the dominant part of the Domain Names is objectionable in the present case."
7.1.5 That the Complainant has not authorized the Respondent to register or use the Domain Names;
7.1.6 That the Domain Names are likely to confuse internet users;
7.1.7 That it is generally abusive for a reseller to adopt the trading style of its principal;
7.1.8 That the Respondent's pattern of registrations (including the Canon, HP and Lexmark domain names referred to above) tend to suggest abusive behaviour.
7.3 The Respondent
7.3.1 The Respondent has failed to submit a Response. However the DRS Procedure does not provide for judgment in default, so the Complainant is still required to prove its case on the balance of probabilities. In such circumstances the Panel is required to draw such inferences from a party's default as is considered appropriate – Procedure paragraph 15(c).
8. APPEAL NOTICE
8.1 In its Appeal Notice the Complainant says the Expert was wrong to conclude that no action should be taken in relation to the Domain Names. In summary it contends as follows:• that the Expert's reasoning and conclusion are inconsistent with other DRS Decisions in relation to complaints successfully brought by Seiko / Epson in very similar circumstances (DRS 248 Seiko UK Limited v Wanderweb, DRS 2944 Epson Europe BV v 1stopink.com and DRS 2962 Epson Europe BV v Elogicom Ltd) and also DRS 2316 Skovby Mobelfabrik A/S v Stuart Valentinekovby;• that the Expert wrongly considered that the presence of any of the factors set out in paragraph 4(a) of the DRS Policy automatically meant the registration was non-abusive;• that the Expert was over-reliant on the decision on the European Court of Justice in Case C-63/97 Bayerische Motorenwerke AG v Deenik [1999] ECR I-905, which was concerned with a different legal test.• that the Expert disregarded the wording of the Policy and either ignored or misunderstood the Complainant's contentions.8.2 Consistently with its inaction in the dispute so far, the Respondent did not provide a response to the Appeal Notice.
9. DISCUSSION & FINDINGS
9.1 General9.1.1 To succeed in this Complaint the Complainant has to prove to the Panel pursuant to paragraph 2 of the DRS 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 Names and, secondly, that the Domain Names, in the hands of the Respondent are Abusive Registrations (as defined in paragraph 1 of DRS Policy).
9.2 Rights
9.2.1 Paragraph 1 of the Policy defines 'Rights' as including, but not being limited to, rights enforceable under English law.
9.2.2 The Expert below concluded (at paragraph 8.5 of her Decision) that the Complainant had Rights in the marks which are similar to the Domain Names. Understandably, the Complainant has not challenged that conclusion.
9.2.4 On the evidence presented by the Complainant, the Panel has no hesitation in concluding that, as at the date of the Complaint, and also as at 21 April 2001 and 2 March 2003 (the dates of registration of the Domain Names), the Complainant owned Rights in the mark EPSON.
9.2.5 Further, the Panel considers that the mark EPSON is similar to the Domain Names because the term 'epson' is clearly the distinctive and dominant component of each of them; the remainder of each of the Domain Names being laudatory ('cheap') and/or purely descriptive ('ink'). The only exception is epson-stylus-ink-cartridges.co.uk, but as recited above EPSON STYLUS is also a registered trade mark owned by the Complainant's group.
9.3 Abusive Registration – what must be proven
1. 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.
2. A non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out under paragraph 3(a) of the Policy. The sub-paragraphs cited by the present Complainant are paragraphs 3(a)(ii) and 3(a)(iii). They provide as follows:
"3(a)(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"
"3(a)(iii) The Complainant can demonstrate that the Respondent is engaged in a pattern of registrations where the Respondent is the registrant of domain names (under .uk or otherwise) which correspond to well known names or trade marks in which the Respondent has no apparent rights, and the Domain Name is part of that pattern"
3. A non-exhaustive list of countervailing factors are set out under paragraph 4(a) of the Policy. The Complaint addressed the following sub-paragraphs: 4(a)(i)(A), 4(a)(i)(B), 4(a)(i)(C) and 4(a)(ii). They provide as follows:
"4(a)(i) Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has
A. used or made demonstrable preparations to use the Domain Name or a Domain Name which is similar to the Domain Name in connection with a genuine offering of goods or services;
B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
C. made legitimate non-commercial or fair use of the Domain Name
4(a)(ii) The Domain Name is generic or descriptive and the Respondent is making fair use of it"
