Micro Electronics, Inc. v. Eddie Rau
Claim Number: FA1803001779441
Complainant is Micro Electronics, Inc. (“Complainant”), represented by Shana T. Don of Scarinci Hollenbeck LLC, New York, USA. Respondent is Eddie Rau (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenter.club>, registered with GMO Internet, Inc. d/b/a Onamae.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge. has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 28, 2018; the Forum received payment on March 28, 2018.
On March 30, 3018, GMO Internet, Inc. d/b/a Onamae.com confirmed by e-mail to the Forum that the <microcenter.club> domain name is registered with GMO Internet, Inc. d/b/a Onamae.com and that Respondent is the current registrant of the name. GMO Internet, Inc. d/b/a Onamae.com has verified that Respondent is bound by the GMO Internet, Inc. d/b/a Onamae.com 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 2, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 23, 2018 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.club. Also on April 2, 2018, 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 April 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, operating under the MICRO CENTER name and mark, sells computers, electronic hardware and software related to computing, networking and gaming across the United States.
Complainant uses its MICRO CENTER mark both at its brick-and-mortar stores and via its website, located at the <microcenter.com> domain name.
Complainant holds a registration for the MICRO CENTER mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,267,567, registered July 24, 2007, since renewed December 22, 2016.
Respondent registered the domain name <microcenter.club> on or about February 22, 2017.
The domain name is confusingly similar to Complainant’s MICRO CENTER mark.
Respondent has not been commonly known by the domain name.
Complainant has not licensed or otherwise authorized Respondent to use the MICRO CENTER mark in any manner.
Respondent’s use of the domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent has no rights to or legitimate interests in the domain name.
Respondent’s use of the domain name to impersonate and create the appearance of an association with Complainant in order to attract and redirect Internet users to a commercial search engine website creates confusion as to the possible affiliation of the domain name with Complainant.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent registered the domain name using false contact information.
Respondent knew of Complainant’s rights in the MICRO CENTER mark at the time it registered and subsequently used the domain name.
Respondent registered and is using the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept as true all reasonable allegations and inferences set out in the Complaint unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Forum July 31, 2000) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 29, 2000): “In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”
Preliminary Issue: Language of Proceeding
The Registration Agreement for Respondent’s <microcenter.club> domain name is written in the Japanese language. In ordinary circumstances, therefore, Rule 11 of the Rules for Uniform Domain Name Dispute Resolution prescribes that this proceeding should be conducted in that language. However, Complainant has requested that the proceeding be conducted in English, and the Panel has authority to determine to conduct the proceeding in a language other than that of the Registration Agreement, “having regard to the circumstances of the administrative proceeding.” See, for example, FilmNet Inc. v Onetz, FA 96196 (Forum February 12, 2001 (finding it appropriate under Rule 11 to conduct a UDRP proceeding in English, notwithstanding that Korean was the language of the relevant registration agreement, where a respondent submitted a response in English after receiving a complaint in Korean and English).
In support of its request, Complainant shows that the mark upon which the subject domain name is based is in English, as is the appended “.club” generic Top Level Domain. Complainant also shows that the WHOIS information for the domain name recites a contact address in the State of New York, USA. Complainant reasons that these circumstances together demonstrate that Respondent is conversant in English. Complainant further asserts that to require it to proceed in the Japanese language would subject it to an undue expenditure of time and costs for translation services.
To Complainant’s recitation of the reasons for its request might be added the fact that Respondent is identified in the documentation of this proceeding by the appellation “Eddie Rau,” which includes a distinctly English language given name.
For these reasons, and because Respondent does not oppose Complainant’s request, we conclude that it would be fair and in the interests of justice to permit this proceeding to be conducted in the English language, and we so direct.
Complainant has rights in the MICRO CENTER trademark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See, for example, Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish a UFRP complainant’s rights in a mark under Policy ¶ 4(a)(i)).
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <microcenter.club> domain name is confusingly similar to Complainant’s MICRO CENTER trademark. The domain name contains the mark in its entirety, with only the omission of the space between its terms and the addition of the generic Top Level Domain (“gTLD”) “.club”. This alteration of the mark, made in forming the domain name, does not save it from the realm of confusing similarity under the standards of the Policy. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015):
Domain name syntax requires TLDs. Domain name syntax prohibits spaces. Therefore, omitted spacing and adding a TLD must be ignored when performing a Policy ¶4(a)(i) analysis.
Under Policy 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in the <microcenter.club> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c) (i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <microcenter.club> domain name, and that Complainant has not licensed or otherwise authorized Respondent to use the MICRO CENTER mark for any reason. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as
“Eddie Rau,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by the <chevron-europe.com> domain name where the relevant WHOIS information identified its registrant only as “Fred Wallace.” See also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name).
Complainant also asserts, without objection from Respondent, that Respondent uses the <microcenter.club> domain name to resolves to a website displaying links posted by a “pay-per-click” advertiser, including links to the websites of Complainant’s commercial competitors, from the operation of which Respondent seeks commercial gain. This employment of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that a respondent failed to provide evidence of a bona fide offering of goods or services or of a legitimate noncommercial or fair use of a disputed domain name where the domain name resolved to a website that offered hyperlinks unrelated to a UDRP complainant’s business).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the challenged <microcenter.club> domain name, which we have found to be confusingly similar to Complainant’s MICRO CENTER trademark, is an attempt by Respondent to profit from the confusion thus caused among Internet users as to the possibility of Complainant’s affiliation with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014):
Therefore, the Panel finds that Respondent registered and is using the … domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the MICRO CENTER mark when it registered the contested <microcenter.club> domain name. This further demonstrates Respondent’s bad faith in registering the domain name. See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum February 6, 2014):
The Panel … here finds actual knowledge through the name used for the domain and the use made of it.
Thus the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <microcenter.club> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: April 26, 2018
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