Micro Electronics, Inc. v. SCOTT CANTRIL
Claim Number: FA2207002004346
Complainant is Micro Electronics, Inc. (“Complainant”), represented by Joseph M. Manak of Scarinci Hollenbeck LLC, New York, USA. Respondent is Scott Cantril (“Respondent”), New Mexico, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenterelectrons.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 14, 2022; the Forum received payment on July 14, 2022.
On July 18, 2022, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <microcenterelectrons.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 18, 2022, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 8, 2022, by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@microcenterelectrons.com. Also on July 18, 2022, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On August 15, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Micro Electronic, Inc. is in the business of computers, software, smart phones, and other electronics sales and repairs. Complainant asserts rights in the MICRO CENTER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,552,264, registered August 15, 1989). Respondent’s <microcenterelectrons.com> is identical or confusingly similar to Complainant’s MICRO CENTER trademark because it merely adds the generic term “electrons” and the generic top-level domain name (“gTLD”) “.com” to form the disputed domain name.
Respondent does not have rights or legitimate interests in the <microcenterelectrons.com> domain name. Respondent is not licensed or authorized to use Complainant’s MICRO CENTER mark and is not commonly known by the disputed domain name. Respondent also does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website selling competing goods of the same kind as Complainant. Additionally, the disputed domain name resolves to a copy of Complainant’s website, in an attempt of passing off as Complainant. At times, the disputed domain name resolves to an error webpage, and no goods or services are offered on those pages.
Respondent registered and uses the <microcenterelectrons.com> domain name in bad faith. Respondent registered and uses the disputed domain name for commercial gain by diverting users to its competing website. Additionally, Respondent uses the disputed domain name in attempts of passing of as Complainant. At times, the disputed domain name resolves to an error message. Furthermore, Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Micro Electronics, Inc. (“Complainant”), of Hilliard, Oh, USA. Complainant is the owner of the domestic registration for the mark MICRO CENTER which it has used continuously since at least as early as 1989 in connection with its provision of computer goods and services.
Respondent is Scott Cantril (“Respondent”) of Rio Rancho, NM, USA. Respondent’s registrar’s address is listed as Mumbai, India. The Panel notes the <microcenterelectrons.com> domain name was registered on or about May 15, 2022.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the MICRO CENTER mark based upon registration with the USPTO (e.g., Reg. No. 1,552,264, registered August 15, 1989). Registration of a mark with the USPTO is considered a valid showing of rights under Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (stating, “Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). The Panel here finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).
Respondent’s <microcenterelectrons.com> is identical or confusingly similar to Complainant’s MICRO CENTER mark. The addition of words that describe the goods or services do not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See The Toronto-Dominion Bank v. George Whitehead, FA 1784412 (Forum June 11, 2018) (“[S]light differences between domain names and registered marks, such as the addition of words that describe the goods or services in connection with the mark and gTLDs, do not distinguish the domain name from the mark incorporated therein per Policy ¶ 4(a)(i).”). Inclusion of a mark in its entirety sufficiently establishes confusing similarity under Policy ¶ 4(a)(i). See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”). Merely adding a gTLD does not distinguish a domain name from a mark under Policy ¶ 4(a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”). Here, the disputed domain name incorporates the mark in its entirety and merely adds the generic term “electrons” and the gTLD “.com”. The panel here finds the disputed domain name is confusingly similar to Complainant’s MICRO CENTER mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
Rights or Legitimate Interests
The Panel notes that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”). The Panel here finds that Complainant has set forth the requisite prima facie case.
Complainant argues Respondent does not have rights or legitimate interests in the <microcenterelectrons.com> domain name because Respondent is not licensed or authorized to use Complainant’s MICRO CENTER mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). Here, the WHOIS information for the disputed domain name lists the registrant as “SCOTT CANTRIL.” Further, Complainant’s assertions that Respondent has not ever been authorized to use Complainant’s mark is uncontroverted as no evidence is provided by Respondent to contest the same. The Panel here finds Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant contends Respondent also does not use the <microcenterelectrons.com> domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use by offering competing goods and passing off as Complainant. Under Policy ¶¶ 4(c)(i) and (iii), offering competing goods or services or passing off as a complainant does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use. See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business). Here, Complainant provides screenshots of the disputed domain name’s resolving website, which sells goods competing with Complainant while attempting to pass off as Complainant. The Panel here finds that Respondent does not use the disputed domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Additionally, Complainant contends that at times, Respondent’s <microcenterelectrons.com> domain name resolves to an error webpage, and no goods or services are offered on those pages. Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii). See Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”). Here, Complainant provides a screenshot of the disputed domain name’s inactive page, which displays an error message. The Panel finds the above to be additional evidence that Respondent does not provide a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses
the <microcenterelectrons.com> domain name in bad faith by
diverting users for commercial gain and passing off as Complainant.
Registration and use of a disputed domain name for commercial gain and passing
off supports a finding of bad faith per Policy
¶ 4(b)(iv). See Bittrex,
Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith
per Policy ¶ 4(b)(iv) where “Respondent
registered and uses the <lbittrex.com> domain name in bad faith by
directing Internet users to a website that mimics Complainant’s own website in
order to confuse users into believing that Respondent is Complainant or is
otherwise affiliated or associated with Complainant.”).
See also Indeed, Inc. v. Zhiteng Sun, FA 1751940 (Forum Nov. 1, 2017) (finding that the respondent's
use of <lndeed.net> to misrepresent itself as the complainant by
imitating the complainant’s website design supported a finding of bad faith).
The Panel here again notes Complainant’s screenshots of the disputed domain
name’s resolving website, which offers goods competing with Complainant while
attempting to pass off as Complainant. The Panel finds Respondent registered
and uses the disputed domain name in bad faith under Policy ¶4(b)(iv).
Additionally, Complainant contends Respondent’s <microcenterelectrons.com> domain name sometimes resolves to an error webpage, which is further evidence of registration and use in bad faith. Registration and use of a domain name for an inactive website indicates bad faith under Policy ¶ 4(a)(iii). See CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018) (“Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.”). The Panel again notes screenshots provided of the disputed domain name’s resolving website, which shows that the webpage sometimes remains inactive. The Panel here finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Further, Complainant argues that Respondent registered the <microcenterelectrons.com> domain name with bad faith actual knowledge of Complainant’s rights in the MICRO CENTER mark. Under Policy ¶ 4(a)(iii), incorporating a mark which has long-standing notoriety into a domain name, while passing off as Complainant at the resolving website, may be evidence of actual knowledge of a Complainant’s rights in a mark. See AutoZone Parts, Inc. v. Ken Belden, FA 1815011 (Forum Dec. 24, 2018) (“Complainant contends that Respondent’s knowledge can be presumed in light of the substantial fame and notoriety of the AUTOZONE mark, as well as the fact that Complainant is the largest retailer in the field. The Panel here finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith registration and use under Policy ¶ 4(a)(iii).”). The Panel notes that Complainant’s MICRO CENTER mark is incorporated into the disputed domain name, and Respondent attempts to pass off as Complainant at the resolving website. The Panel here finds Respondent had actual knowledge of Complainant’s rights in the mark and therefore registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
DECISION
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <microcenterelectrons.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: August 29, 2022
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