DECISION

 

Microtech Knives, Inc. v. Wachira Chaina / Natty?s Store

Claim Number: FA2310002065667

 

PARTIES

Complainant is Microtech Knives, Inc. ("Complainant"), represented by Tasneem A. Dharamsi of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is Wachira Chaina / Natty?s Store ("Respondent"), Thailand.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <nattyoutdoorstore.com>, registered with Tucows Domains Inc.

 

PANEL

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 E. Sorkin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 10, 2023; Forum received payment on October 10, 2023.

 

On October 11, 2023, Tucows Domains Inc. confirmed by email to Forum that the <nattyoutdoorstore.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 October 11, 2023, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 31, 2023 by which Respondent could file a Response to the Complaint, via email to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@nattyoutdoorstore.com. Also on October 11, 2023, the Written Notice of the Complaint, notifying Respondent of the email 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, Forum transmitted to the parties a Notification of Respondent Default.

 

On November 1, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed David E. Sorkin as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules, and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant is a designer and manufacturer of precision cutlery founded in 1994. Complainant owns United States trademark registrations for MICROTECH, ANTHONY L MARFIONE, and OUTBREAK, which it uses in connection with various types of knives. The OUTBREAK registration issued in June 2022; the registration record states that the mark was first used in October 2021. The other two registrations issued in January 2019 (MICROTECH) and February 2017 (ANTHONY L MARFIONE). Complainant owns and uses the domain name <microtechknives.com>.

 

Respondent registered the disputed domain name <nattyoutdoorstore.com> in June 2019. The name is registered in the name of a privacy registration service. The domain name is being used for a website called "Natty's Store" that offers knives and related products for sale. Complainant alleges that the website seeks to pass itself off as belonging to Complainant and that Respondent is selling "counterfeit or otherwise competing products." Complainant argues that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to Complainant's marks because "nattys" is similar to ANTHONY L MARFIONE and "outdoor" is "generic, descriptive, and confusingly similar to" OUTBREAK. Complainant states that Respondent is not commonly known by the domain name; is not affiliated with, connected to, or sponsored by Complainant; and is not authorized to use Complainant's marks.

 

Complainant contends on the above grounds that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to its marks; that Respondent lacks rights or legitimate interests in the disputed domain name; and that the disputed domain name was registered and is being used in bad faith.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The Panel finds that the disputed domain name is not identical or confusingly similar to a mark in which Complainant has rights. Because this finding is dispositive, the Panel declines to enter findings as to the other elements set forth in the Policy. In addition, for the reasons set forth below, the Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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 Overview of WIPO Panel Views on Selected UDRP Questions, § 4.3 (3d ed. 2017), available at http://www.wipo.int/amc/en/domains/search/overview3.0/; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (dismissing complaint where complainant failed to "produce clear evidence to support its subjective allegations").

 

Identical and/or Confusingly Similar

Complainant alleges that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to its registered marks ANTHONY L MARFIONE and OUTBREAK. It is not.

 

Reverse Domain Name Hijacking

Under Paragraph 1 of the Rules, "Reverse Domain Name Hijacking" (RDNH) is defined as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name." Paragraph 15(e) of the Rules provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

 

Where a Complainant proceeds despite the fact that it knew or should have known that it did not have a colorable claim under the Policy, a finding of RDNH may be appropriate. See, e.g., Gapardis Health and Beauty, Inc. v. Frantz Boulos, FA 1917653 (Forum Nov. 23, 2020). RDNH may also be appropriate where (inter alia) a Complainant attempts to mislead the Panel or provides false or intentionally incomplete material evidence. See id.; WIPO Overview of WIPO Panel Views on Selected UDRP Questions, supra, § 4.16.

 

Complainant's assertion that the disputed domain name <nattyoutdoorstore.com> is confusingly similar to its ANTHONY L MARFIONE mark does not pass even a straight-face test, and its assertion that the domain name is confusingly similar to OUTBREAK is not much better. The Panel is mystified by Complainant's assertion that "there can be no reasonable doubt that Respondent deliberately selected the Domain Name in order to pass off its website as Complainant's website." (Complaint, p. 8.)

 

Equally troubling are some of the other claims that appear in the Complaint, including Complainant's unsupported counterfeit rhetoric. For example, in its argument relating to rights or legitimate interests, Complainant provides a screenshot taken from Respondent's website, and alleges that "As shown above, Respondent uses Complainant's registered trademark MICROTECH on its webpage and purports to offer counterfeit MICROTECH knives." The screenshot shows three products advertised on Respondent's website, one of which is captioned "OTF Micro Ultra tech Custom Variable." ("OTF" apparently refers to an "out-the-front" or sliding pocketknife, as distinguished from one that folds or has a fixed blade.) To the Panel's eye, and based on the materials provided by Complainant, this image does not appear to depict an item that is at all similar to any of Complainant's products. Furthermore, it does not appear that Respondent's website contains any references whatsoever to MICROTECH or MICRO TECH (aside from the single reference to "OTF Micro Ultra tech Custom Variable"), nor to ANTHONY L MARFIONE (or even just MARFIONE) or OUTBREAK. And there are no obvious similarities in appearance between the parties' websites, other than the fact that both of them promote knives for sale.

 

Complainant also states that "Respondent's name of record 'Wachira Chaina / Natty?s Store' does not resemble the Domain Name, which tends to indicate Respondent has not been commonly known by the Domain Name and thus does not have any rights or legitimate interests in the Domain Name." The Panel does in fact see some resemblance between both Respondent's name "Wachira Chaina / Natty?s Store" and the title of its website, "Natty's Store," on the one hand, and the disputed domain name <nattyoutdoorstore.com> on the other; and is baffled by Complainant's professed inability to do so.

 

The Complaint includes these and other allegations that are unsupported by and in some instances contrary to the evidence, and in the Panel's view Complainant knew or should have known that it did not have a colorable claim under the Policy. The Panel finds that the Complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

 

DECISION

Having considered the elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <nattyoutdoorstore.com> domain name REMAIN WITH Respondent.

 

 

 

David E. Sorkin, Panelist

Dated: November 1, 2023