EPSON Europe BV v Cybercorp Enterprises [2005] DRS 03027 (8 December 2005)

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Nominet UK Dispute Resolution Service

You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> EPSON Europe BV v Cybercorp Enterprises [2005] DRS 03027 (8 December 2005)
URL: http://www.bailii.org/uk/cases/DRS/2005/3027.html
Cite as: [2005] DRS 03027, [2005] DRS 3027

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Nominet UK Dispute Resolution Service

DRS 03027

EPSON Europe BV for and on behalf of Seiko Epson Corporation

v.

Cybercorp Enterprises

Decision of Independent Expert

Parties

Complainant: EPSON Europe BV

for and on behalf of

Seiko Epson Corporation

Country: The Netherlands

Respondent: Cybercorp Enterprises

Country: UK

Domain Names

Procedural Background

Outstanding Formal/Procedural Issues (if any)

4.1.1 I need to say something briefly about service. The DRS derives its jurisdiction from the terms and conditions of the contract of registration between the Respondent and Nominet ("the Contract"), clause 14 of which incorporates the Policy and Procedure by reference. The Contract requires a registrant's details to be entered in the Register (clause 4.1), and the registrant agrees to ensure that Nominet has its correct postal address, telephone and fax number and email address. Certain details are also posted on the public WHOIS database. Failure to provide correct details, or to keep them up-to-date, may be grounds for cancellation or suspension of a domain name (clause 17.2).

4.1.2 The relevance of this, is §2(a) of the Procedure provides a Respondent will be served with a Complaint, at Nominet's discretion, by any of: first class post, fax or email to the contact details in the Register; by email to postmaster@ ; or to any email addresses shown on any active web pages the domain name resolves to. Other communications are also by fax, first class post or email (§2(b)).

4.1.3 Nominet has provided me with a copy of the Respondent's Register entries and WHOIS details. On the Register, in the case of each of the Domain Names, the postal address given is the Cybercorp address set out below. For all except one of the Domain Names, the email given is [email protected]. The one exception is the domain name epson-inkjet-cartridge.co.uk, for which the email is given as [email protected].

4.1.4 Nominet served the Complaint on the Respondent on 12 October 2005, by:

(a) first class post to Cybercorp Enterprises, Foundation House, 30 Partridge Road, Newport, Isle of Wight, PO305NS; and

(b) by 1 email to [email protected];

(c ) at postmaster@[each of the Domain Names].

I have no way of knowing whether the Respondent actually received the emails or the hard copy sent by first class post. As to the email service, it went once to [email protected] and all the rest went to the postmaster addresses –although the Register shows that the Respondent uses a webmaster style –not postmaster. Further, it appears that the webmaster address that was emailed may now have been changed to [email protected].

4.1.5 However, the Procedure stipulates that the postmaster@domainname style will be used for service, §2(a), and the Contract renders the Respondent responsible for any failure to notify Nominet of changes to its details. The Complaint is therefore deemed by the Procedure to have been served on the date of the emails (2(e)(iii)) and on the second Day after posting (2(e)(ii)). Therefore, at the earliest, the Respondent was deemed served by 12 October 2005, and, at the latest, by 14 October 2005.

4.2.1 Although the Respondent has failed to submit a Response, the Procedure does not provide for a default decision in favour of the Complainant. The Complainant must still prove their case to the requisite standard, see §15(b) of the Procedure. However an expert may draw such inferences from a party's default as appropriate, see §15(c), and I indicate below where I am drawing inferences.

The Facts

^[1]

due to popular demand we now sell printers from both Epson and Canon."

The Parties' Contentions

Complainant's Case:

6.2.1 Seiko is a global corporation concerned with the development, manufacturing, sales, marketing and servicing of information-related equipment (computers and peripherals, including PCs, printers, scanners and projectors), electronic devices and precision products (watches, plastic corrective lenses, and factory automation equipment).

6.2.2 Seiko maintains an extensive portfolio of registered trade marks relating to the EPSON mark in a large number of territories throughout the world. The most pertinent trade marks relating to this dispute are listed below and are reproduced as at Annex 5:

Trade mark no.	Jurisdiction	Mark	Filing date	Classes
1259192	UK	EPSON	29-Jan-1986	09: printers, printout apparatus, memory units, data monitoring units and data editing units, etc.
1516493	UK	EPSON STYLUS	20-Jan-1992	09: printers, printout apparatus, memory units, data monitoring units and data editing units, etc.
004147229	European Community	EPSON	29-Nov-2004	2 –toner for computer printers 9 – computer peripheral devices, computer printers, print heads for printers, etc. 16 – inking ribbons, etc.

