Seiko Epson Corporation v Inkking [2004] DRS 1796 (30 July 2004)

BAILII is celebrating 24 years of free online access to the law! Would you consider making a contribution?
No donation is too small. If every visitor before 31 December gives just £1, it will have a significant impact on BAILII's ability to continue providing free access to the law.
Thank you very much for your support!

A Complaint in respect of epson-ink-cartridges.co.uk (the “Domain Name”) under Nominet UK's Dispute Resolution Service Policy (the “Policy”) was received from the Complainant on 28 May 2004. Nominet forwarded the Complaint to the Respondent and a Response was received on 22 June 2004 to which the Complainant lodged a Reply on 25 June 2004.

The dispute was not resolved by mediation and 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 9 July 2004. I was appointed as Independent Expert as of 16 July 2004 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.

The Complainant is a global corporation involved in the development, manufacture, sales, marketing and servicing of a wide range of products including computers, printers and other electronic devices and precision products. The Respondent sells ink cartridges for Epson and other computer printers from its website at www.inkking.co.uk. When Nominet accessed the Domain Name in response to the Complaint, it resolved to a web page at www.inkking.co.uk/epson-inkjet-compatible-cartridges-inkking/.

(a) The Complainant, Seiko Epson Corporation, brings this complaint by its attorney Epson Europe BV which acts under a Power of Attorney granted on or about 1 March 2003;

(b) The Complainant has a global intellectual property portfolio including seven UK registered trade marks for the word EPSON covering classes of goods including computers, computer printers and ink cartridges for computer printers;

(c) Through its subsidiary EPSON Europe, the Complainant is a major manufacturer and supplier of computer peripherals in the European region, selling over 45 million units of EPSON computer peripherals in the financial year 2002/03 with an estimated turnover from such sales of €1 billion euros (£675 million);

(d) EPSON Europe invests considerable sums marketing and advertising the Complainant’s brands, including EPSON, every year, resulting in high level brand awareness on the part of European consumers of peripheral products. The EPSON brand is one of the most widely recognised and is both well-known and famous;

(e) The Complainant has extremely strong Rights in the EPSON mark and the Domain Name is similar to that mark because:
(i) EPSON is an extremely well-known made up term and forms the first, dominant, most significant and distinctive element of the Domain Name;
(ii) the additional words “ink” and “cartridges” are not dominant, being generic and descriptive terms;
(iii) the additional words “ink” and “cartridges” are descriptive of products manufactured and sold by the Complainant placing the focus clearly on the EPSON element of the Domain Name; and
(iv) had the Domain Name not included the EPSON mark, its meaning and significance would have been entirely different, in that it would not relate specifically to the Complainant or its products;

(f) The Domain Name has been used by the Respondent in a manner which takes unfair advantage of and is unfairly detrimental to the Complainant’s Rights. The Domain Name is being used to draw traffic to the Respondent’s web site at www.inkking.co.uk causing significant unfair detriment to the Complainant and taking unfair advantage of its Rights.

(g) The Complainant maintains an extensive online presence though which it sells consumable such as inkjet cartridges, printer paper and laser consumables, in addition to a range of computer peripherals. During the last financial year EPSON Europe sold over 62,000 units of consumables throughout Europe via its various web sites. It is likely that Internet users who type in the Domain Name, or who find it through a search engine, will be looking for the site operated by the Complainant rather than the Respondent. The Domain Name is extremely likely to confuse Internet users trying to find replacement consumables for EPSON printers as a result of the incorporation of the EPSON mark in the Domain Name, for the use of which it also makes a false representation, in favour of the Respondent’s business, of a commercial connection with the endorsement by the Complainant;

(h) 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 larger numbers of users to the Respondent’s web site and increase sales of products offered there, to the detriment of the Complainant and its business;

(i) In support of its complaint, the Complainant has also provided documentary evidence of the Power of Attorney in favour of Epson Europe BV, its UK trade mark registrations and an Expert’s report by James Renger of Netrank Limited. Mr Renger’s report includes the following contentions:

(i) Both on 19 January 2004 and again on 20 May 2004 the Domain Name redirected to <http://inking.co.uk/epson-inkjet-compatible-cartridges-inkking> as a result of a “moved temporarily” HTTP HEADER redirect;
(ii) The effect of a “ moved temporarily” redirect is to cause search engines to assume that the page or domain is only temporarily out of action. It therefore keeps spidering the original domain and page in its index, applying its weightings to this domain and page for keyword relevancy. It also displays this domain and page in the search results that a browser sees, thus leading to potential brand confusion;
(iii) In his opinion, the use of the EPSON brand within the disputed domain name is likely to mislead viewers into believing that they will be visiting an official EPSON website, and it is also contributing to a high position for the domain for search terms containing the brand EPSON.

The Respondent filed a response to the Complaint in the following terms:
“We have already informed the owners agent that we are prepared to transfer the domain name in return for a small administrative fee to cover our original and costs to date.”

The Complainant states that although Paul Dockerill of the Respondent offered to transfer the Domain Name in the course of a telephone conversation with the agent of the Complainant, he never in fact followed this up by indicating what costs were being sought.

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

“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 seven UK registered trade marks in respect of the word EPSON registered at various times over the years from 1975 to 1997. 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. The question that arises, however, is whether the name EPSON is similar to the Domain Name (ignoring the suffix “.co.uk”), namely epson-ink-cartridges. I accept the submission of the Complainant that the words “ink” and “cartridge” are generic, descriptive terms with little significance, particularly in contrast with the very strong consumer recognition of the name EPSON. In those circumstances I am satisfied that “EPSON” is similar to “epson-ink-cartridges” and I find that the Complainant does have Rights in respect of a name or mark which is identical or similar to the Domain Name.

Abusive Registration

Paragraph 1 of the Policy defines “Abusive Registration” as 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.

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 into believing that they will be able to obtain genuine replacement consumables by visiting the website.
The evidence of Mr Renger is that the use by the Respondent of a “moved temporarily” redirect to the Respondent’s <inkking> website would reinforce the position of the Domain Name in search results.

In its very short response to the Complaint, the Respondent made no attempt to defend its use of the Domain Name and did not deal with any of the submissions by the Complainant or the evidence adduced on its behalf.

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 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.

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 so that even if the Respondent were selling genuine EPSON ink cartridges it would have considerable difficulty in resisting the Complaint. Where the products sold by the Respondent are not even genuine EPSON products, the position is clearly stronger.

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

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

	[Home] [Databases] [World Law] [Multidatabase Search] [Help] [Feedback]
	Nominet UK Dispute Resolution Service
You are here: BAILII >> Databases >> Nominet UK Dispute Resolution Service >> Seiko Epson Corporation v Inkking [2004] DRS 1796 (30 July 2004) URL: http://www.bailii.org/uk/cases/DRS/2004/1796.html Cite as: [2004] DRS 1796

Nominet UK Dispute Resolution Service