Micro Electronics, Inc. v. Shawn Downey / Sensible.Domains
Claim Number: FA1902001829812
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, New York, USA. Respondent is Shawn Downey / Sensible.Domains (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <micro.center>, registered with GoDaddy.com, LLC (the “Disputed Domain Name”).
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.
Kendall C. Reed as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 14, 2019; the Forum received payment on February 14, 2019.
On February 15, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <micro.center> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 February 18, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 11, 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 email@example.com. Also, on February 18, 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.
A timely Response was received and determined to be complete on March 11, 2019.
A timely Additional Submission from Complainant was received on March 18, 2019.
A timely Additional Submission from Respondent was received on March 25, 2019.
The Panel issued a request for further information pursuant to Rule 12 on April 1, 2019.
A timely Responsive Additional Submission was received from Complainant on April 4, 2019.
A timely Responsive Additional Submission was received from Respondent on April 4, 2019.
On March 13, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kendall C. Reed 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.
Complainant requests that the Disputed Domain Name be transferred from Respondent to Complainant.
Complainant is a retailer of computer equipment, software, and related services with an on-line sales facility through its domain name, <microcenter.com>, and nation-wide bricks-and-mortar stores.
Complainant owns seven trademark registrations for the mark MICRO CENTER issued by the USPTO, including US registration number 1,552,264 and 4,459,077. These marks are registered for products and services including, without limitation, computer retail services, mail order services, on-line services in the field of computer hardware, software, accessories, electronic devices, and computer consultation and diagnostic services (“Complainant’s Mark”).
Complainant has been doing business under the name Micro Center since 1980.
Respondent registered the Disputed Domain Name on July 1, 2015. The Disputed Domain Name resolves to a website (“Respondent’s Website”) on which Respondent offers the Disputed Domain Name for sale.
Further, Respondent’s Website presents links to website belonging to companies that are competitors of Complainant.
Complainant has not authorized any third party to register the Disputed Domain Name, including Respondent.
The Disputed Domain Name is confusingly similar to Complainant’s Mark because it is identical to complainant’s Mark except for the addition of a period between the words “micro” and “center”.
Respondent has no rights or legitimate interests in respect to the Disputed Domain Name because: there is no indication that Respondent has ever been known by the Disputed Domain Name; Respondent is not authorized to use Complainant’s Mark; Respondent’s use of the Disputed Domain Name does not support a conclusion that Respondent is engaged in a non-commercial fair use activities; and the mere holding of a Disputed Domain Name for the purpose of sale is not a legitimate purpose under the Policy.
Respondent’s use of the Disputed Domain Name is in bad faith because Respondent’s Website directs to Complainant’s competitors, including competitors which are using Complainant’s Mark. This is the type of misappropriation for profit that the Policy is intended to prohibit.
Further, Respondent is offering to sell the Disputed Domain Name, and as the Disputed Domain Name incorporates Complainant’s Mark, this demonstrates bad faith registration and use.
The Disputed Domain Name is not identical or similar to Complainant’s Mark. Respondent’s domain name is “micro” and the Internet extension for this domain name is “<.center>”. Complainant does not have trademark rights to the expression “micro” or the Internet extension “<.center>”.
Respondent has not used the Disputed Domain Name in bad faith. There is no evidence presented that Respondent is representing the Disputed Domain Name as “microcenter” <.com>, which is Complainant domain name. Further, there is no evidence presented that confusion has occurred between the Disputed Domain Name and Complainant. Respondent’s website experiences less than 20 visits a day, whereas Complainant’s domain “microcenter” <.com>” experiences thousands of visits per day. Indeed, there is little opportunity for confusion between the Disputed Domain Name and Complainant’s domain name because Complainant’s domain name, “microcenter”, is a top-level domain and the Disputed Domain Name is a “generic” domain name. As a result, a search under Complainant’s domain name would not, and in fact does not, bring up Respondent’s website.
C. Complainant’s Additional Submission
Complainant is not claiming exclusive rights to either of the terms “micro” or “center” individually but only in the combined expression “MICRO CENTER”. The Disputed Domain Name is identical to Complainant’s Mark except for the addition of a period.
Although a gTLD is not ordinarily considered in an analysis under the Policy, it is appropriate in a situation where aspects of an involved trademark appear on both sides of the dot in an involved domain name, such as in the present case.
D. Respondent’s Additional Submission
Complainant’s Complaint fails because Complainant has not proven or provided any evidence of damages or losses to it caused by Respondent’s use of the Disputed Domain Name.
Complainant’s purpose in filing the Complaint is to acquire by means of the Policy the Disputed Domain Name without just compensation to Respondent. Complainant’s motivation for doing this is to expand its marketing presence online by using the Disputed Domain Name, which sounds like Complainant’s Mark, to set up a secondary site or several forwarding sites.
E. Complainant’s Responsive Additional Submission
The Panel requested additional information with respect to three questions:
1) Whether the hyperlinks shown on the screenshot of Respondent’s Website (attached as an Exhibit C of the Annex filed with the Complaint) were active;
2) Provide a screenshot of the landing page to which each such hyperlink directs; and
3) Provide a screenshot of the landing page or other on-line location to which the text-box “Search Ads” directs.
