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EiPSON.com lost in a #UDRP due to obvious infringement of the #EPSON brand

Catched.com

A Chinese OEM parts manufacturer operating from the domain EiPSON.com since 2016, had no intention to pass off as “EPSON” according to his statement.

Hilariously attempting to cover up the similarities in the logo, along with the fact that the parts being sold are for EPSON products, led to the domain’s loss via the UDRP process.

Said the Respondent:

The domains is already regestered over 5 years ago, I’ve not received any notice about I can’t use till now. As far as I know, anyone is equal to register and use domains. I never sell this domain before.

I didn’t know Eipson is similiar to EPSON, in fact, Eipson is without any icon image and its front is very general. It is a complete coincidental like we use something front of Arial. Blue is also the very general colors.

The sole panelist at the WIPO did not buy any of this crap and sent the Respondent packing, ordering the domain EiPSON.com to be transferred to the Complainant.

Full details on this decision follow:

Seiko Epson Kabushiki Kaisha v. Na Yang
Case No. D2020-0973

1. The Parties

The Complainant is Seiko Epson Kabushiki Kaisha, Japan, represented by Demys Limited, United Kingdom.

The Respondent is Na Yang, China, self-represented.

2. The Domain Name and Registrar

The disputed domain name <eipson.com> (the “Domain Name”) is registered with GoDaddy.com, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on April 21, 2020. On April 21, 2020, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. On April 22, 2020, the Registrar transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), 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 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on April 24, 2020. In accordance with the Rules, paragraph 5, the due date for Response was May 15, 2020. The Response was filed with the Center on April 30, 2020.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on June 5, 2020. 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.

4. Factual Background

The Complainant is a publicly traded stock company incorporated in Japan with its principal office in Nagano, Japan. The Complainant is one of the world’s largest manufacturers of printers and imaging equipment, as well as desktop and laptop computers, projectors, robots and industrial automation equipment, point-of-sale terminals and cash registers, integrated circuits, LCD components, and other associated electronic components. The Complainant cites several previous UDRP decisions acknowledging that EPSON is a globally recognized brand in a range of technology products, and this is supported by the record in the current proceeding. The Complainant’s global business reported net revenues of JPY 1,089 billion (approximately USD 10 billion) for its 2019 fiscal year. The Complainant operates its main global website at “www.global.epson.com”, as well as other websites incorporating the “Epson” name.

The Complainant or its predecessors have used the EPSON mark since the 1970s, and the Complainant holds numerous trademark registrations for EPSON. These include, for example, United Kingdom Trade mark Number UK00001048343 (registered June 19, 1975); United States of America Trademark Registration Number 1134004 (registered April 29, 1980); International Trademark Registration Number 792530 (registered March 19, 2002 and including a designation for China), and European Union Trademark Number 4147229 (registered March 2, 2006).

The Registrar reports that the Domain Name was created on October 2, 2016 and is registered to the Respondent Na Yang of Shenzhen, Guandong Province, China, listing no organization.

As shown by April 2020 screenshots attached to the Complaint, the Domain Name has resolved to a website (the “Respondent’s website”) headed “EiPSON” in block capital letters similar to those used on in the Complainant’s logo, but inserting a lower-case “i”. Until recently, the logo was in the same blue color used for the Complainant’s logo. This was followed with a tag line, “Drop Shipping Manufacturer Factory Supplier Exporter Wholesaler in China”. (At the time of this Decision, the tag line no longer appears.) The Respondent’s website has advertised a variety of third-party electronic products, some of them with the Complainant’s EPSON mark, others labelled “EiPSON”, and others from third parties. Many are accompanied by photos and detailed descriptions, and the website includes the facility of ordering and paying online for worldwide shipping. Between April 2020 and the date of this Decision, the EPSON product references on the Respondent’s website appear to have been systematically changed to “EiPSON”. The Respondent’s website includes links to social media accounts with similar advertising.

There is no disclaimer of affiliation with the Complainant on the Respondent’s website. The website includes an “About Us” page that is a description of the Respondent’s supposed operations, including a photograph purportedly of its “China factory” in Guangdong, showing some 30 workers seated at workbenches. The Complainant points out that while many of the products pictured on the website appear to be similar to products sold by the Complainant, the images and descriptions do not actually match the Complainant’s products. In one case, a photo search on the image of an “EPSON” wristwatch revealed that the same image appeared on the websites of other retailers to advertise wristwatches produced by other manufacturers.

5. Parties’ Contentions

A. Complainant

The Complainant contends that the Domain Name is confusingly similar to its registered EPSON trademark, and that the Respondent has no permission to use the mark or other rights or legitimate interests in the Domain Name. There is no evidence that the Respondent is making fair use of the Domain Name by actually reselling the Complainant’s trademarked goods, and in any event the Respondent is selling the goods of competitors through the website associated with the Domain Name.

