Young Microbrush, LLC v. Eduardo Tarrio / Micro Brush
Claim Number: FA2105001944632
Complainant is Young Microbrush, LLC (“Complainant”), represented by Jennifer M. Mikulina of McDermott Will & Emery LLP, Illinois, USA. Respondent is Eduardo Tarrio / Micro Brush (“Respondent”), New Jersey, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microbrushco.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.
Charles A. Kuechenmeister, 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 <microbrushco.com> domain name (the 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@microbrushco.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 Charles A. Kuechenmeister 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 has rights in the MICROBRUSH mark through its registration of that mark with the United States Patent and Trademark Office (“USPTO”). Respondent’s <microbrushco.com> Domain Name is confusingly similar to Complainant’s MICROBRUSH mark as it is comprised solely of Complainant’s mark, as well as the generic term “co,” shorthand for the generic word “company.”
Respondent has no rights or legitimate interests in the Domain Name. Complainant has not authorized or permitted Respondent to register or use its MICROBRUSH mark, and Respondent is not using the Domain Name in connection with a bona fide offering of goods or services as the web site resolving from it is inactive.
Respondent registered and uses the Domain Name in bad faith. Respondent registered the confusingly similar Domain Name with constructive knowledge of Complainant’s rights in the MICROBRUSH mark and did so having no connection with Complainant. Respondent engaged in typosquatting, which is a disruption to Complainant’s business, and Respondent is using the Domain Name to compete with Complainant. Respondent also is making no active use of the Domain Name.
B. Respondent
Respondent did not submit a Response in this proceeding.
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 a complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(1) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(2) the 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, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules the Panel will decide this administrative proceeding on the basis of Complainant's undisputed representations 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. Nevertheless, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. 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”), WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), at ¶ 4.3 (“In cases involving wholly unsupported and conclusory allegations advanced by the complainant, . . . panels may find that—despite a respondent’s default—a complainant has failed to prove its case.”).
The Panel finds as follows with respect to the matters at issue in this proceeding:
The MICROBRUSH mark was registered to Microbrush Corporation with the USPTO (Reg. No. 2,992,113) on September 6, 2005 and was subsequently assigned to or otherwise acquired by Complainant[i] (Complaint Annex F). Complainant’s ownership of this registration demonstrates its rights in the mark for the purposes of Policy ¶ 4(a)(i). DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) (“Complainant’s ownership of a USPTO registration for DIRECTV demonstrates its rights in such mark for the purposes of Policy ¶ 4(a)(i).”).
Respondent’s <microbrushco.com> Domain Name is confusingly similar to Complainant’s MICROBRUSH mark as it incorporates that mark in its entirety, merely adding the letters “co” (common abbreviation for the generic word “company”) and the generic top-level domain (gTLD) “.com.” These changes do not distinguish the Domain Name from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). The WIPO Overview 3.0, at ¶ 1.7, states that the test for confusing similarity ”typically involves a side-by-side comparison of the domain name and the relevant trademark to assess whether the mark is recognizable within the domain name.” Notwithstanding the changes described above, Complainant’s mark is clearly recognizable within the Domain Name.
For the reasons set forth above, the Panel finds that the Domain Name is identical or confusingly similar to the MICROBRUSH mark, in which Complainant has substantial and demonstrated rights.
If a complainant makes a prima facie case that the respondent lacks rights or legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden of production shifts to respondent to come forward with evidence that it has rights or legitimate interests in it. 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”). If a respondent fails to come forward with such evidence, the complainant’s prima facie evidence will be sufficient to establish that respondent lacks such rights or legitimate interests. If the respondent does come forward with such evidence, the Panel must assess the evidence in its entirety. At all times, the burden of proof remains on the complainant. WIPO Overview 3.0, at ¶ 2.1.
