DECISION

 

Microtech Knives, Inc. v. yangxiaojiao / shenzhenshihuajiaomingjishangwukejiyouxiangongsi

Claim Number: FA2310002065126

PARTIES

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

 

REGISTRAR AND DISPUTED DOMAIN NAME 

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

 

PANEL

The undersigned certifies that they have acted independently and impartially and to the best of their knowledge have no known conflict in serving as Panelist in this proceeding.

 

Steven M. Levy, Esq. as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on October 5, 2023; Forum received payment on October 5, 2023.

 

On October 7, 2023, Alibaba Cloud Computing Ltd. d/b/a HiChina (www.net.cn) confirmed by e-mail to Forum that the <micro-tech.shop> 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 October 10, 2023, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of October 30, 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.shop. Also on October 10, 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 response from Respondent, Forum transmitted to the parties a Notification of Respondent Default.

 

On October 31, 2023, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Steven M. Levy, Esq. 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

The Panel notes that the Registration Agreement for the disputed domain name is written in Chinese, thereby initially making this the language of the proceedings pursuant to Rule 11(a). However, Complainant requests that this Panel exercise its discretion, under Rules 10(b) and (c) and determine that English be the language of the proceedings. In support of its request, Complainant states that "Respondent uses the disputed domain <micro-tech.shop> to redirect to a website maintained at <micro-tech.store> and all content thereon is in English." It goes on to claim that "Respondent has also communicated, in English, with customers in the United States to whom Respondent has sold counterfeit products." The Panel notes Complainant's submission of screenshots of Respondent's website and these do appear entirely in the English language. However, Complainant has not submitted any evidence in support of its assertion that Respondent has communicated with customers in English and so the Panel is not in a position to consider this claim. Finally, the Forum has provided notice of these proceedings to the Respondent in both Chinese and English, yet the Respondent has not provided a Response or made any other submission in this case. In Zappos.com, Inc. v. Zufu aka Huahaotrade, D2008-1191 (WIPO Oct. 15, 2008) the Panel held that proceedings could be conducted in English even though the registration agreement was in Chinese where "the disputed domain resolves to a website [that] is exclusively in English, from which can be reasonably presumed that the Respondent has the ability to communicate in English in order to conduct his business over the website in English". In light of the fact that Respondent's website displays content entirely in English and taking into account its default in this case and the delay and further expense that would be caused from requiring the Complainant to submit documents in Chinese, the Panel determines that the remainder of these proceedings may be conducted in English without prejudice to the Respondent.

 

PARTIES' CONTENTIONS

A. Complainant

Founded in 1994, Complainant has sold sport and hunting knives, as well as sheaths, sharpeners, keychains, decals, and pens under the MICROTECH trademark since 1995. This is the subject of United States Patent and Trademark Office registrations (e.g., Reg. No. 2294307, registered on November 23, 1999 and 5643678, registered on January 1, 2019). The domain name <microtechknives.com> is used as the address for Complainant's own website at which it promotes the sale of its products. Respondent's <micro-tech.shop> domain name is confusingly similar to Complainant's mark as it is a nearly identical copy of the mark adding only a nondistinctive dash.

 

Respondent has no rights or legitimate interests as it is not commonly known by the disputed domain name. Further, it uses the domain name to auto-redirect users to another site at the domain name <micro-tech.store> which copies Complainant's logo and images from its legitimate site, and at which counterfeit knives and related products are offered for sale.

 

The <micro-tech.shop> domain name was registered and has been used in bad faith where it redirects customers to another site that offers counterfeit versions of Complainant's knife products.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

-       Complainant has demonstrated its rights to the MICROTECH trademark and the <micro-tech.shop> domain name is confusingly similar to the mark;

-       Respondent has no rights or legitimate interests in the disputed domain name where it is not commonly known thereby, and the website to which it resolves seeks to pass Respondent off as Complainant; and

-       Respondent registered and uses the disputed domain name for a passing off site in bad faith.

