Micro Electronics, Inc. v. National Association of Solution Providers
Claim Number: FA1904001838655
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, New York, USA. Respondent is National Association of Solution Providers (“Respondent”), represented by Archie Biggs / Daryle Salisbury, Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenterinc.com>, registered with Launchpad.com Inc.
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.
David P. Miranda, Esq., as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 12, 2019; the Forum received payment on April 12, 2019.
On April 16, 2019, Launchpad.com Inc. confirmed by e-mail to the Forum that the <microcenterinc.com> domain name is registered with Launchpad.com Inc. and that Respondent is the current registrant of the name. Launchpad.com Inc. has verified that Respondent is bound by the Launchpad.com Inc. 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 April 19, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 9, 2019 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@microcenterinc.com. Also on April 19, 2019, 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 May 9, 2019.
On May 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David P. Miranda, Esq., 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
Complainant is in the business of selling computers, electronic hardware, software and related services such as computer repair, online and in several brick and mortar locations. Complainant has rights in the MICRO CENTER mark through its multiple registrations of the mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,552,264, registered Aug. 15, 1989), with claimed date of first use dating to 1980. Respondent’s <microcenterinc.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates the entirety of the mark and merely adds the letters “inc” and the generic top-level domain (“gTLD”) “.com.”
Complainant contends Respondent has no rights or legitimate interests in the <microcenterinc.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to offer products and services that directly compete with Complainant in the computing and electronics market. Respondent lacks rights or legitimate interest in the disputed domain name as the corporation to whom the disputed domain name is registered was dissolved on July 15, 2018.
Respondent registered and uses the <microcenterinc.com> domain name in bad faith. Respondent uses the disputed domain name to resolve to a website that uses Complainant’s mark, deceiving consumers into believing it is a site used and owned by Complainant. Additionally, Respondent offers goods and services that are the same or similar to those offered by Complainant.
B. Respondent
Respondent was a registered Michigan Corporation doing business as Microcenter, Inc. and claims to have been doing business in Michigan before Complainant began conducting business in Michigan. In a previous dispute, the parties agreed to redirect misplaced customer calls to the appropriate store. Additionally, Respondent claims its business focus differs from Complainant’s focus. Respondent claims it doesn’t use Complainant’s mark but has prior rights and a legitimate interest in the disputed domain name, <microcenterinc.com> domain name registered on January 18, 2013.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain name at issue shall be transferred from Respondent to the Complainant.
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 asserts rights in the MICRO CENTER mark based on registration of the mark with the USPTO (e.g. Reg. No. 1,552,264, registered Aug. 15, 1989). Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, Complainant has established rights in the MICRO CENTER mark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <microcenterinc.com> domain name is identical or confusingly similar to Complainant’s mark as it incorporates Complainant’s mark entirely and merely adds the letters “inc” and the gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel finds the <microcenterinc.com> domain name is confusingly similar to the MICRO CENTER mark under Policy ¶ 4(a)(i).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
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”).
Complainant argues Respondent lacks rights or legitimate interest in the <microcenterinc.com> domain name as Respondent is not commonly known by the disputed domain name nor has Respondent been given license or consent to use the MICRO CENTER mark or register domain names using Complainant’s mark. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). The WHOIS information for the disputed domain name lists the registrant as “National Association of Service Providers.”
Complainant contends that Respondent does not use the disputed domain name to make a bond fide offering of goods or services or a legitimate noncommercial or fair use. Complainant argues Respondent instead uses the <microcenterinc.com> domain name to offer products and services that directly compete with Complainant in the computing and electronics market. Using a disputed domain name 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 or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (“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).”). Here, Complainant provides screenshots of the resolving webpage of the disputed domain name which displays computer products and computer repair services. See Amend. Compl. Ex. C.
Complainant also argues that Respondent lacks rights or legitimate interest in the <microcenterinc.com> domain name as the resolving webpage suggests that it is operated by a corporation that dissolved on July 15, 2018. A dissolved corporation may not have rights or legitimate interest in a disputed domain name. See Sebastian International, Inc. v. Sebastian Contracting Services, Inc., FA1106694 (Forum Jan. 7, 2008) (“As the Respondent is dissolved, it cannot have any further rights or legitimate interests in the domain name.”). Complainant provides a screenshot of the Michigan Department of Licensing and Regulatory Affairs corporate filing for Respondent, showing Respondent is dissolved as of July 15, 2018. See Amend. Compl. Ex. G.
The Panel finds Respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i), (ii) or (iii).
Complainant contends that Respondent registered and uses the disputed domain name in bad faith because the resolving webpage displays Complainant’s mark and offers for sale goods and services the same as or similar to Complainant’s business. Complainant argues that these services compete with Complainant and confuse consumers into believing Respondent is affiliated with Complainant. Use of a disputed domain name to pass off as a complainant and offer goods or services in direct competition with the complainant can demonstrate bad faith under Policy ¶¶ 4(b)(iii) and/or (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business). Complainant provides screenshots of the resolving webpage of the disputed domain name which displays computer products and computer repair services. See Amend. Compl. Ex. C.
If Respondent’s registration of the <microcenterinc.com> domain name predates Complainant’s first claimed rights in the MICRO CENTER mark, Complainant generally cannot prove registration in bad faith per Policy ¶ 4(a)(iii), as the Policy requires a showing of bad faith registration and use. See Platterz v. Andrew Melcher, FA 1729887 (Forum Jun. 19, 2017). Respondent offers no proof of registration or use of the domain name prior to January 18, 2013 or of any use prior to Complainant’s presumptive use and registration.
The Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microcenterinc.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: May 24, 2019
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