The Complainant argues that the Respondent has acted in bad faith by registering a typographical variant of the Complainant’s mark and using the Domain Name to misdirect Internet users for commercial gain. The use of a similar logo and deceptive product labels on the Respondent’s website, and the absence of a disclaimer of affiliation, are further evidence of an intent to deceive.

B. Respondent

The Respondent, who is not represented by counsel, did not use the suggested Response form including the certification of accuracy and completeness required by the Rules, paragraph 5(c)(vii). The Panel must take this into account in weighing the credibility of the Respondent’s factual assertions.

The Respondent does not challenge the Complainant’s trademark but seems to deny an intent to exploit the mark, making the following statements in an email to the Center dated April 30, 2020:

“I used this domain for many years ago that I’ve made many effort and energy on it, just for news and sharing on what is new products. …

My website name: eipson.com is not related to epson.com at all, I’ve a letter “I” in it. Neirther it is EPSON logo, nor I sell any related products that related to EPSON printers or any relation with them.

The domains is already regestered over 5 years ago, I’ve not received any notice about I can’t use till now. As far as I know, anyone is equal to register and use domains. I never sell this domain before.

I didn’t know Eipson is similiar to EPSON, in fact, Eipson is without any icon image and its front is very general. It is a complete coincidental like we use something front of Arial. Blue is also the very general colors.

I used this website just to share news on technology, no any logo on actual production related to EPSON, also nothing related to EPSON printer. Some photo with it is just a demo waterprinting, all are not EPSON (mine is Eipson) …

If you requirement something change, or i’ve to do compitable to your policy. Please let me know again, I will do as I can.”

6. Discussion and Findings

Paragraph 4(a) of the Policy provides that in order to divest a respondent of a domain name, a complainant must demonstrate each of the following:

(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.

Under paragraph 15(a) of the Rules, “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

A. Identical or Confusingly Similar

The first element of a UDRP complaint “functions primarily as a standing requirement” and entails “a straightforward comparison between the complainant’s trademark and the domain name”. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), section 1.7. The Domain Name differs from the Complainants’ registered EPSON mark by the single letter “i” (a narrow character and a vowel) and is thus confusingly similar to the Complainant’s well-known mark visually and phonetically. The generic Top-Level Domain (“gTLD”) “.com” “is viewed as a standard registration requirement” and as such is normally disregarded under the first element of the Policy. Id., section 1.11.2.

The Panel concludes, therefore, that the first element of the Complaint has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy gives non-exclusive examples of instances in which the Respondent may establish rights or legitimate interests in the Domain Name, by demonstrating any of the following:

(i) before any notice to it of the dispute, the Respondent’s 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) that the Respondent has been commonly known by the Domain Name, even if it has acquired no trademark or service mark rights; or

(iii) the Respondent is 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.

Because a respondent in a UDRP proceeding is in the best position to assert rights or legitimate interests in a domain name, it is well established that after a complainant makes a prima facie case, the burden of production on this element shifts to the respondent to come forward with relevant evidence of its rights or legitimate interests in the domain name. See WIPO Overview 3.0, section 2.1. The Complainant in this proceeding has demonstrated trademark rights and a lack of permission to use the Complainant’s mark in the Domain Name, as well as evidently deliberate attempts to make the Respondent’s website appear to be associated with the Complainant, by using a similar logo and picturing what seem to be the Complainant’s products with the Complainant’s labels, with no disclaimer of affiliation. The Respondent does not demonstrate nominative fair use as a reseller, as the Respondent does not provide evidence of actually trading in the Complainant’s goods (much less exclusively so) and accurately disclosing the Respondent’s relationship, or lack thereof, with the Complainant. See WIPO Overview 3.0, section 2.8.1.

The Panel concludes that the Complainant prevails on the second element of the Complaint.

C. Registered and Used in Bad Faith

The Policy, paragraph 4(b), furnishes a non-exhaustive list of circumstances that “shall be evidence of the registration and use of a domain name in bad faith”, including the following (in which “you” refers to the registrant of the domain name):

“(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your website or other online 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 Complainant’s mark is distinctive, well known, and long-established. The Respondent claims unconvincingly “I didn’t know Eipson is similiar to EPSON”, while advertising “EPSON” products on the Respondent’s website until this proceeding and then changing the labels on those products to “EiPSON”. The Respondent claims the use of a similar logo on the website is “a complete coincidence” and that the website is for “news and sharing on what is new products”. But it is not simply an informational website; it is an e-commerce website with a shopping cart, payment functionality through PayPal, and international shipping. It does not advertise printers, but it advertises and sells a wide range of other products, many of which compete with the Complainant’s broad product lines. The uncertified Response is disingenuous and unpersuasive. Actions speak louder than words.

The circumstances here fit the example of bad faith described in the Policy, paragraph 4(b)(iv): intentional confusion as to source or affiliation for commercial gain. The Panel concludes that the Complainant has established the third element of the Complaint.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <eipson.com>, be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist
Date: June 15, 2020

 


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