 

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

Complainant asserts rights in the MICROTECH mark based upon registration with the United States Patent and Trademark Office ("USPTO"). Registration of a mark with the USPTO demonstrates rights in such a mark for the purposes of Policy ¶ 4(a)(i). See DIRECTV, LLC v. The Pearline Group, FA 1818749 (Forum Dec. 30, 2018) ("Complainant's ownership of a USPTO registration for DIRECTV demonstrate its rights in such mark for the purposes of Policy ¶ 4(a)(i)."); see also Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant's rights in the HOME DEPOT mark). Here, the Complainant has provided copies of its USPTO trademark registration certificates. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

 

Next, Complainant contends that Respondent's <micro-tech.shop> domain name is confusingly similar to the MICROTECH mark as it contains the mark in its entirety, merely adding a dash and the ".shop" gTLD to form the disputed domain name. The addition of punctuation and a gTLD typically does not sufficiently differentiate a domain name from an asserted mark under Policy ¶ 4(a)(i). See Harvey Nichols and Company Limited v. george sullivan, D2023-3394 (WIPO Oct. 12, 2023) ("The Panel finds the entirety of Complainant's HARVEY NICOLS trademark is reproduced within the disputed domain name, simply added by a hyphen between the words "harvey" and "nichols. Accordingly, the disputed domain name is nearly identical, but at least confusingly similar to this trademark for the purposes of the Policy."); 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.") As Complainant's mark is clearly recognizable in the <micro-tech.shop> domain name, despite the addition of a hyphen and the ".shop" gTLD, the Panel finds that the disputed domain name is confusingly similar to the MICROTECH mark under Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

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). Should it succeed in this effort, the burden then shifts to Respondent to show that 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").

 

Complainant contends that Respondent lacks rights or legitimate interests in the <micro-tech.shop> domain name as Respondent is not commonly known by the domain name nor has Complainant authorized or licensed to Respondent any rights in the MICROTECH mark. In considering this issue, relevant WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Chevron Intellectual Property LLC v. Fred Wallace, FA 1626022 (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); see also CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA 1589962 (Forum Jan. 1, 2015) ("The Panel notes that the WHOIS information merely lists a privacy service as registrant. In light of Respondent's failure to provide any evidence to the contrary, the Panel finds there is no basis to find Respondent is commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii).") Additionally, lack of authorization to use a complainant's mark may indicate that the respondent is not commonly known by the disputed 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 complainant's mark may support a finding that respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)"). The WHOIS information for the disputed domain name, as revealed by the concerned Registrar after the filing of the Complaint, lists the registrant as "yangxiaojiao / Shenzhenshihuajiaomingjishang - Wukejiyouxiangongsi" and there is no evidence of record to suggest that Respondent is known otherwise or that it was authorized to use the MICROTECH mark. The mere fact that Complainant's mark and logo appear on Respondent's website does not, itself, indicate that Respondent is commonly known thereby. Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", D2000-0847 (WIPO Oct. 16, 2000) ("use which intentionally trades on the fame of another can not constitute a 'bona fide' offering of goods or services. To conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation that is obviously contrary to the intent of the Policy.")  Therefore, the Panel finds no evidence upon which to base a conclusion that Respondent is commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

 

Complainant next argues that Respondent fails to use the <micro-tech.shop> domain name in connection with a bona fide offering of goods or services and fails to make a legitimate noncommercial or fair use thereof because it is passing itself off as Complainant. It provides evidence that Respondent uses the disputed domain name to misleadingly divert consumers away from Complainant's website to another website that displays content, much of which has been copied from Complainant. Complainant argues that Respondent does this for Respondent's financial gain. Using a confusingly similar domain name to divert internet users to a respondent's website which features improperly reproduced content for a respondent's financial gain and the purpose of passing off may not be a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) ("Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)."); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) ("Respondent's demonstrated intent to divert Internet users seeking Complainant's website to a website of Respondent and for Respondent's benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).") Here, Complainant provides a screenshot of the <micro-tech.store> website that resolves from the disputed domain name, and notes that it displays a copy of the MICROTECH logo, a marquis photo, images of Complainant's knives, and other content that appears to have been copied from Complainant's own website at its <microtechknives.com> domain name. Further, Respondent displays prices for the products it is offering in grey type which are crossed out with significantly lower prices listed next to them in red type suggesting that these reduced-priced items may be counterfeits. The site also displays the message "Made in the USA" which Complainant asserts is false. As the Panel finds Complainant's evidence and arguments credible and as Respondent has not filed a response or made any other submission in this case to rebut the aforementioned prima facie case, the Panel finds that Respondent fails to make a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).