9.4 Abusive Registration and implied commercial connection – when do resellers overstep the mark?
1. The issue at the heart of this case has arisen again and again in DRS Decisions, and it is important that there be a consistency of approach to such issues. Indeed, it was described as the 'crux' issue in the very first DRS Appeal Panel decision, in DRS 248 Seiko UK Limited v Wanderweb. The pertinent paragraphs of that Decision are as follows:
"Taking unfair advantage or causing detriment
We come now to the crux of this case.
There are many different traders who may wish to make use of the trade mark of a third party e.g. the proprietor's licensee (exclusive or non-exclusive), a distributor of the proprietor's goods (authorised, unauthorised or 'grey market'), the proprietor's franchisee, or the proprietor's competitor engaged in comparative advertising. There are an infinite array of different factual circumstances which could arise under each of these categories.
Accordingly, we are not able to – and we are not going to attempt to – lay down any general rules governing when a third party can make 'legitimate' use of the trade mark of a third party as a domain name. All we can do is decide whether the Expert came to the right conclusion on the evidence and submissions before him.
Essentially Seiko's complaint is that Wanderweb's registration of the Domain Names has gone beyond making the representation "we are a shop selling Seiko / Spoon watches" and is instead making the representation(s) "we are The Seiko/Spoon watch Shop" or "we are the official UK Seiko/Spoon watch shop". The latter form of representation is what we understand the ECJ to be referring to when, in the ECJ case C-63/97 BMW v. Deenik, it speaks of creating "the impression that there is a commercial connection between the other undertaking and the trade mark proprietor". An example of a domain name which, in the opinion of some members of the Panel, would make the former but not the latter representation was given by the Expert in paragraph 7.28 of the Decision: "we-sell-seiko-watches.co.uk".
The Panel agrees that if there is support in the evidence for the suggestion that the Domain Names make, or are liable to be perceived as making, the latter representation (i.e. that there is something approved or official about their website), this would constitute unfair advantage being taken by Wanderweb or unfair detriment caused to Seiko.
Seiko allege that Wanderweb's actions have disrupted their business and there is some evidence for this, submitted by Seiko, in the form of two letters from other customers which between them recount three instances of confusion.
The parties disagree about whether these two letters are or are not sufficient evidence of confusion. The Expert referred to them as being "not substantial, but … indicative of a likely problem". Wanderweb attempts to downplay them on the basis that they were only written just prior to Seiko's Reply to their Response. However we are not prepared to reject this evidence out of hand. It may represent the only confusion which has in fact occurred, it may just represent the 'tip of the iceberg'. However, for present purposes we believe that the Expert was right to conclude that the letters are sufficient to satisfy the burden of proof that Seiko bears.
There is also a difference of opinion as to how to interpret the word 'primarily' where it appears in paragraph 3(a)C of the Policy. In our view 'primarily' is not the same as 'only' and although a domain name registrant may start out with the best of intentions, if the effect of his actions is to give rise to confusion and to disrupt a Complainant's business then he has fallen foul of this paragraph in the Policy.
Seiko draw attention to the fact that "it is not a manufacturer but a distributor of watches in the United Kingdom" and so "it has not set up a franchise in which all the retailers would be allowed to call themselves SEIKO". These retailers can freely promote and sell SEIKO watches but they "do not have the right to usurp the rights in Seiko Company's registered trade marks themselves".