6.2.3 The Complaint contends that it has extremely strong Rights in the EPSON mark and submits that the Domain Names are similar to such marks for the following reasons:

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

6.2.3.2 The additional words, such as "ink", "cartridge" "compatible" or "printer" in the Domain Names are not dominant, being merely generic and descriptive;

6.2.3.3 The additional word "stylus" in one of the Domain Names refers directly one of the Complaint's marks;

6.2.3.4 The additional words are descriptive of products manufactured and sold by the Complainant, placing the focus clearly on the EPSON element of the Domain Names; and

6.2.3.5 Had the Domain Names not included the EPSON mark their meaning and significance would have been entirely different, in that they would not relate specifically to the Complainant or its products.

6.2.4 Previous disputes under the DRS, for example Deutsche Telekom v ADO1, at Annex 7 - DRS 00456, and Pickfords Limited v Black Cat, at Annex 8 - DRS 00898, have dealt with complaints involving a brand name and the addition of a generic or descriptive word. In these cases the experts held that the domains in question were sufficiently similar to a name or mark in which the complainant had rights in terms of the Policy. The Complainant contends the facts in the disputes above mirror those in the present case.

6.3.1 Respondent is not permitted to use the Epson Mark

6.3.1.1 The Respondent is not permitted to use the EPSON mark. At no point during the Domain Names' registration has the Respondent been commonly known by the trade mark EPSON. 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. 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. Furthermore the Respondent is not an authorised distributor of the Complainant.

6.3.2 The Domain Names are likely to confuse Internet users.

6.3.2.1 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. 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.

6.3.2.2 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. The Respondent's use clearly employs the fame of the EPSON mark to mislead users into visiting its website instead of the Complainant's.

6.3.2.3 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. DRS experts have recognised this in previous cases and have found that it is competent to consider the likelihood of confusion, and the potential for disruption or detriment to a complainant business, arising out of the use of a domain, as being capable of amounting to an Abusive Registration, even though the strict criteria of paragraph 3(a)(ii) may not apply. See for example PDG Graphics Ltd v PDGraphics Ltd [See: Annex 9 - DRS 00526] and HQUK Ltd. -v- Headquarters [See: Annex 10 - DRS 01405]. In Seiko UK Limited v. Designer Time/Wanderweb [See: Annex 11 - DRS 00248] the Expert's finding that the evidence on confusion adduced by the Complainant was "at least indicative of a likely problem" was upheld on appeal as sufficient to show abusive registration.

6.3.2.4 The Complainant's view is further supported by the decision in Seiko Epson Corporation v. Inkking [See: Annex 12 – DRS 1796]. In that case the respondent used the domain name to sell supplies relating to the Complainant's products. The expert noted:

"In this case, I consider that there is an inherent misrepresentation constituted by the respondent's use of the domain name 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 and that I am entitled to reach that view without their [sic] 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." [Emphasis added by Complainant]

6.3.2.5 Finally, the Complainant further contends 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 should be considered Abusive in terms of the Policy.

6.3.3 Resellers cannot adopt the trading style of a principal.

6.3.3.1 It was held on appeal in Seiko [supra] that an entity cannot adopt the trading style or trade marks of a manufacturer in order to resell their products, whether or not they are authorised distributors. The Appeal panel noted:

"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."

6.3.3.2 Furthermore, while not binding on the Expert, this principle is also enshrined in European trade mark law following the decision in Bayerische Motorenwerke AG (BMW) and BMW Nederland BV v. Deenik [See Annex 13 – 1999 ETMR 339]. The Complainant contends that the facts in the current case mirror those in Seiko and BMW v. Deenik and that the Respondent's use of the Domain Names is thereby Abusive in terms of the Policy.

6.3.4 Pattern of registrations.

6.3.4.1 The Complainant contends that the Respondent is engaged in a pattern of registrations corresponding to well known names or trade marks in which the Respondent has no apparent rights in terms of Policy 3(a)(iii). These include the following domains [See: Annex 6 for WHOIS print outs]

canon-inkjet-cartridge.co.uk hp-inkjet-cartridge.co.uk lexmark-inkjet-cartridge.co.uk

These domain names relate to and include the well known marks of other peripheral manufacturers engaged in a similar business to the Complainant and include Hewlett Packard, Lexmark and Canon.

6.3.5 No factors showing Domain Names are not Abusive Registrations.

6.3.5.1 The Complainant further contends that the Respondent cannot avail itself of the factors in paragraph 4 of the Policy showing that the Domain Names are not Abusive Registrations.

