Micro Electronics, Inc. v. Zhichao Yang
Claim Number: FA2212002024806
Complainant is Micro Electronics, Inc. (“Complainant”), represented by Joseph M. Manak of Scarinci Hollenbeck LLC, USA. Respondent is Zhichao Yang (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <mmicrocenter.com>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).
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.
Debrett G. Lyons as Panelist.
Complainant submitted a Complaint to Forum electronically on December 20, 2022; Forum received payment on December 20, 2022.
On December 21, 2022, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <mmicrocenter.com> domain name is registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) and that Respondent is the current registrant of the name. Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) has verified that Respondent is bound by the Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) 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 December 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 17, 2023 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@mmicrocenter.com. Also on December 27, 2022, 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, Forum transmitted to the parties a Notification of Respondent Default.
On January 23, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Debrett G. Lyons as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, 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.
The Complaint was submitted in English. Forum sent a formal Deficiency Notice to Complainant stating, inter alia, that:
“Pursuant to verification received from the Registrar, the Registration agreement is in Chinese. You have two options: 1. Translate the Complaint and Table of Contents into Chinese, or 2. Modify the complaint to explain why Respondent is capable of understanding English and therefore, the proceedings should be conducted in English.”
Complainant elected to provide submissions as to why Respondent is capable of understanding English and why the proceedings should be conducted in English. To put those submissions into context, it is noted here that the disputed domain name resolves to a webpage that displays a link to Complainant and generic links to providers of the same or similar goods as those offered by Complainant under the trademark.
In short, Complainant states that:
1. The domain name is “a clever misspelling” of the trademark;
2. The resolving webpage is in English;
3. The websites resolving from the links are in English;
4. The descriptions of the products on those sites are in English;
5. Respondent is a serial cyberquatter who has been an adverse party to 191 UDRP proceedings;
6. Complainant would be unfairly disadvantaged by being forced to translate the Complaint into Chinese;
The Panel finds (3) and (4) irrelevant to the determination of Respondent’s capacity in English. The Panel finds it very likely that the links have been autogenerated and so finds that (2) also says nothing of Respondent’s capacity in English. The misspelling in this case (1) is some small measure of facility in English.
Taken alone, those submissions would not dissuade the Panel from ordering that the proceedings be recommenced with the Complaint filed in Chinese. However, in this case, the Panel has taken particular account of (5) and so, pursuant to Rule 11(a), determines that the remainder of the proceedings may be conducted in English.
A. Complainant
Complainant asserts trademark rights in MICRO CENTER. Complainant holds national registrations for that trademark. Complainant submits that the disputed domain name is confusingly similar to its trademark.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant alleges that the Respondent registered and used the disputed domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The factual findings pertinent to the decision in this case are that:
1. Complainant sells electronic goods by reference to the trademark, MICRO CENTER;
2. The trademark, MICRO CENTER, is the subject of, inter alia, United States Patent & Trademark Office (“USPTO”) Reg. No. 3,267,567, which was registered on July 24, 2007;
3. The disputed domain name was registered on December 7, 2021 and resolves to a webpage that displays hyperlinks to Complainant and Complainant’s competitors; and
4. There is no relationship between the parties and Complainant has not authorized Respondent to use its trademark or to register any domain name incorporating the trademark.
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, for example, WIPO Jurisprudential Overview 3.0 at ¶ 4.3; 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”).
Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.
It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights. See, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003). Complainant provides essentially illegible copies of USPTO registrations. It recites the registration numbers and details in the body of the Complaint but the Panel was put to the task of checking those registrations for himself against official online records. Another panelist may have rejected the Complaint at this point for want of proof of trademark rights. With that caution, this Panel finds that Complainant has registered the trademark MICRO CENTER with the USPTO, a national trademark authority, and so has rights.
The disputed domain name merely adds an additional letter “m” before the trademark and the “.com” gTLD after the trademark. The Panel finds that the domain name is confusingly similar to the trademark. See, for example, Twitch Interactive, Inc. v. Antonio Teggi, FA 1626528 (Forum Aug. 3, 2015) (finding <twitcch.tv> confusingly similar to TWITCH TV because the domain name consisted of a common misspelling of the mark by merely adding the letter “c”); Pullman & Comley, LLC v. JONATHAN REICH., FA 1703742 (Forum Dec. 13, 2016) (“Respondent arrives at the disputed domain name by merely eliminating spacing between words of the mark, the addition of the “.com” generic top-level domain (“gTLD”), and the incorporation of “and” in place of the ampersand. These are not alterations that distinguish the disputed domain name from the Complainant’s trademark.”).
The Panel accordingly finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.
Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:
(i) before any notice to you of the dispute, your 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; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests. See, for example, Do The Hustle, LLC v. Tropic Web, Case No. D2000‑0624 (WIPO Aug. 21, 2000).
The domain name holder is “Zhichao Yang.” There is no suggestion that Respondent might be commonly known by the disputed domain name, or that Respondent has any trademark rights.
Complainant provides evidence that the disputed domain name resolves to a webpage with links to Complainant itself and to third parties offering goods competitive with those provided by Complainant’s business under the trademark. As stated, it appears to the Panel likely that those links have been autogenerated, but it is well established by earlier UDRP decisions that a complainant is responsible for material appearing at a site resolving from the disputed domain name, whether or not posted there by that complainant.
Clearly the described misuse of Complainant’s trademark is not a bona fide offering of goods or services, nor a legitimate noncommercial or fair use of the name and the Panel finds that Complainant has made a prima facie case that Respondent lacks a right or interest in the disputed domain name. See, for example, H-D Michigan Inc. v. Buell, FA 1106640 (Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
The onus shifts to Respondent. Absent a Response that onus is not met and so the Panel finds that Complainant has satisfied the second limb of the Policy.
Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.
The Panel finds that the disputed domain name directs Internet users to an online location which promotes goods competitive with Complainant’s business under the trademark and most likely does so for commercial gain by way of click-through revenue. Paragraph 4(b)(iv) of the Policy circumscribes registration and use of a domain name in bad faith as follows:
(iv) by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent’s website 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 the respondent’s website or location or of a product or service on the site or location.
The Panel finds that paragraph 4(b)(iv) of the Policy has direct application to this case and so finds that the third and final element of the Policy is satisfied. See, for example, Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <mmicrocenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Debrett G. Lyons, Panelist
Dated: January 25, 2023
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