Micro Electronics, Inc. v. Quality Ads
Claim Number: FA1805001788456
Complainant is Micro Electronics, Inc. (“Complainant”), represented by Shana T. Don of Scarinci Hollenbeck LLC, New York, USA. Respondent is Quality Ads (“Respondent”), Cayman Islands.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenter.info>, registered with Rebel Ltd.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 24, 2018; the Forum received payment on May 24, 2018.
On May 29, 2018, Rebel Ltd confirmed by e-mail to the Forum that the <microcenter.info> domain name is registered with Rebel Ltd and that Respondent is the current registrant of the name. Rebel Ltd has verified that Respondent is bound by the Rebel Ltd 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 May 31, 2018, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 20, 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.info. Also on May 31, 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 June 25, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC 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 domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant made the following contentions.
Complainant is a nation-wide company, which is in the business of selling computers, electronic hardware and software related to computing, networking and gaming. The Complainant offers electronic products and services from both its brick-and-mortar stores across the United States, and via its website, located at the domain name <microcenter.com>. Complainant has rights in the MICRO CENTER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,552,264, registered Aug. 15, 1989). See Compl. Ex. E. Respondent’s <microcenter.info> domain name is nearly identical or confusingly similar to Complainant’s mark as it contains the entirety of Complainant’s mark and appends the generic top-level domain (“gTLD”) “.info.”
Respondent has no rights or legitimate interests in the <microcenter.info> domain name. Respondent is not commonly known by the disputed domain name, as the WHOIS information lists Respondent as “Quality Ads.” See Compl. Ex. A. nor has Complainant authorized, licensed, or otherwise permitted Respondent to use the mark. Respondent also does not use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, Respondent uses the domain name to display pay-per-click links to Complainant’s competitors. See Compl. Ex. C. Such use can also be viewed as failing to make a use of the domain name.
Respondent registered and uses the <microcenter.info> domain name in bad faith. Respondent appears to offer the domain name for sale, or seeks inquiries inviting an offer for the domain name. See Compl. Ex. C. Further, Respondent’s use of the domain name is a clear attempt at financial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. See Compl. Ex. C. Finally, Respondent must have had actual knowledge of Complainant at the time it registered the domain name given Complainant’s considerable and longstanding notoriety.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a United States company engaged in the business of selling computers, electronic hardware and software related to computing, networking and gaming.
2. Complainant has established its trademark rights in the MICRO CENTER mark through its registration of the mark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,552,264, registered Aug. 15, 1989).
3. Respondent registered and/or re-registered the <microcenter.info> domain name on August 18, 2017.
4. Respondent uses the domain name to display pay-per-click links to Complainant’s competitors.
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 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 (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.”).
The first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MICRO CENTER mark through its registration of the mark with the USPTO (e.g. Reg. No. 1,552,264, registered Aug. 15, 1989). See Compl. Ex. E. Registration of a mark with the USPTO sufficiently confers a complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant has established rights in the MICRO CENTER mark for the purposes of Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s registered MICRO CENTER mark. Complainant next argues that Respondent’s <microcenter.info> domain name is identical or confusingly similar to Complainant’s mark as it contains the entirety of Complainant’s mark and appends the gTLD “.info.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Gagemaker, LP v. Pavel B Novoselov, FA 1714411 (Forum Mar. 20, 2017) (“Therefore, because Respondent only added “.info” to an otherwise unchanged mark, the Panel agrees that Respondent has not distinguished the domain name from Complainant’s mark under Policy ¶ 4(a)(i).”). The Panel therefore finds that the <microcenter.info> domain name is identical to the MICRO CENTER mark under Policy ¶4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
It is now well established that Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), then the burden shifts to Respondent to show it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MICRO CENTER trademark and to use it in its domain name;
(b) Respondent registered and/or re-registered the <microcenter.info> domain name on August 18, 2017;
(c) Respondent uses the domain name to display pay-per-click links to Complainant’s competitors;
(c) Respondent has engaged in these activities without the consent or approval of Complainant;
(d) Complainant contends that Respondent has no rights or legitimate interests in the <microcenter.info> domain name. Where a response is lacking, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). The WHOIS identifies “Quality Ads” as the registrant. See Compl. Ex. A. Complainant submits that no evidence exists to show that Respondent has ever been legitimately known by the MICRO CENTER mark. Panels may use evidence to that effect as evidence of a respondent lacking rights or legitimate interests in the domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain name prior to its registration, and Complainant has not given Respondent permission to use the mark in any manner. Accordingly, the Panel agrees that Respondent is not commonly known by the <microcenter.info> domain name under Policy ¶ 4(c)(ii);
(e) Complainant argues that Respondent uses the domain name to display pay-per-click links to Complainant’s competitors, which could also be viewed as failing to use the domain name. Using a domain name to offer links to services unrelated to a complainant’s activities, or failing to use a domain name, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Materia, Inc. v. Michele Dinoia, FA1507001627209 (Forum August 20, 2015) (“The Panel finds that Respondent is using a confusingly similar domain name to redirect users to a webpage with unrelated hyperlinks, that Respondent has no other rights to the domain name, and finds that Respondent is not making a bona fide offering or a legitimate noncommercial or fair use.”); see also Bloomberg L.P. v. SC Media Servs. & Info. SRL, FA 296583 (Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s mark and is not using the <bloomberg.ro> domain name in connection with an active website. The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”). The screenshot provided by Complainant shows that the domain name contains links such as “Micro Center” and “Power Spec.” See Compl. Ex. C. As such, the Panel finds that Respondent has failed to provide evidence of a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant submits that Respondent appears to offer the <microcenter.info> domain name for sale, or seeks inquiries inviting an offer for the domain name. Offering a confusingly similar domain name for sale can evince bad faith registration under Policy ¶ 4(b)(i). See Vanguard Trademark Holdings USA LLC v. Wang Liqun, FA1506001625332 (Forum July 17, 2015) (“A respondent’s general offer to sell a disputed domain name for an excess of out-of-pocket costs is evidence of bad faith under Policy ¶ 4(b)(i).”). The resolving webpage for the domain name contains a message at the top stating “Click here to buy MicroCenter.info for your websit [sic].” See Compl. Ex. C. Accordingly, the Panel uses Respondent’s offering of the domain name for sale to the general public as evidence of bad faith registration.
Secondly, Complainant argues that Respondent’s use of the domain name is a clear attempt at financial gain by creating a likelihood of confusion with Complainant’s marks as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a disputed domain name that trades upon the goodwill of a complainant for commercial gain can evince bad faith under Policy ¶ 4(b)(iv). See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum January 8, 2018) (“Respondent’s hosting of links to Complainant’s competitors demonstrates bad faith registration and use of the <geddiploma.org> domain name pursuant to Policy ¶ 4(b)(iv)”). As noted above, the screenshot provided by Complainant shows that the domain name contains links such as “Micro Center” and “Power Spec.” See Compl. Ex. C. Accordingly, the Panel agrees that Respondent attempted to benefit commercially off Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Thirdly, Complainant submits that Respondent had actual knowledge of Complainant’s rights in the MICRO CENTER mark at the time of registering the <microcenter.info> domain name. Actual knowledge of a complainant's rights in a mark prior to registering a confusingly similar domain name can evince bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of Complainant at the time it registered the domain name given Complainant’s considerable and longstanding notoriety. The Panel agrees with Complainant and finds that Respondent did have actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MICRO CENTER mark and in view of the conduct that Respondent engaged in when using it, Respondent registered and used the disputed domain name in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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.info> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: June 25, 2018
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