Micro Electronics, Inc. v. Filipe Diogo
Claim Number: FA1909001863581
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, New York, USA. Respondent is Filipe Diogo (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenter.xyz>, registered with Epik 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.
James Bridgeman SC as Panelist.
Complainant submitted a Complaint to the Forum electronically on September 23, 2019; the Forum received payment on September 23, 2019.
On September 27, 2019, Epik Inc. confirmed by e-mail to the Forum that the <microcenter.xyz> domain name is registered with Epik Inc. and that Respondent is the current registrant of the name. Epik Inc. has verified that Respondent is bound by the Epik 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 3, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 23, 2019 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.xyz. Also on October 3, 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 February 25, 2019 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed James Bridgeman SC 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 disputed domain name <microcenter.xyz> be transferred from Respondent to Complainant.
A. Complainant
Complainant relies on its claimed rights in the trademark MICRO CENTER acquired through its ownership of its registered trademarks listed below and its continuous use of the MICRO CENTER trademark in its computer sales and services business since 1980.
Complainant submits that the disputed domain name <microcenter.xyz> is confusingly similar to its trademark as it incorporates the Complainant’s MICRO CENTER mark and that the gTLD <.xyz> extensions may be disregarded because it is required domain name syntax.
Complainant submits that the Respondent has no rights are legitimate interests in respect of the disputed domain name arguing that neither the Respondent nor the service he engaged to anonymize his registration are commonly known by the disputed domain name according to the publicly available WhoIs information. Complainant states that respondent was not authorised to use Complainant’s trademark to register the disputed domain name. Furthermore, a disputed domain name resolves to landing page which merely offers it for sale for USD $395 or best offer, and there is no offering of any goods services by the Respondent on his webpage.
Complainant submits that the disputed domain name was registered as being use in bad faith arguing that the disputed domain name, was registered with Complainant’s well-known trademark in mind. Complainant further submits that Respondent’s offer to sell the disputed domain name for a sum in excess of its out-of-pocket costs and expenses in registrants domain name is evidence that the disputed domain name was registered in bad faith and bad faith use of the disputed domain name by Respondent. Complainant submits that in the context of this Complaint the Respondent’s use of a service to anonymize the illustration is supportive of its argument.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant:
Complainant has been in the business of selling computers electronic hardware software and related services, including computer repairs both online and registrars market locations for almost 40 years and is the owner of the following portfolio of trademark registrations:
United States registered trademark MICRO CENTER registration number 1,552,264 registered on August 15, 1989 for goods and services in International Classes 37, 41 and 42;
United States trademark MICRO CENTER registration number 3,020,431 registered on November 29, 2005 services in international class 35;
United States registered trademark MICRO CENTER, registration number 3,267,567 registered on July 24, 2007 for goods in international class 9;
United States registered trademark MICRO CENTER, registration number 3,267, 627 registered on July 24, 2007 for goods in international class 16;
United States registered trademark MICRO CENTER, registration number 4,747,365 registered June 2, 2015 for services in international class 42;
United States registered trademark MICRO CENTER, registration number 4,459,077 registered on December 11, 2013 for goods in international class 2;
United States registered trademark MICRO CENTER, registration number 4,524,917 registered on May 6, 2014 for services in international class 35;
The disputed domain name <microcenter.xyz> was registered on August 23, 2019 and resolves to a landing page in which there is posted a statement offering the domain name for sale for USD $395.
In the absence of Response there is no information available about the Respondent except that which is provided in the Complaint, the Registrar’s WhoIs, and the Registrar’s response to the Forum’s verification enquiry. The Respondent has availed of an anonymizing service for the registration.
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 the Complaint; however, the Panel may deny relief where the 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 has satisfied this Panel that it has rights in the MICRO CENTER trademark acquired through its ownership of the above-mentioned trademark registrations and its use of the trademark in its computer sales and service business for almost 40 years.
The disputed domain name is clearly identical to the Complainant’s trademark and for the purposes of the present Complaint the gTLD <.xyz> extension may be ignored.
This Panel finds therefore that the disputed domain name is identical to the Complainant’s trademark and the Complainant has therefore succeeded in the first element of the test in Policy paragraph 4(a)(i)
Complainant has made out a prima facie case that Respondent has no rights or legitimate interests in respect of the disputed domain name; that neither Respondent nor the service he engaged to anonymize his registration are commonly known by the disputed domain name; that Respondent was not authorised to use Complainant’s trademark to register the disputed domain name; that the disputed domain name resolves to landing page which merely offers the disputed domain name for sale for USD $395 or best offer; and that there is no offering of any goods services by the Respondent on his webpage.
In such circumstances, because the Complainant has made out a prima face case that Respondent has no rights or legitimate interest in the disputed domain name, it is well established under the Policy that the balance of production shifts to the Respondent. The Respondent has failed to discharge the burden and so Complainant is entitled to succeed in the second element of the test in Policy paragraph 4(a)(ii).
Complainant has argued that the disputed domain name was registered with Complainant’s well-known trademark in mind. Complainant has not filed any evidence of the reputation of its trademark to support this assertion, except for a print-out of its website to which its domain name <microcenter.com> resolves,
Complainant has however provided evidence of Respondent’s offer to sell the disputed domain name for a sum in excess of his out-of-pocket costs and expenses in registrants domain name.
This Panel finds that on the balance of probabilities and in the context of this Complaint where Respondent has made use of a service to anonymize his registration and has failed to file a Response, that Respondent’s offer to sell the disputed domain name for a sum in excess of his out-of-pocket costs and expenses is sufficient evidence to make a finding of bad faith registration and use of the disputed domain name.
Complainant has therefore succeeded in the third and final element of the test under the Policy and is entitled to the relief sought in the Complaint
DECISION
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.xyz> domain name be TRANSFERRED from Respondent to Complainant.
________________
James Bridgeman SC
Panelist
Dated: October 28, 2019
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