That it is unfair for a mere agent to appropriate to himself the trading style of his principal is a well-established principle of UK and international law. Section 60 of the 1994 Act, importing into UK law Article 6 septies of the Paris Convention, allows for the refusal of a trade mark application that has been applied for by an agent or representative, if the rightful proprietor of the mark opposes the application.
The Panel takes the view that in the light of the evidence before the Expert and in the light of the submissions before him and on appeal, it is just as unfair for Wanderweb to appropriate Seiko's trade marks as a domain name."
2. It is obviously important not to lose sight of the primary question: "were the Domain Names registered or used in a manner which takes unfair advantage of or was unfairly detrimental to the Complainant's Rights?". All other questions must remain subsidiary to that question. Nevertheless, for the reasons set out above in Seiko Shop, it is helpful in cases of this kind to ask and answer the secondary question: "does the Respondent's registration and use of the Domain Names create the [false] impression that there is a commercial connection between the Respondent and the Complainant?".
3. Before reaching a conclusion in the present case, it is worth noting that there have been three previous DRS Decisions concerning domain names incorporating the word 'Epson' in analogous circumstances:
• DRS 1796 Seiko Epson Corporation v Inkking (epson-ink-cartridges.co.uk)
• DRS 2944 Epson Europe BV v 1stopink.com (epson-c44.co.uk, epson-c64.co.uk and epson-c84.co.uk); and
• DRS 2962 Epson Europe BV v Elogicom Ltd (epson-ink.co.uk).
4. Each of the above complaints was successful and resulted in a transfer. The reasoning is identical: the Experts regarded each of the domain names as constituting "an inherent misrepresentation … 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".
5. It will be appreciated that the domain names at issue – particularly in the first and third cases referred to above – are virtually indistinguishable from the Domain Names in issue in this case. Moreover (as here) there was little or no response from the Respondent in each of the three cases.
6. Following the decision of the Nominet DRS Appeal Panel in DRS 389 Hanna-Barbera Productions, Inc v. Graeme Hay, confusion which may arise irrespective of the content of the Respondent's site, merely as a result of the Respondent's adoption of a Domain Name incorporating the designation 'Epson', can legitimately be taken into account. The observations in that appeal decision were made in the context of a 'fair use' / 'tribute site' dispute, but there is no logical reason for restricting them to such cases. So-called 'initial interest confusion' is an admissible species of confusion in DRS cases.
7. There can also be little doubt that the English Courts would prevent the Respondent from registering a company entitled "Epson Printer Ink Limited" and that the UK Trade Marks Registry would not permit the Respondent to register "Epson Stylus Ink Cartridges" as a trade mark. On the other hand, it is not inherently objectionable to refer to genuine (intra-EEA) Epson ink cartridges as 'Epson Ink Cartridges' and it may be acceptable to refer to compatible products, for example, as "suitable for use with EPSON printers". However, in reality none of these is a perfect analogy with the circumstances of the present case.
8. There is no absolute rule that any domain name incorporating the word 'Epson' will be an Abusive Registration. The Complainant appears to accept as much: "… while there is nothing inherently wrong with the legitimate sale of its products by third parties, the appropriation and use of its EPSON mark as the dominant part of the Domain Names is objectionable in the present case."
9. The question of whether the (misleading) impression of a commercial connection is created is a question of fact in each case. There is, however, a marked difference between selling the genuine products of another party under its registered trade marks in order to identify the goods as being those of the trade mark owner, or making legitimate comparative uses in accordance with honest commercial practices in such matters, and the Respondent's practice of adopting a multiplicity of web site address incorporating the trade mark for general promotional purposes, to divert potential customers to the Respondent's website, irrespective of whether or not the business includes the sale of such genuine or compatible goods.
9.5 Overall conclusions on Abusive Registration
1. On the materials before this Panel in this case, the Panel has concluded that the Domain Names (a) are likely to have created the false impression that there is a commercial connection between the Respondent and the Complainant; and (b) were acquired and are undoubtedly being used in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant's Rights.
