Nominet UK Dispute Resolution Service

DRS 2944

Epson Europe BV 

Decision of Independent Expert

1.	PARTIES

Complainant:  Epson Europe BV for and on behalf of Seiko Epson Corporation

Country:	The Netherlands	

Respondent:	1stopink.com

Country:	GB

2.	DOMAIN NAME

epson-c44.co.uk;epson-c64.co.uk;epson-c84.co.uk

3.	pROCEDURAL BACKGROUND

3.1.	A Complaint in respect of epson-c44.co.uk;epson-c64.co.uk;epson-c84.co.uk (the “Domain Names”) under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was received from the Complainant on 7 September 2005.  Nominet forwarded the Complaint to the Respondent. No Response was received. 

3.2.	The dispute was referred for a decision by an Independent Expert following payment by the Complainant of the required fee in accordance with paragraph 5d of Nominet's Procedure for the conduct of proceedings under the Dispute Resolution Service (the “Procedure”) on 6 October  2005.  I was appointed as Independent Expert on 6 October 2005 and confirmed to Nominet that I was independent of the parties and knew of no facts or circumstances that might call into question my independence in the eyes of the parties.
4.	Outstanding Formal/Procedural Issues (if any)

4.1.	Under Paragraph 5a of the Dispute Resolution Service Procedure ("the Procedure") the Respondent was required to submit a Response to the Complaint to Nominet by 3 October 2005. The Respondent has failed to do so.

4.2.	Paragraph 15b of the Procedure provides as follows: "If, in the absence of exceptional circumstances, a Party does not comply with any time period laid down in this Policy or Procedure, the Expert will proceed to a Decision on the Complaint."

4.3.	It is the view of the Expert that there are no exceptional circumstances. The proceedings have been communicated to the Respondent and the Respondent has made no attempt to explain its lack of response and there is no evidence to suggest that anything exceptional has occurred.

4.4.	The Expert is accordingly authorised under the Procedure to proceed to decide the Complaint. Under paragraph 16a of the Procedure the Expert should reach a decision based on the Parties' submissions (which consists of the Complaint and its Annexes in this case) and the Policy and Procedure. In the absence of any exceptional circumstances the Expert is also entitled to draw such inferences from the Respondent's non-compliance with the Policy or Procedure as he considers appropriate (paragraph 15c of the Procedure).

5.	The Facts

5.1.	The Complainant trades as Epson and is the well known manufacturer of printers. The relationship between Seiko EPSON Corporation ("SEC") and  EPSON Europe BV ("EPSON Europe") is explained in the Complaint and  the latter is authorised and instructed by SEC to take legal action or request administrative action to protect the interests and property of SEC.  EPSON Europe derives its right to bring the present complaint for and on behalf of, and in the name of, SEC through a Power of Attorney details of which have been provided. For present purposes nothing turns on the distinction between SEC and EPSON Europe they are referred to in  the Complainant as the "Complainant" or "Epson". 

5.2.	The filed evidence shows that Epson is extremely well known. It also has registered trade marks which include the word Epson, and the evidence establishes these marks are very well known.

5.3.	The exact legal identity of the  Respondent is unclear. It appears to carry out an on line business which sells a variety of computer hardware and peripheral products produced by a number of manufacturers including those of Epson. These include printers manufactured by Epson. There is no suggestion that these printers are anything other than genuine Epson products which it is lawfully entitled to sell.

5.4.	Amongst printers made by Epson are models designated  as the Stylus c44, Stylus c64 and Epson Stylus c84. It appears that the Respondent is offering these models for sale via its web site, according to the filed evidence
.
5.5.	Each of the Domain Names was registered in January 2004. Each Domain Name resolves to the Respondent's primary trading web site.   For present purposes the issues to be considered are identical for each of the Domain Names.

6.	The Parties’ Contentions

Complainant

6.1.	The Complaint contends:

6.1.1.	that it has extremely strong Rights in the EPSON mark 

6.1.2.	EPSON is an extremely well-known 'made-up' term and forms the first, dominant, most significant and distinctive element of the Domain Names

6.1.3.	the additional words “c44” “c64” “c84” are descriptive of printer models manufactured and sold by the Complainant and are well known and closely associated with the Complainant in their own right. 

6.1.4.	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. 

6.1.5.	the Respondent is not permitted to use the EPSON mark;

6.1.6.	at no point during the Domain Names' registration has the Respondent been commonly known by the trade mark EPSON;

6.1.7.	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. 

6.1.8.	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. 

