Generic Top Level Domain Name (gTLD) Decisions

P. O. Box 50191
Minneapolis, Minnesota 55405 USA

Seiko Epson Corporation and Epson America, Inc.

c/o Judith S. Bain, Esq., Vice President,

Legal Affairs & General Counsel

3840 Kilroy Airport Way, Fifth Floor

Long Beach, California 90809-9941

COMPLAINANT,

vs.

Distribution Purchasing & Logistics Corp

c/o Doug DeAngelo

P. O. Box 303

Mahwah, New Jersey 07430

RESPONDENT.

DECISION
Forum File No.: 0003000094219

The above captioned matter came to the Forum for an administrative hearing on April 3, 2000, before the undersigned on the Complaint of Seiko Epson Corporation and Epson America, Inc. ("Complainant") against Distribution Purchasing & Logistics Corp c/o Doug DeAngelo ("Respondent"). Claimant was represented by Evan Finkel, Pillsbury Madison & Sutro LLP, 725 South Figueroa, Suite 1200, Los Angeles, CA 90017. Respondent was represented by Doug DeAngelo, P. O. Box 303, Mahwah, NJ 07430. Upon the written submitted record, the following DECISION is made:

PROCEDURAL FINDINGS

Domain Name: EPSONSTORE.COM

Domain Name Registrar: Network Solutions, Inc.

Domain Name Registrant: Distribution Purchasing & Logistics Corp

Date of Domain Name Registration: August 24, 1998

Date Complaint Filed: March 1, 2000

Date of Commencement of Administrative Proceeding in Accordance with Rule 2(a) and Rule 4(c): March 1, 2000.

Due date for a Response: March 21, 2000. Respondent submitted its response on March 5, 2000.

After reviewing the Complaint and determining it to be in administrative compliance, the National Arbitration Forum ("The Forum") forwarded the Complaint to the Respondent in compliance with Rule 2(a). In compliance with Rule 4(d), The Forum immediately notified Network Solutions, Inc. ("Network Solutions"), the Internet Corporation for Assigned Names and Numbers ("ICANN"), and the Complainant that the administrative proceeding had commenced. Respondent submitted a response to The Forum within twenty (20) days pursuant to Rule 5(a).

On August 24, 1998, Respondent registered the domain name "EPSONSTORE.COM" with Network Solutions, the entity that is the Registrar of the domain name. Network Solutions verified that Respondent is the Registrant for the domain name "EPSONSTORE.COM". In filing its Response, Respondent did not object to having the dispute regarding its domain name resolved through ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy, and the Uniform Domain Name Dispute Resolution Policy.

The undersigned certifies that he has acted independently and has no known conflict of interest to serve as the Arbitrator in this proceeding. Having been duly selected and being impartial, the undersigned makes the following findings, conclusions and decision:

FINDINGS OF FACT

1. The Complainant is the owner of numerous trademarks and service marks that include the term "EPSON" and Complainant has been using such marks in the United States for more than 25 years. Complainant also uses the mark "epson.com" as the domain name for its portal Web site for services related to its EPSON goods and for selling its EPSON products. The EPSON marks are used extensively at this portal Web site, which is a significant method of promoting the EPSON services and goods. In 1999, this portal Web site had in excess of 18,000,000 users with more than 485,000,000 page hits. In 1999, there were an average of 430,000 driver downloads and more than 500,000 catalog sheets for product information requested each month.

2. The Complainant commenced its activities on the Web in October, 1995, with its "epson.com" portal Web site.

3. In order to offer a more complete product line, Complainant conducted market research that asked interviewees to select from a list of 10 names for a shopping site to purchase EPSON brand products. Ninety percent (90%) of the interviewees selected Epson Store. Subsequently, in December 1999, Complainant decided to establish an online store for EPSON goods and services but discovered that Respondent had already registered "EPSONSTORE.COM" as a domain name.

4. Respondent defends its actions by responding to the Complaint and to counsel for Complainant as follows:

a. That while the profiles of Respondent were initially set up during registration and that it was the Respondent’s responsibility to maintain such information, it was not a priority for Respondent;

b. That Respondent has no intent to use the domain name "EPSONSTORE.COM", has not used it and will not release it;

c. That Respondent has some undisclosed Web strategy to utilize the domain names it has registered and which are identified in the Complaint through venture capital financing and sales at initial public offerings ("IPO"); and

d. That Respondent is not pursuing EPSON because it is not a priority.

5. While Respondent’s response to the Complaint fails to comply with ICANN’s Rules, specifically Rule 5(b), its contents were considered.

6. Respondent’s "EPSONSTORE.COM" domain name is confusingly similar to Complainant’s registered trademarks and servicemarks.

7. Respondent registered the domain name "EPSONSTORE.COM" in bad faith and has no rights or legitimate interests in said domain name. The following is evidence of Respondent’s bad faith:

a. That Respondent registered the domain name on August 24, 1998, long after Complainant’s marks had been in use and were incontestable;

b. That Respondent has made no use, legitimate or otherwise, of the domain name "EPSONSTORE.COM" and seeks to profit from its registration of said domain name by trading on the goodwill associated with Complainant’s "EPSON" marks;

c. That Respondent admits in its Response that it intends to finance its Web strategy through venture capital financing and IPO’s which evidence Respondent’s motive to profit from its registration of domain names including "EPSONSTORE.COM";

d. That Respondent has admitted that it failed to provide updated contact information in the WHOIS directory including responsive telephone and facsimile numbers; and

e. That Respondent has engaged in a pattern of registering domain names that infringe upon other entities marks.

8. Complainant’s prayer for relief requests that the domain name "EPSONSTORE.COM" be transferred from Respondent to Complainant.

CONCLUSIONS

1. The domain name "EPSONSTORE.COM", registered by Respondent on August 24, 1998, with Network Solutions, is identical to and/or is confusingly similar to Complainant’s registered trademarks and servicemarks and to which Respondent has no right nor legitimate interest to use.

2. Respondent registered and acquired the domain name "EPSONSTORE.COM" primarily for the purpose of profiting from said domain name registration by financing through venture capital and IPO’s and/or selling, licensing, renting or otherwise transferring the said domain name registration to Complainant who is the owner of the trademark or servicemark, or to a competitor of Complainant for valuable consideration in excess of Respondent’s out-of-pocket costs directly related to the domain name. Therefore, Respondent registered the domain name in bad faith.

DECISION

Based upon the above findings and conclusions, and pursuant to Section 4(i) of the Uniform Domain Name Dispute Resolution Policy, it is decided as follows:

THE UNDERSIGNED DIRECTS THAT THE DOMAIN NAME "EPSONSTORE.COM" REGISTERED BY RESPONDENT, DISTRIBUTION PURCHASING & LOGISTICS CORP., BE TRANSFERRED TO COMPLAINANT, SEIKO EPSON CORPORATION AND ITS NORTH AND LATIN AMERICAN SALES, MARKETING AND CUSTOMER SERVICE SUBSIDIARY, EPSON AMERICA, INC.

Given this 5th day of April, 2000. Richard DiSalle, Arbitrator