Micros Systems, Inc. v. SFR Funding
Claim Number: FA1602001659618
Complainant is Micros Systems, Inc. (“Complainant”), represented by Emily J. Cooper of Holland & Hart LLP, Colorado, USA. Respondent is SFR Funding (“Respondent”), represented by Steven L. Rinehart, Utah, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsretail.com>, registered with Network Solutions, LLC.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 4, 2016; the Forum received payment on February 4, 2016.
On February 5, 2016, Network Solutions, LLC confirmed by e-mail to the Forum that the <microsretail.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 February 5, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 25, 2016 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@microsretail.com. Also on February 5, 2016, 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.
A timely Response was received and determined to be complete on February 24, 2016.
An Additional Submission was timely filed March 4, 2016 by Respondent.
An Additional Submission from Complainant was received on March 2, 2016. This submission was deficient, as it was received after the deadline for Complainant’s Submissions, and will not be considered.
On February 29, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns the MICROS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,946,015, registered May 3, 2005). Complainant uses the mark in connection with computer software, electronic cash registers and point-of-sale terminals. Complainant also owns the mark through common law rights, as Complainant first used and has continuously used the mark since 1977. The disputed domain name is confusingly similar to Complainant’s MICROS mark, because Respondent simply adds the generic term “retail” and the generic top-level domain (“gTLD”) “.com” to the mark.
2. Respondent lacks rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Respondent been licensed or authorized to use Complainant’s MICROS mark. Respondent has also not provided a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name. Rather, Respondent previously used the disputed domain name in 2000, until Complainant sent a demand letter to Respondent, requesting that Respondent transfer the disputed domain name to Complainant. Respondent then restarted the website, where Respondent used the website to offer hardware products that directly compete with Complainant’s business. Following further correspondence from Complainant, Respondent then removed all product offerings from the disputed domain name website and replaced it with an offer to sell the disputed domain name.
3. Respondent has registered and is using the disputed domain name in bad faith. Respondent has now placed an offer to sell the disputed domain name on its website. Respondent previously used the disputed domain name to offer products that compete with Complainant’s business. Finally, Respondent had actual and/or constructive knowledge of Complainant and its rights in the mark prior to registering the disputed domain name.
B. Respondent
1. Respondent registered the disputed domain name in 1999, which is long before Complainant registered its trademark. Further, the terms of the disputed domain name are generic, and thus have no trademark protection.
2. Respondent is using the disputed domain name to sell products that are described in the disputed domain name. Such use is connected with a bona fide offering of goods or services and demonstrates rights or legitimate interests in the disputed domain name.
3. Respondent could not have acted in bad faith, because Respondent registered the disputed domain name long before Complainant registered the MICROS mark. Further, Respondent has not offered the disputed domain name for sale.
4. Complainant’s behavior constitutes reverse domain name hijacking. Further, due to the abnormal length of time from when Respondent registered the disputed domain name to when Complainant filed this Complaint, the doctrine of laches must apply.
1. Respondent’s <microsretail.com> domain name is confusingly similar to Complainant’s MICROS mark.
2. Complainant has failed to establish that Respondent does not have any rights or legitimate interests in the <microsretail.com> domain name.
3. Complainant has failed to establish that Respondent registered or used the <microsretail.com> domain name in bad faith.
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.
Complainant uses the MICROS mark in connection with computer software, electronic cash registers and point-of-sale terminals. Complainant claims to own the MICROS mark through its trademark registration with the USPTO (Reg. No. 2,946,015, registered May 3, 2005). Prior panels have found, and this Panel may similarly find, that trademark registrations with the USPTO are sufficient for a complainant to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations [with the USPTO] establish Complainant's rights in the BLIZZARD mark.”).
Complainant notes that it also holds common law rights in the MICROS mark dating back to its first use of the mark in 1977. The Panel notes that a complainant may hold rights in a mark without having registered the mark. See Winterson v. Hogarth, D2000-0235 (WIPO May 22, 2000) (finding that the Policy does not require that a complainant’s trademark be registered by a government authority or agency in order for the complainant to establish rights in the mark).
Complainant believes it holds common law rights in the MICROS mark through its continuous use of the mark since at least 1977. Complainant argues that by 1995, Complainant’s point-of-sale systems were being used in more than 32,000 restaurants. Further, Complainant points to its use of domain names such as micros.com, which it has owned since 1991 as evidence. The Panel agrees with Complainant’s evidence and argument here, and the Panel finds that Complainant has demonstrated common law rights in the mark under Policy ¶ 4(a)(i). See Surecom Corp. NV v. Rossi, FA 1352722 (Nat. Arb. Forum Nov. 29, 2010) (holding that complainant had acquired secondary meaning in the mark, thereby establishing common law rights in the mark for purposes of Policy ¶ 4(a)(i), as a result of complainant’s continuous use of the CAM4 mark since 1999).
Complainant also argues that the disputed domain name is confusingly similar to Complainant’s MICROS mark, because Respondent has simply attached the generic term “retail” and the gTLD “.com” to the mark. Past panels have found that such changes are insignificant to a Policy ¶ 4(a)(i) analysis. See Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). Accordingly, the Panel holds that Respondent’s disputed domain name is confusingly similar to Complainant’s MICROS mark under Policy ¶ 4(a)(i).
While Respondent contends that the domain name is comprised of common and generic terms and as such cannot be found to be identical/confusingly similar to Complainant’s mark, the Panel finds that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Nat. Arb. Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Nat. Arb. Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).
The subject domain name, <microsretail.com> is confusingly similar to Complainant’s mark.
The Panel holds that Complainant has not established a prima facie case in support of its arguments that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Terminal Supply, Inc. v. HI-LINE ELECTRIC, FA 746752 (Nat. Arb. Forum Aug. 24, 2006) (holding that the complainant did not satisfactorily meet its burden and as a result found that the respondent had rights and legitimate interests in the domain name under UDRP ¶ 4(a)(ii)); see also Workshop Way, Inc. v. Harnage, FA 739879 (Nat. Arb. Forum Aug. 9, 2006) (finding that the respondent overcame the complainant’s burden by showing it was making a bona fide offering of goods or services at the disputed domain name).
Respondent argues that it has rights and legitimate interests in the disputed domain name. The record supports that Respondent uses the disputed domain name in connection with the words of the disputed domain name. Respondent believes that this demonstrates Respondent’s rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). The Panel agrees. The Panel finds that Respondent has rights or legitimate interests in the disputed domain name. See Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the <skyart.com> domain name to sell “digital and photo images of Southwest scenes, especially the sky” bestowed rights and legitimate interests in the domain name).
Complainant argues that Respondent has registered and is using the disputed domain name in bad faith. The fact is both the words micro and micros are generic – especially so in the tech world. Both entries are found in the English dictionary at http://dictionary.reference.com/browse/micro. Respondent registered a domain, which incorporates the pluralized version of micro only because the singular version was unavailable. Under the logic of Complainant, Complainant has rights to seize the domain names of Microsoft, Micro Instruments, Micro Instructional, and other NASDAQ companies making use of the formative expression micro. Further, the disputed domain does not wholly incorporate Complainant’s full tradename Micros Systems, Inc. and Complainant’s shortened MICROS trademark is generic across most classes of goods.
Complainant has failed to carry its burden as to this element.
Reverse Domain Name Hijacking
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), and finds that Complainant has not engaged in reverse domain name hijacking. See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).
The Panel concludes that the requested relief shall be DENIED.
Accordingly, it is Ordered that the <microsretail.com> domain name remain with Respondent.
John J. Upchurch, Panelist
Dated; March 11, 2016
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