6.1.9.	furthermore the Respondent is not an authorised distributor of the Complainant. 

6.1.10.	the Domain Names are likely to confuse Internet users.  It is likely that Internet users who type in the Domain Names, or who find them through a search engine, will be looking for a web site operated by the Complainant rather than the Respondent. The Domain Names are extremely likely to confuse Internet users trying to find EPSON products as a result of the incorporation of the EPSON mark. 

6.1.11.	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. 

6.1.12.	the Respondent's use clearly employs the fame of the EPSON mark to mislead users into visiting its website instead of the Complainant's. It is in the nature of online activities and sales that it is very difficult for complainants to adduce evidence from individual consumers who have been confused by a misleading domain name, as perhaps envisaged by the DRS Policy para 3(a)(ii), particularly if the confusion has been entirely successful. 

6.1.13.	that its business is being unfairly disrupted in terms of the Policy in that the Respondent's primary web site sells the products of a number of manufacturers, including Canon, Hewlett Packard and Lexmark. The Complainant's EPSON mark is therefore being used by the Respondent to advertise and sell the products of its competitors. The Complainant avers that such use cannot be considered non-Abusive in terms of the Policy.  

6.1.14.	the Domain Names clearly refer to and were registered with the Complainant in mind, to trade off and benefit from confusion with the Epson mark and its extensive reputation.

Respondent

As indicated above no response has been filed.

7.	discussion and Findings:

	General

	Discussion and Findings

7.1.	The Complainant is required under Clause 2b of the Policy to prove to the Expert on the balance of probabilities that:

7.1.1.	the Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and

7.1.2.	the Domain Name, in the hands of the Respondent, is an Abusive Registration.

Complainant’s Rights

7.2.	“Rights” are defined in the Policy and in the Procedure.  Rights “includes, but is not limited to, rights enforceable under English law.”  The Complainant is the proprietor of registered trade marks in respect of the word EPSON registered at various times over the years.  I am also satisfied that it has very substantial goodwill and reputation in the name as a result of its trading activities over many years.  

7.3.	The question that arises, however, is whether the name EPSON is similar to the Domain Names (ignoring the suffix “.co.uk”), given the addition of the designations "-c44", "-c64", and "-c84".  I accept the submission of the Complainant that these designations are descriptive of printer models sold by Epson.  In those circumstances I am satisfied that “EPSON” is similar to “epson-c44” and the other Domain Names for the same reason. 

7.4.	Accordingly I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Names. 

Abusive Registration

7.5.	Paragraph 1 of the Policy defines “Abusive Registration” as a Domain Name which either:

7.5.1.	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

7.5.2.	has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant’s Rights.

7.5.3.	Although a non-exhaustive list of factors, which may be evidence that the Domain Name is an Abusive Registration, is set out in paragraph 3 of the Policy, the Complainant does not expressly rely on any specific elements.  The Complainant’s primary contention is that the use of the Domain Name amounts to a false representation by the Respondent that its business, operated from the website to which the Domain Name resolves, is connected with or endorsed by the Complainant.  Alternatively, Internet users who type in the Domain Name or who find it through the use of a search engine are likely to be confused.

7.5.4.	In this case, I consider that there is an inherent misrepresentation constituted by the Respondent’s use of the Domain Name that is likely to confuse Internet users both as to what the Respondent is selling and as to the connection between the Respondent and the Complainant and that I am 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. 

7.5.5.	As the Appeal Panel pointed out in Seiko UK Limited v Designer Time/Wanderweb, it is unfair for an agent to appropriate to himself the trading style of its principal In this case there is not even an agent/principal relationship – the Respondent is merely a reseller of Epson products.  The Seiko case contains a full consideration of the issues that arise when a legitimate retailer appropriates, as a domain name, a name which is the same as, or similar to, the name of the manufacturer of products which the retailer sells.  Although not bound by that decision as matter of precedent, I agree with and adopt the reasoning of the Appeal panel in that case. 

7.5.6.	In the circumstances, I consider that the Domain Name has been used by the Respondent in a manner which takes unfair advantage of or is unfairly detrimental to the Complainant’s Rights in the name EPSON and that the Domain Names, in the hands of the Respondent, are therefore Abusive Registrations.

8.	Decision

Accordingly, I find that the Complainant has Rights in respect of a name or mark which is similar to the Domain Names and that the Domain Names in the hands of the Respondent are Abusive Registrations.  I therefore determine that the Domain Names be transferred to the Complainant Seiko EPSON Corporation.

………………………………
Nick Gardner

25 October 2005