Micro Electronics, Inc. v. Carolina Rodrigues / Fundacion Comercio Electronico
Claim Number: FA2101001928372
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, New York, USA. Respondent is Carolina Rodrigues / Fundacion Comercio Electronico (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenterpc.com>, registered with GoDaddy.com, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 14, 2021; the Forum received payment on January 14, 2021.
On January 15, 2021, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <microcenterpc.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 January 19, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 8, 2021 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@microcenterpc.com. Also on January 19, 2021, 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 February 9, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth 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 is in the business of selling computers, computer software, and other related products and services. Complainant has rights in the MICRO CENTER trademark 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 <microcenterpc.com> domain name is confusingly similar to Complainant’s MICRO CENTER trademark since it incorporates the entirety of the trademark, merely adding the generic term “pc” and the “.com” generic top-level domain (“gTLD”).
Respondent does not have rights or legitimate interests in the <microcenterpc.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s MICRO CENTER trademark. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead, the domain name is used to display a rotating series of webpages. Further, Respondent offers the domain name for sale.
Respondent registered and uses the <microcenterpc.com> domain name in bad faith. Respondent offers the domain name for sale. Respondent also has displayed a pattern of bad faith domain name registration. Additionally, Respondent uses the disputed domain name to direct users to a rotating series of webpages featuring competing advertisements, spyware alerts, and generic landing pages.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of the following U.S. trademark registrations:
No. 1,552,264 MICRO CENTER (word), registered August 15, 1989 for services in classes 37, 41 and 42;
No. 3,020,431 MICRO CENTER (word), registered November 29, 2005 for services in class 35;
No. 3,267,567 MICRO CENTER (word), registered July 24, 2007 for goods in class 9;
No. 3,267,627 MICRO CENTER (word), registered July 24, 2007 for goods in class 16;
No. 4,459,077 MICRO CENTER (word), registered December 31, 2013 for goods in class 2;
No. 4,747,365 MICRO CENTER (word), registered June 2, 2015 for services in class 42; and
No. 4,524,917 MICRO CENTER (logo), registered May 6, 2014 for services in class 35.
The disputed domain name <microcenterpc.com>, was registered on October 14, 2020.
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 Complainant asserts rights in the MICRO CENTER trademark based upon registration with the USPTO. Registration with the USPTO is generally sufficient to establish rights in a trademark per 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 evidence of its registration with the USPTO (e.g., Reg. No. 1,552,264, registered Aug. 15, 1989). Therefore, the Panel find that the Complainant has rights in the MICRO CENTER trademark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <microcenterpc.com> domain name is confusingly similar to Complainant’s MICRO CENTER trademark since it incorporates the entirety of the trademark, merely adding the generic term “pc” and the “.com” gTLD. Per Policy ¶ 4(a)(i), addition of a generic term and a gTLD is insufficient to overcome confusing similarity between a domain name and the mark it incorporates. See Bittrex, Inc. v. Sergey Valerievich Kireev / Kireev, FA 1784651 (Forum June 5, 2018) (holding that the domain name consists of the BITTREX mark and adds “the letters ‘btc’ and the gTLD .com which do not distinguish the Domain Name from Complainant’s mark.”). Complainant notes “pc” is an abbreviation for “personal computer,” which relates to Complainant’s business. The Panel agree with Complainant’s conclusion, and find that the disputed domain name is at least confusingly similar to Complainant’s trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Complainant argues that Respondent does not have rights or legitimate interests in the <microcenterpc.com> domain name because Respondent is not commonly known by the disputed domain name and is not authorized to use Complainant’s MICRO CENTER trademark. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name 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.). Additionally, lack of authorization to use a complainant’s trademark may demonstrate that the respondent is not commonly known by 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 WHOIS information of record in the present case lists the registrant as “Carolina Rodrigues / Fundacion Comercio Electronico,” and Complainant contends that it did not authorize Respondent’s use of the MICRO CENTER trademark. Therefore, the Panel find that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).
