Micro Electronics, Inc. v. Gabriella Garlo
Claim Number: FA2104001940819
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, New York, USA. Respondent is Gabriella Garlo (“Respondent”), Brazil.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenter.coupons>, registered with NameCheap, 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.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 8, 2021; the Forum received payment on April 8, 2021.
On April 9, 2021, NameCheap, Inc. confirmed by e-mail to the Forum that the <microcenter.coupons> domain name is registered with NameCheap, Inc. and that Respondent is the current registrant of the name. NameCheap, Inc. has verified that Respondent is bound by the NameCheap, 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 14, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@microcenter.coupons. Also on April 14, 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 May 7, 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
The Complainant is a nation-wide company in the business of selling and repairing electronics including computers, networking equipment, accessories, and software. Complainant registered its MICRO CENTER trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,552,264, registered on Aug. 15, 1989). The disputed domain name, <microcenter.coupons> is identical or confusingly similar because it wholly incorporates Complainant’s MICRO CENTER trademark while merely adding “.coupons” as the generic top-level domain (“gTLD”) to form the domain name.
Respondent does not have any rights or legitimate interests in the <microcenter.coupons> domain name because Respondent is not commonly known by the <microcenter.coupons> domain name. Respondent is not using the <microcenter.coupons> domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because Respondent is using the disputed domain name to host pay-per-click links which redirect users to websites that compete directly with Complainant.
Respondent registered or uses the <microcenter.coupons> domain name in bad faith because Respondent causes disruption to Complainant’s business by diverting users onto competing websites. Respondent’s bad faith is also demonstrated through its use of a privacy shield to hide from the public the identity of its registrant. Respondent has also been known to previously act in bad faith.
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 <microcenter.coupons> was registered on December 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”).
Complainant claims rights in the MICRO CENTER trademark through its registration with the USPTO. Regsitration of a trademark with the USPTO is sufficient to show that a complainant has rights in that trademark 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.”). Complainant provides evidence that it has registered its MICRO CENTER trademark with the USPTO (e.g. Reg. No. 1,552,264, registered on Aug. 15, 1989). Therefore, the Panel finds that Complainant has rights in the MICRO CENTER trademark under Policy ¶ 4(a)(i).
Complainant argues that the <microcenter.coupons> domain name is identical or confusingly similar to Complainant’s MICRO CENTER trademark because it wholly incorporates Complainant’s MICRO CENTER trademark while merely adding the “.coupons” gTLD. A domain name may be found to be identical or confusingly similar, under Policy ¶ 4(a)(i), if it incorporates a trademark entirely while merely adding a gTLD. 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.”). In the present case, Respondent did not alter Complainant’s MICRO CENTER trademark. The only difference is that the two worded trademark is written as one word. For pure technical reasons, the only way to write a two word trademark in an electronic address such as a domain name is either to use a hyphen between the words, or write the words into one word, such as “microcenter”. The only further change is the addition of the gTLD. Registration of a domain name that contains a trademark and adds a gTLD does not distinguish the domain name from the trademark per Policy ¶ 4(a)(i). See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.” If ever analyzed, the gTLD .coupons rather indicates that the disputed domain name is connected to some kind of customer offer from the Complainant. The Panel finds that the <microcenter.coupons> domain name is identical or at least indeed confusingly similar to Complainant’s MICRO CENTER 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.”).
Complainant argues that Respondent does not have any rights or legitimate interests in the <microcenter.coupons> domain name because Respondent is not commonly known by the <microcenter.coupons> domain name. A respondent may be found to not be commonly known by a domain name, under ¶ 4(c)(ii), where the identifying WHOIS information is unrelated to the domain name See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). In the WHOIS information provided, the registrant is known as “Gabriella Garlo”. Nothing else in the record indicates that Respondent is related to the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the <microcenter.coupons> domain name under ¶ 4(c)(ii).
Complainant further argues that Respondent is not using the <microcenter.coupons> domain name in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use because Respondent is using the <microcenter.coupons> domain name to host pay-per-click hyperlinks to redirect users onto competing websites of the Complainant. Use of a domain name to host pay-per-click hyperlinks in competition of a complainant may be found to be a domain name not used in in connection with a bona fide offering of goods or services nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). Complainant provides screenshots of the resolving website. Once there, when a user clicks on any of the links, they seems to be directed to a website operated by Grainger and websites that advertise products sold by Dell, Newegg, or Walmart – all competitors of the Complainant. Therefore, the Panel finds that Respondent is not using the <microcenter.coupons> domain name in connection with a bona fide offering of goods or services, nor for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
The Complainant argues that Respondent registered or uses the <microcenter.coupons> domain name in bad faith because Respondent has a pattern of bad faith registration. Bad faith registration may be found, under Policy ¶ 4(b)(ii), in the current dispute where a respondent has engaged in bad faith registrations in previous disputes. See Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”). Complainant provides a list of other disputes in which the same Respondent has been named/identified in the same way as in the current dispute. Therefore, the Panel finds that Respondent registered or uses the <microcenter.coupons> domain name in bad faith under Policy ¶ 4(b)(ii).
Complainant also argues that Respondent registered or uses the <microcenter.coupons> domain name in bad faith because Respondent uses the <microcenter.coupons> domain name as a disruption to Complainant’s business through Respondent’s use of competing hyperlinks in the resolving website. Bad faith may be found, under Policy ¶ 4(b)(iii), where a Respondent uses pay-per-click hyperlinks that redirect users to competing websites. See Adorama, Inc. v. Moniker Privacy Services, FA1503001610020 (Forum May 1, 2015) (“Respondent uses pay-per-click hyperlinks on the resolving website, which redirects users to competing websites. The use of hyperlinks to disrupt and compete with a complainant’s business is evidence of bad faith registration and use under Policy ¶ 4(b)(iii).”). In the screenshots of the resolving website, provided by the Complainant, when a user clicks on one of the links, they seems to be brought to a website that offers products from other sellers that compete directly with the Complainant. Therefore, the Panel finds that Respondent registered or uses the <microcenter.coupons> domain name in bad faith under Policy ¶ 4(b)(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 <microcenter.coupons> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 16, 2021
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