Micro Electronics, Inc. v. Domain Admin
Claim Number: FA1912001873840
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, New York, USA. Respondent is Domain Admin (“Respondent”), United States, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenter.org>, registered with Network Solutions, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 4, 2019; the Forum received payment on December 4, 2019.
On December 9, 2019, Network Solutions, LLC confirmed by e-mail to the Forum that the <microcenter.org> 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 December 13, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 2, 2020 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@microcenter.org. Also on December 13, 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On January 6, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 made following contentions.
Complainant, Micro Electronics, Inc., is in the business of selling computers, computer services and software and networking products. Complainant has 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 Aug. 15, 1989). Respondent’s <microcenter.org> domain name is identical and/or confusingly similar to the MICRO CENTER mark, as it contains Complainant’s mark in its entirety, merely adding the “.org” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <microcenter.org> domain name. Respondent is not permitted or licensed to use Complainant’s MICRO CENTER mark and is not commonly known by the disputed domain name. Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent offers the disputed domain name for sale. Furthermore, Respondent uses the <microcenter.org> domain name to redirect users to Respondent’s website that hosts pay-per-click advertisements.
Respondent has registered and uses the <microcenter.org> domain name in bad faith. Respondent offers the disputed domain name for sale. Respondent has engaged in a pattern of bad faith registration and use. Respondent is attempting to attract Internet users to its competing website for commercial gain. Additionally, Respondent used a privacy service to conceal its identity.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of selling computers, computer services and software and networking products.
2. Complainant has established its trademark rights in the MICRO CENTER mark based upon registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,552,264, registered Aug. 15, 1989).
3. Respondent registered the <microcenter.org> domain name on March 17, 2003.
4. Respondent has offered the domain name for sale and uses it to redirect users to Respondent’s website that hosts pay-per-click advertisements.
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”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant claims rights in the MICRO CENTER mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of its USPTO registrations for the MICRO CENTER mark (e.g., Reg. No. 1,552,264, registered Aug. 15, 1989). Therefore, the Panel finds that Complainant has rights in the MICRO CENTER mark per Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MICRO CENTER mark. Complainant submits that the <microcenter.org> domain name is confusingly similar to the MICRO CENTER mark as Respondent incorporates the mark in its entirety and adds the “.org” gTLD. Additions of a gTLD to a complainant’s mark is irrelevant in determining whether the disputed domain name is confusingly similar. See Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel agrees with Complainant and finds that Respondent’s <microcenter.org> domain name is identical and/or confusingly similar to Complainant’s MICRO CENTER mark per Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established 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 finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MICRO CENTER trademark and to use it in its domain name in its entirety;
(b) Respondent registered the <microcenter.org> domain name on March 17, 2003;
(c) Complainant alleges and has established by detailed evidence that Respondent has gone to inordinate lengths to conceal its identity and location and to present false information on those issues. It is clear from the evidence that Respondent has engaged in what Complainant accurately describes as a shell game, showing beyond any doubt that Respondent has no right or legitimate interest in the disputed domain name;
(d) Respondent has offered the domain name for sale and uses it to redirect users to Respondent’s website that hosts pay-per-click advertisements;
(e) Respondent has engaged in these activities without the consent or approval of Complainant;
(f) Complainant argues that Respondent has no rights or legitimate interests in the <microcenter.org> domain name as Respondent is not 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 can support a finding that a respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged, under Policy ¶ 4(c)(ii). 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.); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent has been authorized to register a domain name using a complainant’s mark supports a finding that respondent does not have rights or legitimate interests in the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel notes that a privacy service was used by Respondent. As a result, the Panel notes that the WHOIS information of record identifies registrant as “Domain Admin (Registrant Organization: Private Registrations Aktien Gesellschaft)”. Furthermore, there is no evidence in the record to suggest Respondent was authorized to use Complainant’s MICRO CENTER mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name;
