DECISION

 

Microtech Knives, Inc. v. Jiuwei Zhu

Claim Number: FA2401002078147

 

PARTIES

Complainant is Microtech Knives, Inc. ("Complainant"), represented by Timothy D. St. Clair of Parker Poe Adams & Bernstein LLP, South Carolina, USA. Respondent is Jiuwei Zhu ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <microtech-knife.com>, registered with Name.com, Inc.

 

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.

 

James Bridgeman SC as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on January 8, 2024; Forum received payment on January 8, 2024.

 

On January 10, 2024, Name.com, Inc. confirmed by e-mail to Forum that the <microtech-knife.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. has verified that Respondent is bound by the Name.com, 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 January 11, 2024, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 31, 2024 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@microtech-knife.com. Also on January 11, 2024, 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 February 1, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed James Bridgeman SC 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 disputed domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A. Complainant

Complainant claims rights in the MICROTECH mark established by its ownership of the portfolio of trademark registrations described below, and extensive use of the mark in its business as a designer and manufacturer of precision cutlery for over 30 years, and the reputation and goodwill that it has achieved by use of the mark on its website at "www.microtechknives.com" which was registered on September 29, 1998.

 

Additionally, Complainant refers to screen captures of two articles which refer to its products: published on January 31, 2023, on the Inside Hook site, and on February 28, 2023 on the Gear Patrol site.

 

Complainant alleges that the disputed domain name is confusingly similar to the MICROTECH mark in which it has rights arguing that the disputed domain name incorporates all of Complainant's mark MICROTECH; and the disputed domain name differs from Complainant's MICROTECH mark by only adding: (1) a hyphen; (2) the generic term "knife;" and (3) the generic Top Level Domain ("gTLD"), ".com". It is submitted that these differences are insufficient to adequately distinguish the disputed domain name from Complainant's MICROTECH mark.

 

It is contended firstly that the addition of a hyphen does not distinguish the disputed domain name from Complainant's mark. See Blizzard Entertainment, Inc. v. XINXIU ZENG / haimin liang,  FA 1736365 (Forum July 19, 2017) (finding that the addition of punctuation—specifically, a hyphen—did not sufficiently distinguish the disputed domain name from complainant's registered mark).

 

Similarly the addition of the generic term "knife," which directly relates to Complainant's business, "does not differentiate the domain name from the mark because the . . . word[] relate[s] directly to Complainant's business[.]". See Health Devices Corporation d/b/a Doc Johnson Enterprises v. Aspen S T C, FA 158254 (Forum July 1, 2003) (citing Marriott Int'l v. Café au lait, FA 93670 (Forum Mar. 13, 2000) (finding that respondent's domain name <marriotthotel.com> is confusingly similar to complainant's MARRIOTT mark).

 

Lastly it is argued that the addition of the gTLD ".com" is de minimis and irrelevant to the analysis under Paragraph 4(a)(i) of the Policy. See Blue Cross and Blue Shield Ass'n v. Shi Lei aka Shilei,  FA 1784643 (Forum June 18, 2018) ("Including generic top level domain descriptors such as '.com' in the [d]isputed [d]omain [n]ames does not affect a finding of confusing similarity, and panels have repeatedly held as such.").

 

Referring to screen captures of its own website at "www.microtechknives.com" and the website to which the disputed domain name resolves at "www.microtech-knife.com", which are exhibited in an annex to the Complaint, Complainant next alleges that Respondent has no rights or legitimate interests in the disputed domain name arguing that

 

·       Complainant's MICROTECH trademark was registered on November 23, 1999, and January 1, 2019, preceding the date Respondent registered the disputed domain name on February 9, 2023;

·       Complainant has not licensed or otherwise authorized Respondent to use any of its trademarks, including MICROTECH, in any manner whatsoever;

·       moreover, Respondent is not in any way connected to, sponsored by, or affiliated with Complainant;

·       the exhibited screen captures show that on the contrary, Respondent registered the disputed domain name and is using the disputed domain name to pass itself off as Complainant and sell counterfeit or otherwise competing products;

·       there can be no reasonable doubt that Respondent deliberately selected the disputed domain name in order to pass off its website as Complainant's website and offer counterfeit or otherwise competing products, citing ASSOS of Switzerland GmbH v. Mingming Guan,  FA 2027946 (Forum Feb. 16, 2023) ("Replicating complainant's website and displaying complainant's products is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).");

