Young Microbrush, LLC v. Hasan Damar / Paws of Puppy
Claim Number: FA2104001941433
Complainant is Young Microbrush, LLC (“Complainant”), represented by Jennifer Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Hasan Damar / Paws of Puppy (“Respondent”), Germany.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <micro-toothbrush.com>, registered with Tucows Domains Inc.
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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2021; the Forum received payment on April 14, 2021.
On April 14, 2021; Apr 15, 2021, Tucows Domains Inc confirmed by e-mail to the Forum that the <micro-toothbrush.com> domain name is registered with Tucows Domains Inc and that Respondent is the current registrant of the name. Tucows Domains Inc has verified that Respondent is bound by the Tucows Domains Inc 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 22, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 12, 2021 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@micro-toothbrush.com. Also on April 22, 2021, 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 18, 2021, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Darryl C. Wilson 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 operates a toothbrush and dental care company within the United States. Complainant has rights in the MICROBRUSH mark through its registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. 2,219,003, registered Jan. 19, 1999). Respondent’s <micro-toothbrush.com> domain name is confusingly similar to Complainant’s MICROBRUSH mark, only differing by the addition of a hyphen and inserting the descriptive term “tooth” within the mark while adding the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the <micro-toothbrush.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user nor licensee of the MICROBRUSH mark. Additionally, Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to offer products which compete directly with Complainant’s business.
Respondent registered and uses the <micro-toothbrush.com> domain name in bad faith. Respondent’s registration of a confusingly similar domain name to attempt to sell competing products displays bad faith disruption and attraction to commercial gain. The disputed domain name also qualifies as an instance of typosquatting, further evidence of Respondent’s bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Young Microbrush, LLC (“Complainant”), of Wilmington, DE, USA. Complainant is the owner of the domestic registration for the mark MICROBRUSH, which it has continuously used since at least as early as 1999 in connection with its provision of toothbrush and dental supply goods and services.
Respondent is Hasan Damar / Paws of Puppy (“Respondent”), of Berlin, Germany. Respondent’s registrar’s address is listed as Toronto, Ontario, Canada. The Panel notes that the disputed domain name was registered on or about August 22, 2020.
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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant asserts rights in the MICROBRUSH mark through its registration with the USPTO. Registration of a mark with a trademark agency, such as the USPTO, is generally sufficient to demonstrate rights in a mark under Policy ¶ 4(a)(i). See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”). Complainant provides evidence of its registration with the USPTO (e.g., Reg. 2,219,003, registered Jan. 19, 1999). The Panel here finds Complainant has rights in the MICROBRUSH mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <micro-toothbrush.com> domain name is confusingly similar to Complainant’s MICROBRUSH mark, only differing by inserting a hyphen and the descriptive term “tooth” within the mark and adding the “.com” gTLD. Such changes do not necessarily negate confusing similarity between a domain name and a mark under Policy ¶ 4(a)(i). See Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015) (holding that the addition of descriptive terms, particularly terms that pertain to complainant’s business, do not adequately distinguish a disputed domain name from complainant’s mark under Policy ¶ 4(a)(i).). The Panel here finds the disputed domain name is confusingly similar to Complainant’s MICROBRUSH mark under Policy ¶ 4(a)(i).
Respondent raises no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel notes 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 here finds that Complainant has set forth the requisite prima facie case.
Complainant argues that Respondent lacks rights and legitimate interests in the <micro-toothbrush.com> domain name as it is not commonly known by the disputed domain name and is neither an authorized user or licensee of the MICROBRUSH mark. When a response is lacking, relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name under Policy ¶ 4(c)(ii). 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). Here, the WHOIS information of record identifies “Hasan Damar / Paws of Puppy” as the registrant of the disputed domain name. As nothing in the record rebuts Complainant’s contention that it never authorized Respondent to use the MICROBRUSH mark, the Panel here finds Respondent is not commonly known by the disputed domain under Policy ¶ 4(c)(ii).
Complainant further argues that Respondent does not use the <micro-toothbrush.com> domain name for any bona fide offering of goods or services, nor for any legitimate noncommercial or fair use, but instead attempts to sell products which directly compete with Complainant’s business. Use of an infringing domain name to attempt to sell products which compete directly with those offered by Complainant does not qualify as a bona fide offering of goods or services, nor can it be a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”). Here, Complainant provides screenshots of the landing page for the disputed domain name as evidence of Respondent’s competing use. The Panel here finds Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Respondent raises no contentions with regards to Policy ¶ 4(a)(ii).
The Complainant has proven this element.
Complainant argues that Respondent registered and uses the <micro-toothbrush.com> domain name in bad faith because Respondent uses the disputed domain name to attempt to sell products which compete directly with Complainant’s business. Such use of a disputed domain name qualifies as bad faith disruption and attraction to commercial gain under Policy ¶¶ 4(b)(iii) and (iv). See ZIH Corp. v. ou yang lin q, FA1761403 (Forum Dec. 29, 2017) (Finding bad faith where Respondent used the infringing domain name to disrupt Complainant’s business by diverting Internet users from Complainant’s website to Respondent’s website where it offered competing printer products); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (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).”). As previously noted, Complainant provides screenshots of the resolving website for the disputed domain name, which displays products which complete directly with Complainant’s business. The Panel here finds Respondent registered and uses the disputed domain in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Respondent raises no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
As the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <micro-toothbrush.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: June 2, 2021
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