DECISION

 

Microtech Knives, Inc. v. shenzhenshihuajiaomingjishangwukejiyouxiangongsi / yangxiaojiao

Claim Number: FA2309002061325

PARTIES

Complainant is Microtech Knives, Inc. ("Complainant"), represented by Jason A. Pittman of Dority & Manning, P.A., South Carolina, USA. Respondent is shenzhenshihuajiaomingjishangwukejiyouxiangongsi / yangxiaojiao ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <micro-tech.store>, registered with Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn).

 

PANEL

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.

 

Paul M. DeCicco, as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on September 11, 2023; Forum received payment on September 11, 2023.

 

On September 13, 2023, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <micro-tech.store> 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 September 14, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of October 4, 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@micro-tech.store. Also on September 14, 2023, the Chinese and English 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 formal response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 5, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Paul M. DeCicco 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

Pursuant to UDRP Rule 11(a) the Panel finds that persuasive evidence suggests the likely possibility that the Respondent is conversant and proficient in the English language. Notably, the at-issue domain name is comprised of English characters and words, and the website addressed by the at-issue domain name is in English. What's more, following service of the Complaint, Respondent communicated with Forum via an email that is exclusively in English and makes no objection to moving forward in English. Complainant is based in the United States and conducts its business in English. Requiring the Complainant, who does not appear to be proficient in Chinese, to submit a Chinese-language Complaint would likely cause delay to the proceeding and unnecessarily burden Complainant. Therefore, after considering the relevant circumstances of the present dispute as setout above the Panel concludes that the proceeding should be conducted in English.

 

 

PARTIES' CONTENTIONS

A. Complainant

Complainant contends as follows:

 

Complainant, Microtech Knives, Inc. is a privately held knife manufacturing company which is famous for its automatic knives.

 

Complainant asserts rights in the MICROTECH mark based upon registration with the United States Patent and Trademark Office ("USPTO").

 

Respondent's <micro-tech.store> domain name is confusingly similar to Complainant's mark, containing a hyphenate version the MICROTECH mark and concluding with the generic top-level domain name ".store" to form the at-issue domain name.

 

Respondent does not have any rights or legitimate interests in the <micro-tech.store> domain name. Respondent is not licensed or authorized to use Complainant's MICROTECH mark and is not commonly known by the at-issue domain name. Additionally, Respondent does not use the domain name for any bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses the domain name to mimic Complainant's genuine website and sell counterfeit versions of Complainant's products.

 

Respondent registered and uses the <micro-tech.store> domain name in bad faith. Respondent knew of Complainant's MICROTECH trademark before it registered <micro-tech.store>. Respondent uses the at-issue domain name to pass off as Complainant and sell counterfeit version of Complainant's products. Further, Respondent uses the domain name's resolving webpage to engage in fraud.

 

B. Respondent

Respondent failed to submit a formal Response in this proceeding.

 

FINDINGS

Complainant has rights in the MICROTECH trademark.

 

Respondent is not affiliated with Complainant and had not been authorized to use Complainant's trademark in any capacity.

 

Respondent registered the at‑issue domain name after Complainant acquired rights in the MICROTECH trademark.

 

Respondent's uses the <micro-tech.store> domain name to address a website mimicking Complainant's official website that offers counterfeit MICROTECH products.

 

DISCUSSION

Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted and 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").

 

Identical and/or Confusingly Similar

The at-issue domain name is confusingly similar or identical to a trademark in which Complainant has rights.

 

Complainant shows that it has a USPTO registration for its MICROTECH trademark. Such registration is sufficient to demonstrate Complainant's rights in the MICROTECH mark under Policy ¶ 4(a)(i). See Nintendo of America Inc. v. lin amy, FA 1818485 (Forum Dec. 24, 2018) ("Complainant's ownership a USPTO trademark registration for the NINTENDO mark evidences Complainant's rights in such mark for the purposes of Policy ¶ 4(a)(i)."); see also 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).").

 

Respondent's MICROTECH domain name contains a hyphenated version of Complainant's MICROTECH trademark followed by the ".store" top-level domain name. The differences between Respondent's domain name and Complainant's trademark are insufficient to distinguish the <micro-tech.store> domain name from Complainant's MICROTECH trademark for the purposes of Policy ¶ 4(a)(i). Therefore, the Panel concludes that Respondent's <micro-tech.store> domain name is confusingly similar or identical to MICROTECH. See Rebecca Minkoff, LLC v. Mara Bolorin, D2012-1423 (WIPO Oct. 30, 2012) (finding <bunge-group.com> "virtually identical and confusingly similar to Complainant's mark because it incorporates the BUNGE mark in its entirety and adds the term "group" and a hyphen, which do nothing to distinguish the domain name from the mark…"); see also, Blue Cross and Blue Shield Association v. Shi Lei aka Shilei, FA 1784643 (Forum June 18, 2018) ("A TLD (whether a gTLD, sTLD or ccTLD) is disregarded under a Policy ¶4(a)(i) analysis because domain name syntax requires TLDs.").