The hyperlinks were active.
Screenshots can not be provided because the hyperlinks are no longer active, other than the one to <voodoo.com>, which indicates that the Disputed Domain Name is for sale. This should not affect the analysis under the UDRP because the analysis applies to the website as of the time the Complaint was filed.
The “Search Ads” text-box is a generalized search function. For example, if one inserts the word “MICROCENTER”, this leads to a landing page that presents additional hyperlinks, one of which reads “Micro Computer On Sale – Hurry Prices Won‘t Last”, and this hyperlink, in turn, leads to another landing page which presents offers for the sale of computer related components as well as additional hyperlinks to the websites for other entities that sell computers.
F. Respondent’s Responsive Additional Submission
The current usage for the Disputed Domain Name is that it is parked using the website www.voodoo.com. This website utilizes Google Ads, with which companies register to obtain “indirect” online sales (e.g. topical searches verses searches for specific domain names). This search function is random, as shown in Complainant’s response. None of the links shown point directly to the Complainant’s website.
In the Voodoo.com website landing page for the Disputed Domain Name, the keywords “micro memory” and “micro card” are inserted, for which companies online that sell “micro memory cards” would appear, as shown by the Complainant’s screenshots. But these companies are not Complainant, and there is no direct link to Complainant. The Complainant would show up if it used Google Ads, as Complainant appears to sell “micro cards”, in which event Complainant would entirely benefit from any sale purchased on their site. And as a reminder, Complainant does not have either a copyright or trademark on the words “micro”, “micro cards”, or “micro memory.”
The claim of “confusion” by the Complaint is entirely false. As demonstrated by the screenshot of the voodoo.com “Detailed Domain Information for Micro.Center”, 98% of people visiting Respondent’s Website come from directly typing “micro.center”, which someone looking for a commercial “.com” site would never do. In other words, such visitors are curious about the Disputed Domain Name itself, and not searching for Complainant’s “.com” company website.
There is nothing improper in offering the Disputed Domain Name for sale. In fact, the largest registrar in the world (www.GoDaddy.com) routinely sells domain names. Selling domain names is legal and allowed by ICANN.
Complainant is a nation-wide retailer of computer and related products and services with nation-wide bricks-and-mortar locations and an online presence.
Complainant is the owner of seven trademark issued by the USPTO for the trademark MICRO CENTER.
Respondent is the Registrant of the domain name <micro.center>.
As of the time the Complaint was filed, Respondent’s Website contained three active hyperlinks to websites of 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.
Under Policy ¶ 4(a), Complainant must first demonstrate that it has interests in a trademark, and then Complainant must demonstrate that the Disputed Domain Name is identical or confusingly similar to that trademark.
A United States trademark registration can establish Interests in a trademark for purposes of the Policy. 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).”); see Also, Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT/Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that complainant’s USPTO registration is sufficient under policy paragraph 4(a)(i), even though respondent reportedly resides on the Isle of Man).
Complainant has demonstrated that it owns seven United States trademark registrations for the Complainant’s Mark and thus has established rights in a trademark for purpose of the Policy.
In order to determine whether the Disputed Domain Name is identical or confusingly similar to the Complainant’s Mark, the Panel makes a simple side-by-side comparison. In making this comparison, evidence of market confusion, or the lack thereof, is not pertinent.
In many cases decided under the Policy the top-level domain identifier is not usually the focus of attention. See Dell Inc. v. Protection of Private Person / Privacy Protection, FA 1681432 (Forum Aug. 1, 2016) (“A TLD (whether a gTLD, sTLD ccTLD) is disregarded under a policy ¶ 4(a)(i) analysis because domain name syntax requires TLDs.”); see also Tom Browne, Inc. v. Huili Zang, FA 1358629 (Forum Dec. 22, 2010) (finding, “The addition of the gTLD ‘.net’ also has no effect on the policy ¶ 4(a)(i)analysis.”); see also Countrywide In. Corp. v. Johnson & Sons Sys., FA 1073019 (Forum Oct. 24, 2007) (holding that the addition the generic top-level domain (‘gTLD’) ‘.com’ was irrelevant).
However, this does not mean the top-level domain is outside the scope of a what constitutes a domain name, and for that reason it is properly within the scope of a Policy ¶ 4(a)(i) analysis. See DD IP Holder LLC v. Phill Aspden, FA 1603215 (Forum Apr. 8, 2015) (finding that the disputed domain name <dunkin.coffee> is identical to Complainant's DUNKIN COFFEE registered mark, as gTLDs that reference goods or services offered under the registered mark may be taken into account); see also DD IP Holder LLC v Manpreet Badhwar FA 1562029 (Forum July 14, 2014) (“Complainant has furnished evidence of its ownership of the DUNKIN’ and DUNKIN’ DONUTS trademark and service mark through its abovementioned USPTO and CTM registrations… ‘This Panel finds that the disputed domain name is almost identical to, and confusingly similar to Complainant’s DUNKIN’ trademark. In the context of the domain name registration in suit, the absence of the apostrophe is not in any way significant and certainly does not in any way distinguish the disputed domain name from Complainant’s mark…. ‘It is well established that a panelist should normally ignore the gTLD element when making a comparison between a complainant’s mark and a domain name…. ‘If this Panel were to simply take that approach in the present case Complainant would succeed in the first element of the test in Policy Paragraph 4(a)(i) because of the similarity of the mark DUNKIN’ and the word “dunkin”….’However because there is a reference to food and restaurants inherent in the new gTLD ”.menu”, the combination of the “dunkin” element with the ”.menu” gTLD extension adds further to the confusing character of the domain in issue in the present case.”).