 

Registration and Use in Bad Faith

Complainant contends that Respondent registered and uses <micro-tech.shop> domain name in bad faith as Respondent intentionally chose the domain name because it is confusingly similar to the MICROTECH mark. A respondent's use of a well-known mark can demonstrate actual knowledge of a complainant's rights therein at registration and form the basis upon which to build a case for bad faith. See iFinex Inc. v. xu shuaiwei, FA 1760249 (Forum Jan. 1, 2018) ("Respondent's prior knowledge is evident from the notoriety of Complainant's BITFINEX trademark as well as from Respondent's use of its trademark laden domain name to direct internet traffic to a website which is a direct competitor of Complainant"). Complainant asserts that it first used the MICROTECH Mark as early as 1995 and that the mark is "famous for its automatic knives." In support, the Complainant submits screenshots from its own website as well as from a Wikipedia entry titled "Microtech Knives" which describes the history of Complainant's company and products. Without commenting on the sufficiency of this evidence to support Complainant's assertion of trademark fame, the Panel finds it highly likely that Respondent had prior knowledge of the asserted MICROTECH mark based on the direct copying of Complainant's logo and other images from its legitimate website. From the evidence showing a high degree of similarity between the content of Respondent's and Complainant's respective websites, the Panel finds that Respondent registered the disputed domain name with actual knowledge of Complainant's rights in the MICROTECH mark.

 

Next, Complainant contends that Respondent registered and uses the <micro-tech.shop> domain name to attract internet users for commercial gain by passing itself off as Complainant based on confusion with the MICROTECH mark. The registration and use of a disputed domain name in an attempt to pass oneself off as a complainant supports a finding of bad faith pursuant to Policy ¶ 4(b)(iv). See American Cheerleader Media, LLC. v. ilir shoshi / cheer, FA 1592319 (Forum, January 20, 2015) ("The Panel here finds that Respondent has engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) as … Respondent utilizes a logo and stylized font identical to Complainant's own, as well as Complainant's copyrighted images and text in an attempt to pass itself off as Complainant."); 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). As support, Complainant points to screenshots of Respondent's website and its own <microtechknives.com> site showing reproduction of its mark, a large marquis photo, as well as, the offering of sporting knives that appear to be identical to many of those offered by Complainant, but at artificially reduced prices. In light of this uncontested evidence, the Panel agrees with Complainant's assertions and finds that Respondent registered and uses the disputed domain name in bad faith pursuant to Policy ¶¶ 4(b)(iv).

 

Further supporting its claim of bad faith is Complainant's assertion that Respondent has engaged in a pattern of conduct preventing the owner of a trademark from reflecting its mark in a corresponding domain name. Where a respondent is found to have engaged in a pattern of bad faith conduct, such as through previous adverse UDRP proceedings against it, and prevented a complainant from reflecting its mark in a corresponding domain name, Panels have found bad faith per Policy ¶ 4(b)(ii). See Webster Financial Corporation and Webster Bank, National Association v. Above.com Domain Privacy, FA 1464477 (Forum Nov. 30, 2012) (finding that, where the record reflected that the respondent had been a respondent in other UDRP proceedings in which it was ordered to transfer disputed domain names to various complainants, this established a pattern of bad faith registration and use of domain names and stood as evidence of bad faith in the registration and use of domain names under Policy ¶ 4(b)(ii)). Here, Complainant points out that the domain name <micro-tech.store> was recently ordered to be transferred in Microtech Knives, Inc. v. shenzhenshihuajiaomingjishangwukejiyouxiangongsi / yangxiaojiao, FA 2061325 (Forum Oct. 6, 2023) under facts that are very similar to those of the present case. Based on this evidence, the Panel finds further support for its conclusion that Respondent has engaged in a pattern of bad faith conduct pursuant to Policy ¶ 4(b)(ii).

 

Finally, Complainant asserts that Respondent failed to respond to Complainant's cease-and-desist letter. Failure to respond to a cease-and-desist letter can be indicative of bad faith per Policy ¶ 4(a)(iii). See Seiko Epson Corporation v. Ashish Sen, FA 1702054 (Forum Dec. 12, 2016) (finding that failing to respond to a cease-and-desist demand letter constitutes bad faith). Here, Complainant has provided a copy of the letter sent to Respondent, dated June 19, 2023, and states that no reply thereto has been received. On this basis the Panel finds further support for its above conclusion that Respondent has acted in bad faith pursuant to Policy ¶ 4(a)(iii).

 

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.shop> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

 

Steven M. Levy, Esq., Panelist

Dated: November 2, 2023