Complainant also argues that Respondent fails to use the <microcenterpc.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use and instead uses the domain name to display a rotating series of webpages. Use of a domain name to display various webpages may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii), particularly when each use does not qualify as a legitimate use. See MoneyGram International, Inc. v. Domain Admin / Whois Privacy Corp., FA1698585 (Forum Nov. 28, 2016) (“Where a domain name redirects Internet users to a rotating series of webpages, such use does not demonstrate rights or legitimate interests within the meaning of the Policy.”); see also 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).”).
Complainant provides screenshots of pages resolving from the disputed domain name, which include fake spyware alerts, listings of competitive computer products, advertisements for browser extensions, and error pages. The Panel therefore agree with Complainant that Respondent does not use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Further, Complainant claims that Respondent’s offer to sell the <microcenterpc.com> domain name suggests a lack of rights or legitimate interests. A general offer to sell a disputed domain name may suggest a lack of rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii). See 3M Company v. Kabir S Rawat, FA 1725052 (Forum May 9, 2017) (holding that “a general offer for sale… provides additional evidence that Respondent lacks rights and legitimate interests” in a disputed domain name). Complainant provides a screenshot from a domain auction site, where <microcenterpc.com> is being offered for $999.00 USD. Based on that fact, the Panel therefore agree that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and uses the <microcenterpc.com> domain name in bad faith because Respondent offers the domain name for sale. Offering a disputed domain name for sale in excess of out-of-pocket costs suggests bad faith pursuant to Policy ¶ 4(b)(i). See loanDepot.com, LLC v. Expired domain caught by auction winner.***Maybe for sale on Dynadot Marketplace*** c/o Dynadot, FA 1786281 (Forum June 8, 2018) (“Complainant shows that Respondent offers the disputed domain name for sale for $950, no doubt above its out-of-pocket costs. The Panel finds that this constitutes bad faith under Policy ¶ 4(b)(i). ”). As noted above, Complainant provides evidence to support that argument. The Panel therefore find bad faith pursuant to Policy ¶ 4(b)(i).
Complainant also argues that Respondent has displayed a pattern of bad faith domain name registration. Previous registration of confusingly similar domain names and negative UDRP decisions against a respondent may support a finding of bad faith pursuant to Policy ¶ 4(b)(ii). See Bullock v. Network Operations Ctr., FA 1269834 (Forum Aug. 10, 2009) (“Complainant contends that Respondent has a longstanding history of cybersquatting . . . . The Panel finds that Respondent has engaged in bad faith registration and use under Policy ¶ 4(b)(ii).”); see also DIRECTV, LLC v. michal restl c/o Dynadot, FA 1788826 (Forum July 5, 2018) (“The record contains evidence of Respondents previous eleven UDRP actions, all of which resulted in the transfer of the domain names, thus establishing bad faith per Policy ¶ 4(b)(ii).”). Complainant claims that Respondent is a known serial cybersquatter and notes that Respondent previously engaged in cybersquatting against the Complainant. The Panel agree with Respondent and find bad faith pursuant to Policy ¶ 4(b)(ii).
Finally, Complainant claims that Respondent uses the <microcenterpc.com> domain name to direct users to a rotating series of webpages featuring competing advertisements, spyware alerts, and generic landing pages. Use of a disputed domain name to resolve to a series of webpages supports a finding of bad faith under Policy ¶ 4(a)(iii), so long as one or more of those webpages constitute a bad faith use. Harry Winston, Inc. v. Domain Admin / Whois Privacy Corp., FA 1749276 (Forum Oct. 18, 2017) (finding the respondent acted in bad faith by using “a technique known as FFDNS to divert internet users to a rotating series of webpages unrelated to or in competition with Complainant’s business, some of which attempt to install malware onto users’ computers.”); see also Gardens Alive, Inc. v. D&S Linx, FA 203126 (Forum Nov. 20, 2003) (“Respondent registered and used the <my-seasons.com> domain name in bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv) because Respondent is using a domain name that is confusingly similar to the MYSEASONS mark for commercial benefit by diverting Internet users to the <thumbgreen.com> website, which sells competing goods and services.”). As previously noted, Complainant provides screenshots of pages resolving from the disputed domain, which include fake spyware alerts, listings of competitive computer products, advertisements for browser extensions, and error pages. Based on that, the Panel agrees with Complainant and find bad faith under Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microcenterpc.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: February 12, 2021
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