6.3.5.1.1 In terms of paragraph 4(A)(i)(a) of the Policy, the Respondent cannot have used the Domain Names in connection with a genuine offering of goods and services as no offering of third party goods under the name of the EPSON registered trade mark, as conducted by the Respondent, could be considered as genuine.

6.3.5.1.2 In terms of 4(A)(i)(b) of the Policy The Respondent has never been known by the names under dispute - the Respondent's trading name is Calibre Computing and/or Cybercorp Enterprises.

6.3.5.1.3 In terms of 4(A)(i)(c) of the Policy, the web site to which the Domain Names resolve are concerned with commercial activity; they were therefore clearly not registered for non-commercial, tribute or critical purposes.

6.3.5.1.4 Finally, the Domain Names cannot, in terms of Section 4(A)(ii) of the Policy, be described as generic or descriptive. Given the inclusion of the Complainant's EPSON mark the Domain Names clearly refer to and were registered with the Complainant in mind, to trade off and benefit from confusion with the mark and its extensive reputation.

Respondent's Case:

6.2.1 As noted above, no Response has been received.

Discussion and Findings:

General

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

ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration."

Seiko v Designer Time

The Complainant's Rights

Seiko v Designer Time

Consorio Del Prosciutto Di Parma v Vital Domains Ltd

Hanna-Barbera v Graeme Hay

LTJ Diffusion v Sadas Vertbaudet

Epson-stylus-ink-cartridges

Sabel v Puma

Lloyd Schuhfabrik Meyer v Klijsen Handel

only

Abusive Registration

"Abusive Registration means 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"

The Authorities

10.1 The Complaint's case –and the bulk of its submissions – rest on 2 authorities: BMW v Deenik, Case C-63/97 ECJ, and the decision of the Appeal Panel in Sekio (above) and I will deal with these first.

10.2 In BMW v Deenik (above) the ECJ had to consider whether BMW could prohibit a second hand car dealer and repairer from using BMW in his advertisements, in terms; "Repairs and maintenance of BMWs" and "Specialist in BMWs." The decision of the ECJ made clear that the dealer was entitled to resell the BMWs by reference to their trade marks as the products had already been placed on the market in the EU with the consent of the proprietor of the marks—BMW. In doing so, the dealer was entitled to use the trade mark in advertising, subject to fairness which meant he should not use the mark in such a way as to suggest that he was affiliated with or connected with BMW. The requirement of fairness encompasses the legitimate interests of the trade mark owner in the value of its trade mark, the distinctive character and repute of which should not be taken unfair advantage of by competitors and others.

10.3 The result of BMW v Deenik (above), is then that trade mark owners can only complain if resellers use the mark in advertising in such a way that it:

"… may give rise to the impression that there is a commercial connection between the reseller and the trade mark proprietor, and in particular that the reseller's business is affiliated to the trade mark proprietor's distribution network or that there is a special relationship."

The Court said it was a question of fact in each case whether the advertising creates the impression that there is a connection.

10.4 Applying this then –the Respondent is entitled to resell Epson branded goods and to use the Epson trade mark in its advertising. The Complainant accepts that the sales are unobjectionable –at §6.3 above, but does not appear to appreciate that the Respondent is entitled to use the trade marks in its advertising, as it says at §6.3.1.1, that the Respondent is not entitled to use the Epson trade mark. That is not correct. The Respondent is entitled to use it, provided it does not suggest a commercial connection – primarily here –does not hold itself out as an authorised distributor.

10.5 In Sekio v Designer Time/Wanderweb (above), which the Complainant also relies upon, the Appeal Panel said as follows and although this is long –it is worth setting out in full:

"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".

10.6 Both BMW and Seiko above have been the subject of numerous subsequent DRS decisions, including: the Delloutlet case DRS 1805; the Vodafoneretail case DRS 445; two different decisions involving the Complainant and the Epson mark – DRS 2944 and DRS 2962, and many many more. In a recent case, Skovby v Valentine DRS 02316, the Complainant was a Danish furniture maker and the Respondent, a UK designer who had created a website for a UK furniture retailer which stocked the Complainant's products. The expert after referring to the decision of the Appeal Panel in Seiko said at §24 et seq:

"It is not, at first reading, quite clear whether the Appeal Panel in DRS 00248 considered that any registration of a domain name incorporating a trademark by someone other than the registered proprietor is an abusive registration; certainly the third paragraph quoted above suggests that at least some members of the Panel held that view. However, this is inconsistent with the general tenor of the passage, in which the Panel set out that there were situations in which such a registration was not abusive, declined to provide guidelines, and then sought to find evidence to support the existence of the prohibited representation. In my view, this is the correct approach. If there can be legitimate registrations of registered trademarks by non-proprietors, it seems to me that, in order to establish abuse for the purposes of the DRS, the Complainant must provide some justification by way of supporting evidence of the abusive nature of the registration. It is insufficient, in my view, simply to assert ownership and demand transfer although, as demonstrated by the actual decision in DRS 00248, the evidential burden may not be particularly difficult to discharge. In my view, for the reasons set out above, neither the Respondent in this case nor his client has overstepped the line drawn in BMW v. Deenik since the use to which the Domain Name has been put does not, in my view, give rise to any representation or suggestion that Back in Action's website is in some way approved or official or that Back In Action is in some way connected with the Complainant. From the information I have seen, Back in Action clearly trades under its own style, and has not attempted, so far as I can tell (and it is not alleged) to clothe itself in the Complainant's identity at all; in particular, it has not used the Complainant's registered graphics on its website, and, in fact, does not even mention the name "Skovby" in any of the text. There is no evidence of any actual confusion having been caused, and no suggestion (of the kind which existed in DRS 00248) that any confusion might occur. In my view, the necessary evidential link between the registration of the Domain Name and the prohibited representation has not been made."

10.7 I agree with this. Either it is a first come, first served, registration system or it is not. The use of domain names is a valid, and indeed, very popular method of advertising today as are metatags –including those which are registered trade marks—also now acceptable, see Reed v Reed Business Information [2004] EWCA Civ 159 at §144 et seq. Both respond to a search engine request for information by pointing the browser to a website although metatags operate invisibly whereas a domain name can be seen in the browser. I do not think it can be said that today however, anyone is confused by either method –provided the site itself does not make any misrepresentation. As advertising, the registration of a domain name falls within the rule in BMW, so evidence is required that the Respondent has stepped over the line and made a representation that it has a commercial connection with the Complainant and/or its parent.

Application

11.1 Certainly the Respondent's site itself does not make any suggestion that it is anything other than the site of Calibre Computing –a business that sells computer accessories of various brands, including Epson. The site does not make any representation that the Respondent is, or is connected to, the proprietor of the trade marks of the various brands. I do not believe anyone would think otherwise. There is no suggestion whatsoever that the site is that of an authorised distributor.

11.2 The Complainant suggests, at §6.3.2.1, internet users would be looking for a site operated by a Complainant when they type the names/marks into a search engine. I doubt that very much. Consumers will be looking for the nearest and cheapest stockist no doubt –and they are unlikely to be concerned at whether or not it's an authorised dealer, see §6.3.2.2 above. I therefore reject likelihood of confusion. I do not believe there is such a likelihood. No evidence of confusion has been submitted and I have already found that the site makes no representation that it is connected to the Complainant –see §6.3.3 above. For these same reasons, I do not consider that there has been any unfairness or disruption. No evidence of unfair disruption was submitted. On the contrary, bearing in mind that the Complainant or any of its authorised dealers could have registered the Domain Names, it is fair competition.

11.3 Nor do I find that the Complainant has made out pattern of registration for factor 3aiii of the Policy, as alleged at §6.3.4 above, based on the registrations of the words Canon and Lexmark in combination with similar descriptive words. No evidence has been provided that these are abusive and for the reasons given above, I doubt that they are.

11.4 Finally, I note that even if I had not found as I have, I would have found that these were not Abusive Registrations under factor 4aiA—use in connection with a genuine offering of goods or services. It is clear from the WHOIS searches that the Domain Names were first registered in 2003. I assume that the Respondent has been making use of them in connection with a similar website since that date. It may be that the Respondent's recent decision to start selling the Epson printers –as opposed to just paper and cartridges—as announced on the website, has prompted the Complainant to now take this action under the DRS.

Decision

12.1 I find that while the Complainant has Rights in the Domain Names, they are not Abusive Registrations in the hands of the Respondent. Accordingly, no action should be taken on this Complaint.

Victoria McEvedy

8 December 2005

Note 1 At Annex 1 to the Complaint, although I also receive copies of these from Nominet as a matter of course. [Back]

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	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> EPSON Europe BV v Cybercorp Enterprises [2005] DRS 03027 (8 December 2005) URL: http://www.bailii.org/uk/cases/DRS/2005/3027.html Cite as: [2005] DRS 03027, [2005] DRS 3027