(g) Moreover, Complainant argues that Respondent is not using the <microcenter.org> domain name in connection to a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent offers the disputed domain name for sale for over $5000. Attempting to sell a domain name for an amount in excess of out-of-pocket costs does constitute as a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii). See University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“The Panel finds Respondent’s willingness to sell this <perifacts.com> domain name in excess of out-of-pocket registration costs weighs against Respondent’s case for rights or legitimate interests in the domain name.”). Here, Complainant provides screenshots of the disputed domain name which resolves to a parked webpage which currently offers the disputed domain name for sale for $5000. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii);
(h) Complainant alleges that Respondent uses the disputed domain name to host a parked webpage that contains links to third party websites which compete with Complainant’s business. Use of a domain name to host a parked webpage that contain third party links to Complainant’s competitors may not be considered to be a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Coachella Music Festival, LLC v. josh greenly / All Access Tickets, FA1507001629217 (Forum Aug. 10, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name as required under Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), where the respondent was using the disputed domain name to host a web page that featured links to services that competed with those of the complainant); see also Insomniac Holdings, LLC v. Mark Daniels, FA 1735969 (Forum July 15, 2017) (”Respondent’s use of <edcorlando.xyz> also does not qualify as a bona fide offering… the <edcorlando.xyz> domain name resolves to a site containing pay-per-click hyperlinks and advertisements… Since these kinds of advertisements generate revenue for the holder of a domain name, they cannot be noncommercial; further, they do not qualify as a bona fide offering.”). Here, Complainant provides screenshots of the disputed domain name’s resolving websites which shows multiple links to websites that directly compete with Complainant’s business. Therefore, the Panel finds that the Respondent lacks rights or legitimate interests with respect to the disputed domain name pursuant to Policy ¶¶ 4(c)(i) and (iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant claims Respondent registered and uses the <microcenter.org> domain name in bad faith. Specifically, Complainant alleges that Respondent attempts to sell the <microcenter.org> domain name. Offering a domain name for sale for far more than its estimated out-of-pocket costs incurred in initially registering the disputed domain name is evidence of bad faith per Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). As previously mentioned, Complainant provides screenshots of the disputed domain name which resolves to a parked webpage which currently offers the disputed domain name for sale for $5000. See Amend. Compl. Ex. C. Furthermore, Complainant contends that the standard price for a domain name from Network solutions is $35. Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i).
Secondly, Complainant argues that Respondent has engaged in a pattern of bad faith registration and use. A respondent’s prior adverse UDRP history may reflect a pattern of bad faith registration under Policy ¶ 4(b)(ii). See Zynga Inc. v. Ryan G Foo / PPA Media Services, FA 1650448 (Forum Jan. 14, 2016) (finding bad faith per Policy ¶ 4(b)(ii) because the complainant demonstrated the respondent had a history of adverse UDRP findings, holding: “Respondent is a serial cybersquatter.”).Here, Complainant contends that Respondent is a serial cybersquatter as evidenced by numerous cases against “Domain Admin/ Private Registrations Aktien Gesellschaft”. Complainant provides an extensive list of UDRP cases against Respondent to support this assertion and Complainant’s research has shown beyond any doubt that Respondent has been motivated by bad faith. Therefore, the Panel finds that the Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(ii).
Thirdly, Complainant claims Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, users to the disputed domain name which features click-through advertisements that redirect users to Complainant’s competitors. Using a confusingly similar domain name to disrupt a complainant’s business and commercially benefit via competing, pay-per-click links can evince bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). Google Inc. v. James Lucas / FireStudio / Jameschee / FIRESTUDIO / SEONG YONG, FA1502001605757 (Forum Apr. 7, 2015) (“This Panel agrees that Respondent’s inclusion of advertisements to likely reap click-through fees is an example of bad faith pursuant Policy ¶ 4(b)(iv).”); see also American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iii)”). Here, Complainant contends that Respondent’s use of the disputed domain name is intended to mislead Internet users and disrupt Complainant’s business by diverting Internet traffic away from Complainant’s site to Respondent’s website. Complainant then claims Respondent hosts links to third party websites that compete directly with Complainant’s business to generate click-through advertisement revenue. Complainant provides a screenshot of Respondent’s use of the domain name’s resolving webpage to support its allegations. Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶¶ 4(b)(iii) and/or (iv).
Fourthly, Complainant alleges and has established by detailed evidence that Respondent has gone to inordinate lengths to conceal its identity and location and to present false information on those issues. It is clear from the evidence that Respondent has engaged in what Complainant accurately describes as a shell game, showing beyond any doubt that Respondent registered and used the disputed domain name in bad faith.
Finally, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MICRO CENTER mark and in view of the conduct of Respondent in using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microcenter.org> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: January 9, 2020
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