EPSON Europe BV v Cybercorp Enterprises

Complainant: Epson Europe BV

Country: NL

Respondent: Cybercorp Enterprises

Country: GB

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" .

3.2 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.

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).

There are no outstanding procedural issues to be addressed.

6.1 Facts

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 1259192 ('EPSON') as of 29 January 1986 in Class 9 (printers, printout apparatus, memory units, data monitoring units and data editing units, etc.)

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:

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':

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.

7.3 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).

8.2 Consistently with its inaction in the dispute so far, the Respondent did not provide a response to the Appeal Notice.

9.1.1 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

Paragraph 4(a) of the Policy commences with the words "A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:" (emphasis added). This emphasizes that the matters set out under paragraph 4 are merely indicative considerations; they are factors to be weighed in the overall balance. The fact that any one of them is proven in any given case does not automatically mean that the Complaint must fail – see paragraph 9, p.18 of the Appeal Panel decision in DRS 248 Seiko UK Limited v Wanderweb . To this extent, the Panel does not agree with the approach of the Expert below who, at paragraph 9.2 of her Decision, stated that "if one of the factors in §4(a) is satisfied by a Respondent, so that a domain name is not an Abusive Registration, the Complaint must fail."

9.4 Abusive Registration and implied commercial connection – when do resellers overstep the mark?

9.5 Overall conclusions on Abusive Registration

Philip Roberts

Ian Lowe

Keith Gymer