Young Microbrush, LLC v. Andrew Welker / OriginalMicroBrush
Claim Number: FA2105001944631
Complainant is Young Microbrush, LLC (“Complainant”), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Andrew Welker / OriginalMicroBrush (“Respondent”), Ohio, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <originalmicrobrush.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 conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 11, 2021; the Forum received payment on May 11, 2021.
On May 11, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <originalmicrobrush.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 May 12, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 1, 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@originalmicrobrush.com. Also on May 12, 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 June 4, 2021, 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 has marketed toothbrushes and dental supplies for more than twenty years.
Complainant holds a registration for the MICROBRUSH trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,219,003, registered January 19, 1999, and renewed most recently as of November 1, 2018.
Respondent registered the domain name <originalmicrobrush.com> on September 10, 2020.
The domain name is confusingly similar to Complainant’s MICROBRUSH mark.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant.
Complainant has not licensed or otherwise authorized Respondent to use Complainant’s MICROBRUSH mark.
Respondent is not using the domain name in connection with a bona fide offering of goods or services, nor is Respondent making a legitimate noncommercial or fair use of the domain name.
Respondent fails to make any active use of the domain name, in that the domain name is simply “parked.”
Respondent lacks both rights to and legitimate interests in the domain name.
The domain name is an instance of typo-squatting.
Respondent both registered and now uses 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:
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 claims and inferences set out in the Complaint unless the supporting evidence is manifestly contradictory. See, for example, 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). But see 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 has rights in the MICROBRUSH trademark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum August 4, 2017):
Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <originalmicrobrush.com> domain name is confusingly similar to Complainant’s MICROBRUSH trademark. The domain name incorporates the mark in its entirety, with only the addition of the generic term “original” and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy. See, for example, Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum January 22, 2016) (finding that the addition of a generic term and a gTLD to the mark of another in creating a domain name was insufficient to distinguish one from the other under the test of Policy ¶ 4(a)(i)).
See also SnoopBy Co Ltd. v. Fu Ze Yang, et al., D2016-1681 (WIPO October 14, 2016), determining the domain name <gentlemonsteroriginal.com> to be confusingly similar to the GENTLE MONSTER mark:
The disputed domain names comprise the Trade Mark in its entirety, together with the common and generic words which are either descriptive of the Complainant's goods marketed and sold under the Trade Mark, or are generic words related to shopping, fashion or the Internet. The Panel finds the addition of such generic and descriptive words does not serve to distinguish the disputed domain names from the Trade Mark in any significant way.
Further see Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the contested <originalmicrobrush.com> 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 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 that Respondent does not deny, that Respondent has not been commonly known by the challenged <originalmicrobrush.com> domain name, as well as that Complainant has not licensed or otherwise authorized Respondent to use the MICROBRUSH trademark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Andrew Welker / OriginalMicroBrush,” the first portion of which does not resemble the domain name. As to the second portion of the Respondent’s appellation, there is nothing in the record suggesting that Respondent was commonly known as “OriginalMicroBrush” before the registration of the disputed 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, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark in any manner).
We next observe that Complainant asserts, without objection from Respondent, that Respondent fails to use the <originalmicrobrush.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use, and, in fact, that Respondent fails to make any active use of the domain name at all.
In light of these assertions, and inasmuch as the record before us does not reflect that Respondent has made any demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services in the approximately nine months of its existence, we are compelled to the conclusion that Respondent’s employment of the domain name is neither a bona fide offering of goods or services by means of it under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in it as provided in those subsections of the Policy. See, for example, Activision Blizzard, Inc. / Activision Publishing, Inc. / Blizzard Entertainment, Inc. v. Cimpress Schweiz GmbH, FA 1737429 (Forum August 3, 2017):
Complainant insists that Respondent has made no demonstrable preparations to use the disputed domain name. When Respondent is not using the disputed domain name in connection with an active website, the Panel may find that Respondent is not using the disputed domain name for a bona fide offering of goods or services… As Respondent has not provided a response to this action, Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
Inactive use of a domain name is a form of use, not least because it prevents complainant from reflecting its MICROBRUSH mark in a corresponding domain name. Upon review of the evidence, we are persuaded that, as alleged in the Complainant, Respondent has failed to make any active use of the disputed <originalmicrobrush.com> domain name. Such a failure, over an extended period, as here, stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Telstra Corp. Ltd. v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). And, because the record indicates that Respondent has in the approximately nine months of its existence made no active use of the domain name, we are persuaded by the evidence that “it is not possible to conceive of any … plausible active use of the domain name by…Respondent that would not be illegitimate….” Telstra, supra.
See also CommScope, Inc. of North Carolina v. Zhuang Yan / WANGYONG, FA 1764026 (Forum Feb. 14, 2018):
Respondent’s domain names do not have resolving websites. Using a domain name to resolve to an inactive website (or no website at all) indicates bad faith registration and use.
Further see VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015):
Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).
The Panel thus 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 <originalmicrobrush.com> domain name be TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: June 9, 2021
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