DECISION

 

Microtech Knives, Inc. v. qiang ge

Claim Number: FA2310002065672

 

PARTIES

Complainant is Microtech Knives, Inc. ("Complainant"), USA, represented by Tasneem A. Dharamsi of Parker Poe Adams & Bernstein LLP, North Carolina, USA. Respondent is qiang ge ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <discountknife.net>, registered with NameSilo, LLC.

 

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.

 

Ho-Hyun Nahm, Esq. as Panelist.

 

PROCEDURAL HISTORY

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

 

On October 10, 2023, NameSilo, LLC confirmed by e-mail to Forum that the <discountknife.net> domain name is registered with NameSilo, LLC and that Respondent is the current registrant of the name. NameSilo, LLC has verified that Respondent is bound by the NameSilo, 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 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 e-mail to all entities and persons listed on Respondent's registration as technical, administrative, and billing contacts, and to postmaster@discountknife.net. Also on October 11, 2023, 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, 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 Ho-Hyun Nahm, Esq. 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

i) Complainant, founded in 1994, is a designer and manufacturer of precision cutlery. Over the past twenty years, Complainant has grown to become a market-leading brand of knives and tools. Complainant has rights in the DIRAC, DIRAC DELTA, MARFIONE CUSTOM KNIVES, and MICROTECH marks through its registration with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 5,762,603 registered May 28, 2019; Reg. No. 5,880,206 registered October 8, 2019; Reg. No. 5,085,204 registered November 22, 2016;  Reg. No.  5,643,678 registered January 1, 2019). The disputed domain name is confusingly similar to Complainant's marks.

         

ii) Respondent lacks rights and legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its marks in the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor a legitimate noncommercial or fair use, but instead passes off as Complainant while offering counterfeit items.

         

iii) Respondent registered and uses the disputed domain name in bad faith. Respondent uses the disputed domain name to mimic Complainant's legitimate webpage displaying Complainant's trademarks and offering counterfeit products for commercial gain. Respondent uses Complainant's trademarks and mimics Complainant's website, and thus it is inconceivable that Respondent registered and is using the disputed domain name without knowledge of Complainant and its trademarks.

 

B. Respondent

Respondent did not submit a Response in this proceeding.

 

FINDINGS

1. The disputed domain name was registered on April 10, 2022.

 

2. Complainant has established rights in the DIRAC, DIRAC DELTA, MARFIONE CUSTOM KNIVES, and MICROTECH marks through its registration with the USPTO (e.g., Reg. No. 5,762,603 registered May 28, 2019; Reg. No. 5,880,206 registered October 8, 2019; Reg. No. 5,085,204 registered November 22, 2016;  Reg. No. 5,643,678 registered January 1, 2019).

 

3. The disputed domain name is not confusingly similar to any of Complainant's marks.

 

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 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").

 

Identical and/or Confusingly Similar

Complainant asserts rights in the DIRAC, DIRAC DELTA, MARFIONE CUSTOM KNIVES, and MICROTECH marks through its registration with the USPTO (e.g., Reg. No. 5,762,603 registered May 28, 2019; Reg. No. 5,880,206 registered October 8, 2019; Reg. No. 5,085,204 registered November 22, 2016;  Reg. No. 5,643,678 registered January 1, 2019). Registration with the USPTO is sufficient to demonstrate rights in a mark per Policy 4(a)(i). Therefore, the Panel finds that Complainant has rights in the DIRAC, DIRAC DELTA, MARFIONE CUSTOM KNIVES, and MICROTECH marks per Policy ¶ 4(a)(i).

 

Complainant argues that the <discountknife.net> domain name is confusingly similar to Complainant's marks because it consists of: (i) the identical first two letters of Complainant's DIRAC and DIRAC DELTA marks; (ii) the generic term "discount"; (iii) the singular reference of the "KNIVES" component of Complainant's MARFIONE CUSTOM KNIVES mark; and (iv) the generic top- level domain ("gTLD") ".net". The element "discount" is both confusingly similar to Complainant's DIRAC and DIRAC DELTA marks in that it consists of the identical two first letters of Complainant's marks and, therefore, has a similar appearance, sound, and pronunciation, and "descriptive of business in general because Complainant sells goods." Likewise, the element "knife" is confusingly similar to Complainant's MARFIONE CUSTOM KNIVES mark because it transforms a plural reference to the singular and relates to Complainant's products.

 

The Panel notes that the disputed domain name is comprised of purely descriptive or generic terms "discount" and "knife," which are not generally considered in determining confusing similarity. Therefore, the Panel does not agree with Complainant as to its confusing similarity arguments as outlined above. The Panel finds that Complainant failed to satisfy the requirement per Policy ¶ 4(a)(i). 

 

As the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy. See Balon Corporation and Valve Innovations, LLC v. Zhang Shao Bing, FA 2002820 (Forum Aug. 16, 2022) (finding that as the Panel concludes that Complainant has not satisfied Policy ¶ 4(a)(i), the Panel declines to analyze the other two elements of the Policy.); see also Wasatch Shutter Design v. Duane Howell / The Blindman, FA 1731056 (Forum June 23, 2017) (deciding not to inquire into the respondent's rights or legitimate interests or its registration and use in bad faith where the complainant could not satisfy the requirements of Policy ¶ 4(a)(i)).

 

DECISION

Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.

 

Accordingly, it is Ordered that the <discountknife.net> domain name REMAIN WITH Respondent.

 

 

 

Ho-Hyun Nahm, Esq., Panelist

Dated: November 1, 2023