2. Those conclusions are based on the following considerations:
3. Firstly, there is no question of the Complainant having expressly authorized the Respondent to register or use the Domain Names.
4. Secondly, the Panel is satisfied, on the balance of probabilities, that initial interest confusion is likely to have occurred as a result of the Respondent's adoption and use of the Domain Names. The Complainant contends that the Domain Names must have been selected to drive traffic intended for the Complainant to the Respondent's site, and in the absence of any refutation from the Respondent we are entitled to conclude that this was indeed the case.
5. Thirdly, we regard it as indicative of unfairness that the Respondent has used the Domain Names to promote the sales of products which are competitive with Epson's own products (including other brands such as HP and Lexmark, as well as a heavy emphasis on 3rd party 'Epson compatible' products).
6. Fourthly, the sheer number of Domain Names at issue in the present case , particularly in the absence of any explanation from the Respondent, is considered compelling evidence of the registrations having been acquired and used with the deliberate intention of taking unfair advantage of the fame of the mark 'Epson'. It is a well-known tactic to improve search-engine rankings by cross-linking numerous apparently different websites, as has evidently been done in this case. The Respondent is using the attractive force of the EPSON registered trade mark, incorporated in multiple, contrived domain names used in web addresses all linked to the Calibre Computing site, to draw visitors to its website, both to sell competing products and to imply a commercial connection with the owner of the mark. Though neither are directly on point, the Panel regards both paragraph 3(a)(iii) of the Policy and the reasoning in BT v One in a Million as support for the general proposition that the higher the number of impugned registrations, the lower the likelihood of an innocent explanation.
7. Fifthly, the Panel does not consider that any of the exculpatory factors set out in paragraph 4 are present. In particular the Panel does not consider that paragraph 4(a)(i)(A) – which the Expert below regarded, obiter, as a complete defence – is apt to cover the situation where a Respondent intentionally registers domain names incorporating the trade marks of a third party and simply points them at a differently-branded e-commerce site (i.e. 'Calibre Computing'). Quite apart from the question of whether the Respondent's activities started "before being aware of the Complainant's cause for complaint", the Panel does not consider that this is "use in connection with a genuine offering of goods or services" for the purposes of the Policy.
8. In reaching this conclusion the Panel has been wary of reliance on the Respondent's registration of canon-inkjet-cartridge.co.uk, hp-inkjet-cartridge.co.uk and lexmark-inkjet-cartridge.co.uk. These domains fall into the same broad category as the Domain Names in issue, and for the Complainant to rely on them as indicative per se of Abusive Registration would be to employ somewhat circular reasoning.
9. In the light of all of the foregoing considerations, the Panel's overall assessment on the balance of probabilities is that the Complainant has discharged the burden of proving that the Domain Names were acquired and are being used in a manner which takes unfair advantage of and is unfairly detrimental to the Complainant's Rights.
10. Accordingly the Panel concludes that the Domain Names, in the hands of the Respondent, are Abusive Registrations.
10. DECISION
10.1 The Panel reverses the Expert's decision and directs that the Domain Names, epson-ink-ink.co.uk; cheap-epson-ink-cartridge.co.uk; cheap-epson-ink-cartridges.co.uk; epson-compatible-ink-cartridges.co.uk; epson-ink-jet-cartridge.co.uk; epson-inkjet-cartridge.co.uk; epson-inkjet-printer-cartridge.co.uk; epson-inkjet-printer-cartridges.co.uk; epson-print-cartridges.co.uk; epson-printer-cartridges.co.uk; epson-printer-ink.co.uk; epson-printer-ink-cartridge.co.uk; epson-printer-ink-cartridges.co.uk; epson-stylus-ink-cartridges.co.uk, be transferred to the Complainant.
Philip Roberts
Ian Lowe
Keith Gymer
31 March, 2006