 

Rights or Legitimate Interests

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. See Hanna-Barbera Prods., Inc. v. Entm't Commentaries, FA 741828 (Forum Aug. 18, 2006).

 

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. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) ("lack of evidence in the record to indicate a respondent is authorized to use [the] complainant's mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)").

 

The WHOIS information for <micro-tech.store> identifies the domain name's registrant as "ShenzhenshihuajiaomingjishangWukejiyouxiangongsi" and the record before the Panel contains no evidence showing that Respondent is commonly known by <micro-tech.store>. The Panel therefore concludes that Respondent is not commonly known by <micro-tech.store> for the purposes of Policy ¶ 4(c)(ii). See Radio Flyer Inc. v. er nong wu, FA 2011001919893 (Forum Dec. 16, 2020) ("Here, the WHOIS information lists "er nong wu" as the registrant and no information suggests Complainant has authorized Respondent to use the RADIO FLYER mark in any way. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).").

 

Respondent uses <micro-tech.store> to pass itself off as Complainant and address a website mimicking Complainant's own website. The website offers counterfeit MICROTECH products. Respondent's use of the at-issue domain name in this manner indicates neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a non-commercial or fair use pursuant to Policy ¶ 4(c)(iii). See Fadal Engineering, LLC v. DANIEL STRIZICH,INDEPENDENT TECHNOLOGY SERVICE INC, FA 1581942 (Forum Nov. 13, 2014) (finding that Respondent's use of the disputed domain to sell products related to Complainant without authorization "does not amount to a bona fide offering of goods or services under policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."); see also, Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) ("Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant's WATTS brand and displays counterfeit versions of Complainant's products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.")

 

Given the forgoing, Complainant satisfies its initial burden and shows Respondent's lack of rights and legitimate interests in the at-issue domain name under Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

The at-issue domain name was registered and used in bad faith. As discussed below without limitation, bad faith circumstances are present from which the Panel concludes that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).

 

As stated above regarding rights or legitimate interests, Respondent uses the confusingly similar <micro-tech.store> domain name to pass itself off as Complainant and address a website mimicking Complainant's genuine website that offers counterfeit MICROTECH branded products. Using the confusingly similar domain name in such a manner is disruptive to Complainant's business and falsely indicates that there is an authorized relationship between Complainant and Respondent when there is no such relationship. Respondent's ultimate use of the domain name to perpetrate fraud demonstrates Respondent's bad faith under Policy ¶¶ 4(b)(iii) and (iv). See Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent's competing website); see also, Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant's business); see also Russell & Bromley Limited v. Li Wei Wei, FA 1752021 (Forum Nov. 17, 2017) (finding the respondent registered and used the at-issue domain name in bad faith because it used the name to pass off as the complainant and offer for sale competitive, counterfeit goods).

 

Next, although not expressly argued by Complainant the Panel finds that Respondent is engaged in typosquatting. Typosquatting is a practice whereby a domain name registrant deliberately introduces typographical errors or misspellings into a trademark and then uses the resulting string in a domain name. The registrant hopes that internet users will: 1) inadvertently type the malformed string when searching for content related to the domain name's target trademark and/or, 2) in viewing the domain name will confuse such domain name with its target trademark. Respondent's at-issue domain name is near identical to Complainant genuine domain name as the at-issue domain name merely has an irrelevant hyphen inserted into Complainant's trademark and adds a necessary top-level, here ".store," (which is a likely top-level for an online store), to form the at-issue domain name. There is some likelihood that a number of internet users will misspell Complainant's mark by including a hyphen between "micro" and "tech" when attempting to guess Complainant's official domain name. The bad guess will instead lead the internet user to Respondent's website. Further, upon reading Respondent's <micro-tech.store> domain name it is predicable that the domain name may pass for the address of what is believed to be Complainant's official website, notwithstanding the misspelling of Complainant's MICROTECH trademark. Typosquatting is, in itself, indicative of bad faith. See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)).

 

Moreover, Respondent had actual knowledge of Complainant's rights in the MICROTECH mark when it registered <micro-tech.store> as a domain name. Respondent's actual knowledge of Complainant's trademark is gleaned from the notoriety of the MICROTECH trademark and from Respondent use of the domain name to pass itself of as Complainant and offer counterfeit MICROTECH products for sale. Respondent's registration and use of <micro-tech.store> with knowledge of Complainant's rights in the MICROTECH trademark further shows Respondent's bad faith pursuant to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had actual knowledge of Complainant's mark when registering the disputed domain name); see also, Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).

 

DECISION

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-tech.store> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Paul M. DeCicco, Panelist

Dated: October 6, 2023