Policy ¶ 4(c) lists the following three nonexclusive circumstances, any one of which if proven can demonstrate a respondent’s rights or legitimate interests in a domain name for the purposes of Policy ¶ 4(a)(ii):
(i) Before any notice to the respondent of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services;
(ii) The respondent (as an individual, business or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) The respondent is making a legitimate noncommercial or fair use of the domain name, without intent or commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant asserts that Respondent has no rights or legitimate interests in the Domain Name because (i) Complainant has not licensed or authorized Respondent to use its mark, and (ii) Respondent is not using the Domain Name in connection with a bona fide offering of goods or services because the web site resolving from it is inactive. These allegations are addressed as follows:
Complainant states that it has never licensed or authorized Respondent to use its mark in any way. Complainant has specific competence to make this statement, and it is unchallenged by any evidence before the Panel. In the absence of evidence that a respondent is authorized to use a complainant’s mark in a domain name or that a respondent is commonly known by the disputed domain name, the respondent may be presumed to lack rights or legitimate interests in the domain name. IndyMac Bank F.S.B. v. Eshback, FA 830934 (Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name), Indeed, Inc. v. Ankit Bhardwaj / Recruiter, FA 1739470 (Forum Aug. 3, 2017) (“Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.”).
Complaint Annex C is a screenshot of the web site resolving from the Domain Name as of May 11, 2021. Its only substantive content is a “Coming Soon” message. The site is clearly inactive. Passively holding a confusingly similar domain name is neither a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use within the meaning of Policy ¶ 4(c)(iii). Morgan Stanley v. Francis Mccarthy / Baltec Marine Llc, FA 1785347 (Forum June 8, 2018) (“both Domain Names resolve to a web site that shows the words, ‘Not Found, The requested URL / was not found on this server.’ Inactive holding of a domain name does not qualify as a bona fide offering of goods or services within the meaning of Policy ¶ 4(c)(i), or a legitimate non-commercial or fair use within the meaning of Policy ¶ 4(c)(iii).”).
Complainant did not address the Policy ¶ 4(c)(ii) issue, but the WHOIS information furnished to the Forum by the registrar lists “Eduardo Tarrio / Micro Brush” as the registrant of the Domain Name. The first of these names, Eduardo Tarrio, bears no resemblance to the Domain Name. Evidence could, of course, in a given case demonstrate that the respondent is commonly known by a domain name different from the name in which it registered the domain name, e.g., the case of a domain name incorporating the brand name of a specific product offered by and associated with the respondent. In the absence of any such evidence, however, and in cases where no Response has been filed UDRP panels have consistently held that WHOIS evidence of a registrant name which does not correspond with the domain name is sufficient to prove that the respondent is not commonly known by the domain name. Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same), Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark).
The second name furnished by the registrar, Micro Brush, is virtually identical to the dominant “Microbrush” element of the Domain Name. This does not mean that Respondent has been commonly known by the Domain Name, however, because as discussed above Respondent is not authorized to use Complainant’s mark, and the evidence before the Panel gives no indication that Respondent used this name for any purpose other than to register the Domain Name. Registering a domain name in a name which is similar or identical to the domain name is not, by itself, sufficient to demonstrate that the respondent “has been commonly known by” it for the purposes of Policy ¶ 4(c)(ii). There must be some evidence, independent of the registration, that the respondent used the name in a business or some other undertaking, or that persons have by other means come to associate the respondent with that name. If a person could acquire rights or legitimate interests in a domain name under Policy ¶ 4(c)(ii) simply by registering it in a name similar or identical to the domain name at issue, Policy ¶ 4(c)(ii) would be essentially meaningless. Moneytree, Inc. v. Matt Sims / MoneyTreeNow, FA1501001602721 (Forum Mar. 3, 2015) (finding that even though the respondent had listed “Matt Sims” of “MoneyTreeNow” as registrant of the <moneytreenow.com> domain name, the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii), because he had failed to list any additional affirmative evidence beyond the WHOIS information), Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding that, although the respondent listed itself as “Jessie McKoy / Ripple Reserve Fund” in the WHOIS contact information, it did not provide any affirmative evidence to support this identity; combined with the fact that the complainant claimed it did not authorize the respondent to use the mark, the respondent is not commonly known by the domain name). On the evidence before the Panel, it is clear that Respondent has not been commonly known by the Domain Name for the purposes of Policy ¶ 4(c)(ii).
The evidence furnished by Complainant establishes the required prima facie case. On that evidence, and in the absence of any evidence from Respondent, the Panel finds that Respondent has no rights or legitimate interests in the Domain Name.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant which is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of your web site or location or of a product of service on your web site or location.
