EpsonUSA.com Domain Name Dispute Between Epson and Action Office Supplies, Inc Goes to the Wire

November 16, 2006; 03:26 AM
Lakewood, NJ - Papers filed in an arbitration case suggest Epson tried to take the domain "EPSONUSA.com" name away in a reverse cyber-hijacking case. Action Office Supplies bought the domain name to promote Epson products. The dispute is going to the National Arbitration Forum, case FA0610000823033.

The filed papers claim:

In 2001, Action Office Supplies, Inc. a registered small business - minority owned office supply company, developed their new Ecommerce software and wanted a website featuring Epson and Seiko products. The domain name epsonusa.com was the logical choice after researching and finding out that the name had become available when Epson did not renew the registration and allowed their license to the name to expire.

At that time, Sonny Arora, President of Action Office Supplies, Inc., was informed by a trademark attorney that as long as he used the name epsonusa.com to sell Epson products and not offer the name for sale back to Epson, there would not be any trademark infringement. In fact, Action Office Supplies added a disclaimer on their website which redirects customers looking for Epson's corporate website back to Epson's home page.

Approximately one year later, Epson made contact with Action Office Supplies in a generic form letter in which they asked for the name back. Mr. Arora contacted the law firm representing Epson and informed them Epson had allowed the name EpsonUSA.com to expire. He pointed out that he is a vendor of Epson products and has strong relationships with major buying groups that represent the entire Epson line. Mr. Arora reiterated that it has never been Action's intent to obtain EpsonUSA.com to sell back to Epson after Epson let the name expire in 2001 , and that Epson.com is Epson's official corporate website.

According to the response to the complaint filed by Action Office Supplies, Epson's attorneys contacted Action Office Supplies at that time, saying that they were looking for cyber squatters and didn't realize the direct relationship that Action Office Supplies had with Epson and that it was not a problem to use the name when selling authorized Epson products.

Fast forward to 2005 where a new set of lawyers for Epson are apparently hounding Action Office Supplies, which now has grown to four divisions including Action Office Supplies, Action Office Interiors, Action Network Solutions, and Action Print Solutions. This time, in filed papers with the NAF, lawyers for Epson state that they "do not care that Action Office Supplies is an authorized vendor for Epson. They state that Epson wants the name epsonusa.com back and they want it now." Epson argues that epsonusa.com is not being used to sell Epson products at all but is used to sell competitors products only, such as Hewlett Packard printers and toners and Lexmark products and commercial furniture for businesses.

Sonny Arora denies all the assertions by Epson in regards to epsonusa.com and states that "the website clearly states that we are selling Epson Products and how to find all the major Epson products we carry on our current online website, Cheapofficesupplies.com, which targets small and home run businesses and on our Corporate customer website, actoff.com. By simply typing "EPSON" in our search field on Cheapofficesupplies.com, hundreds of Epson's products are shown to our customers."

Cheapofficesupplies.com is one of the top 15 websites on Google for simple keyword phrases such as "Office Supplies", and competes directly against Office Max, Staples and Office Depot as the site to find better priced office supplies over our competitors.

Mr. Arora continued to say that "I'm not sure where this will take us, but we're not cyber squatters, and we're fully authorized to promote, ship and sell all Epson products. We're stunned that Epson would attack our small company in this way after stating in 2002 that they have no issues with Action Office Supplies using the domain name epsonusa.com."

The National Arbitration Forum in conjunction with ICANN will rule within 14 days.

Action Office Supplies is a registered small business, minority owned company. Action Office Supplies is located at 687 Prospect St, Ste 455, Lakewood, NJ 08701.

Action Office Supplies, www.actoff.com, www.cheapofficesupplies.com, Phone: 732-534-3000, Fax 732-534-3016