In the present case, the Disputed Domain Name is <micro.center>, and the Complainant’s Mark is MICRO CENTER. The only difference is the dot, and the dot does not create a meaningful distinction.
Previous awards that dismissed the gTLD from a Policy ¶ 4(a)(i) analysis should be interpreted considering the conditions that existed at the time each such case was decided. In the past, there were relatively few top-level domains available. Today, the number of available top-level domains has expanded dramatically, and the possibility now exists for a top-level domain to be an integral part of a confusing similarity.
The panel finds that the Disputed Domain Name is confusingly similar to the Complainant’s Mark.
As such, Complainant has established the first element of the Policy.
Under Policy ¶ 4(a)(ii), Complainant must establish that Respondent does not have rights or legitimate interests in the Disputed Domain Name. In order to do so, Complainant has the initial obligation to come forward with evidence tending to negate the elements set out in Policy ¶ 4(c), and if Complainant does so, then the burden shifts to Respondent to demonstrate that at least one of the elements of Policy ¶ 4(c) does apply. 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 elements of Policy paragraph 4(c) are:
(i) before any notice to Respondent of the dispute, Respondent’s use of, or demonstrable preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if Respondent has acquired no trademark or service mark rights; or
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark or service mark at issue.
In the instant case, the Complainant has satisfied its burden. It states that it has not given permission to any third party, specifically including Respondent, to use the Complainant’s Mark. It asserts that Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services because Respondent’s uses are to offer the Disputed Domain Name for sale and to direct to Complainant’s competitors. Complainant asserts that, for the same reasons, Respondent is not using the Disputed Domain Name for noncommercial or fair use purposes. And, Respondent is not commonly known by the Disputed Domain Name as identified in the relevant WHOIS record.
Respondent does not address this element of the Policy, and as such has failed in its burden.
Respondent does argue that it has every right to hold the Disputed Domain Name for sale to others; however, such a use is not within the scope of Policy paragraph 4(c)(i).
The Panel finds that the Respondent does not have rights or legitimate interests in the Disputed Domain Name.
As such, Complainant has established the second element of the Policy.
Policy ¶ 4(b) sets out four non-exclusive definitions of “bad faith” conduct. One of these, Policy ¶ 4(b)(iv), states in pertinent part: by using the domain name, respondent has intentionally attempted to attract, for commercial gain, Internet users to respondent’s website by creating a likelihood of confusion with the complaint’s mark as to the source, sponsorship, affiliation, or endorsement of respondent’s website or of a product or service on respondent’s web site.
Such has been found to exist by many panels when a respondent has used a domain name identical or similar to a complaint’s mark to direct to a website on which is offered competing products or services to those of the complainant, including links to competitors’ websites. See American Council on Education and GED Testing Service LLC v. Anthony Williams, FA1760954 (Forum Jan. 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)”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BoaHu YiKaiQi, FA 612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv)).
In the instant case, Complainant demonstrates that Respondent’s website, as it existed at the time the Complaint was filed, included the following seven active hyperlinks:
ASUS All in One Computer
Micro Center Computer
Micro Center Store
Micro Center Stores
Computer Online Store
The first three of these are clearly hyperlinks to websites of Complainant’s competitors.
Whether the other four are active hyperlinks to Complainant’s competitors is not entirely clear, and Complainant could not show screenshots of the landing pages for these hyperlinks because Respondent’s Website was changed after the Complaint was filed. The Panel does not rely on these four hyperlinks in reaching its conclusion. However, it is probable these hyperlinks did direct to websites for Complaint’s competitors given that Complainant demonstrated that a search from the active “Search Ads” text-box on Respondent’s Website using the word “MICROCENTER” led to websites for Complaint’s competitors.
Respondent argues that it is entitled to register and hold a domain name for sale. The Panel generally agrees. However, while Respondent is offering the Disputed Domain Name for sale, the Disputed Domain Name (it being confusingly similar to Complainant’s Mark) cannot be used to resolve to a website on which is presented active hyperlinks to Complainant’s competitors.
The Panel finds that Respondent registered and used the Disputed Domain Name in bad faith.
As such Complainant has demonstrated the third element of the policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <micro.center> domain name be TRANSFERRED from Respondent to Complainant.
Kendall C. Reed, Panelist
Dated: April 11, 2019
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