Complainant argues that Respondent had constructive knowledge of Complainant’s MICROBRUSH mark when it registered the Domain Name in November 2020 (Complaint Annex A shows creation date). Arguments of bad faith registration based upon constructive knowledge have long been discredited by the majority of UDRP panels, and this Panel rejects Complainant’s argument based upon constructive knowledge here. Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) ("There is no place for constructive notice under the Policy."). Actual knowledge, however, has often been found sufficient to support a claim of bad faith registration. Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Complainant did not assert a claim of actual knowledge in this case, nor did it offer any evidence in support of actual knowledge. The only facts available to the Panel bearing upon this issue are Complainant’s long-standing use of its mark, since at least as early as 2003 (Complaint Annex F), and the somewhat whimsical, unique nature of Complainant’s MICROBRUSH mark. Complainant’s business is limited to supplying dental tools and equipment marketed primarily if not exclusively to dental professionals (Complaint Annex G), and while it has been in business for more than twenty years there is no evidence that its mark is generally familiar to the public at large. There is no evidence that Respondent is involved with the dental profession or that it would have had any other reason to know about Complainant and its marks when it registered the Domain Name. Complainant has the burden of proof, and on the evidence available, the Panel concludes that Complainant has failed to prove that Respondent knew of Complainant’s mark when it registered the Domain Name.
Nevertheless, Respondent registered and is holding the Domain Name, which fully incorporates the MICROBRUSH mark. As discussed above, however, Respondent has no connection with that mark or its owner, the Complainant. This may not fit precisely within any of the circumstances set forth in Policy ¶ 4(b) but that paragraph acknowledges that mischief can manifest in many different forms and takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties. Worldcom Exchange, Inc. v. Wei.com, Inc., WIPO Case No. D-2004-0955 (January 5, 2005), Bloomberg Finance L.P. v. Domain Admin - This Domain is For Sale on GoDaddy.com / Trnames Premium Name Services, FA 1714157 (Forum Mar. 8, 2017) (determining that Policy ¶ 4(b) provisions are merely illustrative of bad faith, and that the respondent’s bad faith may be demonstrated by other allegations of bad faith under the totality of the circumstances). The nonexclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and registering and using a domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of opportunistic bad faith. Charles Jorden Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding that the domain name in question is “so obviously connected with the Complainant and its products that its very use by someone with no connection with Complainant suggests opportunistic bad faith.”), Google LLC v. Noboru Maruyama / Personal, FA 2001001879162 (Forum Mar. 3, 2020) (“the registration and use of domain name that is confusingly similar to a trademark with which the respondent has no connection has frequently been held to be evidence of bad faith.”).
Further, the Domain Name resolves to an inactive web site. Passive holding of a domain name is also evidence of bad faith. Again, the non-exclusive nature of Policy ¶ 4(b) allows for consideration of additional factors in an analysis for bad faith, and UDRP panels have often held that failure to make active use of a domain name is evidence of bad faith. Caravan Club v. Mrgsale, FA 95314 (Forum Aug. 30, 2000) (finding that the respondent made no use of the domain name or website that connects with the domain name, and that [failure to make an active use] of a domain name permits an inference of registration and use in bad faith).
Complainant argues that Respondent engages in typosquatting. Typosquatting is the intentional misspelling of a protected trademark to take advantage of typing errors made by Internet users seeking the web sites of the owners of the mark. In this case, the Domain Name contains no misspelling of Complainant’s mark or in the “co” abbreviation of “company” also included in the Domain Name. Complainant fails to explain how the Domain Name involves typosquatting, and the Panel finds that it does not.
Complainant also argues that Respondent is using the Domain Name to compete with it. There is no evidence of this in the Annexes submitted with the Complaint, and indeed Complaint Annex F conclusively demonstrates that the web site resolving from the Domain Name is inactive. Complainant’s argument of competition is rejected.
Based upon the evidence that Respondent registered the Domain Name, which incorporates Complainant’s mark, having no connection with either Complainant or its mark, and that the resolving web site is inactive, the Panel finds that Respondent registered and is using the Domain Name in bad faith.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microbrushco.com> Domain Name be TRANSFERRED from Respondent to Complainant.
Charles A. Kuechenmeister, Panelist
Dated: June 7, 2021
[i][i] Complainant offered no evidence of how Complainant acquired the registration but the Notices of Acceptance under Sections 8 and 15 associated with this registration, included in Complaint Annex F, list Complainant as its owner and this is sufficient evidence of ownership for the purposes of this proceeding.
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