Micro Electronics, Inc. v. Shirley T. Barnes / malca-mit
Claim Number: FA1704001725268
Complainant is Micro Electronics, Inc. (“Complainant”), represented by Shana T. Don of Scarinci Hollenbeck LLC, New York, USA. Respondent is Shirley T. Barnes / malca-mit (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenter-usa.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 5, 2017.
On April 6, 2017, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <microcenter-usa.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.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 11, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 1, 2017 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-usa.com. Also on April 11, 2017, 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 May 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant, Micro Electronics, Inc., is a nationwide company in the business of selling computers, electronic hardware and software related to computing, networking, and gaming. In connection with this business, Complainant uses the MICRO CENTER mark to market and provide its goods and services. Complainant has rights to the MICRO CENTER mark based upon registration with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,552,264, registered Aug. 15, 1989). See Compl., at Attached Ex. E. Respondent’s <microcenter-usa.com> is confusingly similar to Complainant’s mark, as the domain name contains the mark in its entirety—less the space—and adds a hyphen, the geographically descriptive term “usa” and the generic top-level domain name (“gTLD”) “.com.”
2. Respondent has no rights or legitimate interests in the <microcenter-usa.com> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MICRO CENTER mark for any reason. Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name does not resolve to an active website, and an email address associated with the website has been used to impersonate an employee of Complainant in an attempt to fraudulently profit at the expense of Complainant and Complainant’s suppliers. See Compl., at Attached Exs. F; 1–3.
3. Respondent has registered and used the disputed domain name in bad faith. The registration and use of the disputed domain name amounts to an attempt to disrupt and harm Complainant’s business with its passing off behavior. Respondent’s exploitation of Complainant’s goodwill to attempt to fraudulently profit further evinces Respondent’s bad faith. Further, the very reason the disputed domain name was registered was to perpetrate fraud.
B. Respondent
1. Respondent failed to submit a Response in this proceeding,
1. Respondent’s <microcenter-usa.com> domain name is confusingly similar to Complainant’s MICRO CENTER mark.
2. Respondent does not have any rights or legitimate interests in the
<microcenter-usa.com> domain name.
3. Respondent registered or used the <microcenter-usa.com> domain name 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:
(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.”).
Complainant claims rights in the MICRO CENTER mark based upon registration of the mark with the USPTO (e.g. Reg. No. 1,552,264, registered Aug. 15, 1989). See Compl., at Attached Ex. E. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO). The Panel therefore holds that Complainant’s registration of the MICRO CENTER mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant further contends that <microcenter-usa.com> is confusingly similar to Complainant’s MICRO CENTER mark, as the domain name contains the mark in its entirety—less the space—and adds a hyphen, the geographically descriptive term “usa” and the gTLD “.com.” The omission of a space from a mark and addition of a gTLD are irrelevant changes to a mark for the purposes of a Policy ¶ 4(a)(i) analysis. See Health Republic Insurance Company v. Gustavo Winchester, FA 1622089 (Forum July 7, 2015) (finding, “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.”). Similarly, the addition of a hyphen and a geographic term to a mark does not distinguish the resultant domain name per Policy ¶ 4(a)(i). See General Motors LLC v. Domain Admin, Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1656166 (Forum Feb. 12, 2016) (finding respondent’s <gm-uzbekistan.com> domain name confusingly similar to complainant’s GM mark as the addition of a hyphen and the geographic term “uzbekistan” is inconsequential to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds the disputed domain name to e confusingly similar to the MICRO CENTER mark per Policy ¶ 4(a)(i).
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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Forum Sept. 25, 2006)
(“Complainant must first 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, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain
names.”).
Complainant argues that Respondent has no rights or legitimate interests in <microcenter-usa.com> as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the MICRO CENTER mark in any way. Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record identifies Respondent as “Shirley T. Barnes.” Further, fraudulent emails sent from the email associated with the disputed domain name were signed “Brad Foster.” Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent does not have rights or legitimate interests in a disputed 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). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant further argues Respondent’s lack of rights or legitimate interests in <microcenter-usa.com> is evinced by their failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Rather, the disputed domain name hosts an email address used to impersonate an employee of Complainant in a fraudulent attempt to procure $70,000 worth of laptop computers. See Compl., at Attached Exs. F; 1–3. Use of a disputed domain name to send emails impersonating an agent of a complainant for a fraudulent purpose is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum, Nov. 30, 2016) (finding Respondent’s use of the disputed domain name to pose as Complainant’s CEO by means of an email address at the confusingly similar domain name in an attempt to determine Complainant’s ability to process a transfer was neither a bona fide offering of good or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)). The Panel therefore finds that Respondent’s fraudulent passing off behavior is not a bona fide offering of goods or services or legitimate noncommercial or fair use granting rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends that Respondent’s registration and use of <microcenter-usa.com> to host an email address used to impersonate an agent of Complainant indicates Respondent’s bad faith. Use of a disputed domain name to impersonate a complainant or its employees has been shown to be disruptive to the complainant’s business and thus be evidence of bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”). The Panel notes that emails were sent from <bfoster@microcenter-usa.com> which attempted to obtain $70,000 worth of laptop computers from a supplier of Complainant. See Compl., at Attached Exs. F; 1–3. The Panel therefore finds Respondent to have registered and used the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and/or (iv).
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-usa.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 18, 2017
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