Microprose LLC v. Total Net Solutions
Claim Number: FA0806001212867
Complainant is Microprose LLC (“Complainant”), represented by Steven
A Bercu, of Lime LLC,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <microprose.com>, registered with Moniker Privacy Services.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 26, 2008; the National Arbitration Forum received a hard copy of the Complaint on June 30, 2008.
On July 1, 2008, Moniker Privacy Services confirmed by e-mail to the National Arbitration Forum that the <microprose.com> domain name is registered with Moniker Privacy Services and that Respondent is the current registrant of the name. Moniker Privacy Services has verified that Respondent is bound by the Moniker Privacy Services registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On July 7, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 28, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@microprose.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 5, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <microprose.com> domain name is identical to Complainant’s MICROPROSE mark.
2. Respondent does not have any rights or legitimate interests in the <microprose.com> domain name.
3. Respondent registered and used the <microprose.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microprose LLC,
develops and markets consumer computer game programs, particularly flight
simulation and strategy games. Complainant
owns a trademark registration with the United States Patent and trademark
Office (“USPTO”) in the MICROPROSE mark (Reg. No. 1,711,906 issued September 1,
1992).
Respondent registered the <microprose.com> domain name on July 28, 2008. Respondent’s disputed domain name resolves to a portal website that features links to various competing third-party websites.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has established rights in the MICROPOSE
mark through registration of the mark with the USPTO pursuant to Policy ¶ 4(a)(i). See Auto.
Racing Prods., Inc. v. Linecom, FA 836787
(Nat. Arb. Forum Dec. 21, 2006) (finding that the complainant’s federal
trademark registration establishes rights under Policy ¶ 4(a)(i)); see also Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007) (finding that the
complainant had sufficiently established rights in the SKUNK WORKS mark through
its registration with the USPTO).
Complainant contends that Respondent’s <microprose.com> domain name is identical to Complainant’s MICROPOSE mark. Respondent’s domain name contains Complainant’s mark in its entirety and adds the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD is irrelevant in determining whether a domain name is identical to a mark pursuant to Policy ¶ 4(a)(i). See Busy Body, Inc. v. Fitness Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) ("[T]he addition of the generic top-level domain (gTLD) name ‘.com’ is . . . without legal significance since use of a gTLD is required of domain name registrants . . . ."); see also Daedong-USA, Inc. v. O’Bryan Implement Sales, FA 210302 (Nat. Arb. Forum Dec. 29, 2003) (“Respondent's domain name, <kioti.com>, is identical to Complainant's KIOTI mark because adding a top-level domain name is irrelevant for purposes of Policy ¶ 4(a)(i).”).
The Panel finds that Policy ¶ 4(a)(i)
has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <microprose.com> domain name. In instances where a complainant has established a prima facie case is support of its contentions, the burden of proof shifts to the respondent to show that it does have rights or legitimate interests. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). In the matter at hand, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s <microprose.com> domain name resolves to a website that contains a list of links to various competing gaming websites. The Panel infers from Respondent’s use that it is receiving click-through fees for each misdirected Internet user connected to a competing website. Respondent’s use is not one in connection with 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). See WeddingChannel.com Inc. v. Vasiliev, FA 156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, websites where the respondent presumably receives a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); see also Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that the respondent’s use of the disputed domain name to redirect Internet users to commercial websites, unrelated to the complainant and presumably with the purpose of earning a commission or pay-per-click referral fee did not evidence rights or legitimate interests in the domain name).
The Panel finds that Respondent is not commonly known by the <microprose.com> domain name. The WHOIS information for the disputed domain name lists the registrant as “Total Net Solutions,” a name that has no apparent relation to the <microprose.com> domain name. The Panel finds that, in the absence of evidence to rebut Complainant’s assertions, Respondent is not commonly known by the disputed domain name for purposes of Policy ¶ 4(c)(ii). See Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant has submitted evidence that Respondent is using the <microprose.com> domain name to operate a website with links to Complainant’s competitors. The Panel finds that Respondent’s use constitutes a disruption of Complainant’s business and is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Franpin SA v. Paint Tools S.L., D2000-0052 (WIPO May 25, 2000) (finding bad faith where the respondent, a company financially linked to the complainant’s main competitor, registered and used the domain name in question to disrupt the complainant’s business).
Finally, Respondent’s <microprose.com> domain name is confusingly similar to Complainant’s mark. As a result, Internet users will likely be confused as to Complainants sponsorship of and affiliation with the resulting website. Because Respondent is profiting from this use in the form of click-through fees, the Panel finds that this is further evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”); see also G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website).
The Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microprose.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: August 19, 2008
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