·       Respondent's use of the disputed domain name to offer knives and related goods as shown in the exhibited screen capture of Respondent's website, in direct competition with Complainant is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)." See Health Devices Corporation d/b/a Doc Johnson Enterprises v. Aspen S T C,  FA 158254 (Forum July 1, 2003) (citing Chanel, Inc. v. Cologne Zone, WIPO Case D2000-1809 (WIPO Feb. 22, 2001) (finding that use of complainant's mark to sell complainant's perfume, as well as other brands of perfume, is not bona fide use));

·       additionally, under Policy ¶ 4(c)(ii), Respondent's name of record "Jiuwei Zhu" does not resemble the disputed domain name, which tends to indicate that Respondent has not been commonly known by the disputed domain name and thus does not have any rights or legitimate interests in the disputed domain name. See Farm Mutual Automobile Insurance Company v. Dale Anderson,  FA 1613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists "Dale Anderson" as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)).

 

Complainant next alleges that the disputed domain name was registered and is being used in bad faith, arguing that Respondent is using the disputed domain name to mimic Complainant's legitimate webpage, use Complainant's trademarks, use Complainant's copyrighted material and photos, and offer counterfeit or competing products for commercial gain.

 

Complainant argues that such use is designed to confuse and deceive consumers into believing that Respondent's website is Complainant's website and is evidence of bad faith use and registration per Policy ¶ 4(b)(iii) and (iv). See ASSOS of Switzerland GmbH v. Mingming Guan, FA 2027946 (Forum Feb. 16, 2023) ("Use of a disputed domain name to pass off as a complainant and offer competing or counterfeit versions of its products may be evidence of bad faith per Policy ¶ 4(b)(iii) and (iv).")

 

Furthermore, Complainant argues that in view of the fact that Respondent uses Complainant's trademarks, product photos, and copyrighted material, and mimics Complainant's website – it is inconceivable that Respondent registered and is using the disputed domain name without knowledge of Complainant and its trademarks, which also supports a finding that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Kendra Scott and Kendra Scott, LLC v. white jams et al,  FA 1792824 (Forum Aug. 6, 2018) ("A respondent who had knowledge of complainant's rights in a mark and registered a[n] infringing domain name will be found to be acting in bad faith under Policy ¶4(a)(iii).").

 

Lastly, Panels have found bad faith registration and use pursuant to Policy ¶ 4(b)(iv) when many use of a domain name would cause consumer confusion. See Broadcom Corporation v. T Broadous and Broadcom Marketing & Trading, LLC, FA 151547 (Forum May 9, 2003) ("The domain name registered by [r]espondent is confusingly similar to [c]omplainant's mark; any use by [r]espondent would cause Internet user confusion. Respondent intentionally attempted to attract Internet users to its website by creating a likelihood of confusion with [c]omplainant's BROADCOM mark. Thus, the Panel finds bad faith registration and use pursuant to Policy ¶ 4(b)(iv).").

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant is a designer and manufacturer of precision cutlery and owns and uses the MICROTECH mark for which it holds the following trademark registrations:

·       United States registered trademark MICROTECH (and Design), registration number 2294307, registered on the Principal Register on November 23, 1999 for goods in Class 8;

·       United States registered trademark MICROTECH, registration number 5643678, registered on the Principal Register on January 1, 2019, for goods in international class 8.

 

Complainant has an established Internet presence, and is the owner of the domain name <microtechknives.com>, which was registered on September 29, 1998, and maintains its website at "www.microtechknives.com".

 

The disputed domain name was registered on February 9, 2023 and resolves to a website at "www.microtech-knife.com" which purports to offer Complainant's MICROTECH branded products for sale, which inter alia displays Complainant's trademarks, product photos, and copyrighted material, and mimics Complainant's website, and also displays the copyright legend "Copyright 2024 © microtech-knife.com".

 

There is no information available about Respondent, except for that provided in the Complaint, the Registrar's WhoIs and the information provided by the Registrar in response to the request by Forum for details of the registration of the disputed domain name for the purposes of this proceeding.

        

The Registrar has confirmed that Respondent is the registrant of the disputed domain name.

 

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 has provided uncontested evidence that it has rights in the MICROTECH mark, established by its ownership of its portfolio of United States registered trademarks and service marks described above and long and use of the mark in its business as a designer and manufacturer of precision cutlery, including on its website at "www.microtechknives.com".

 

The disputed domain name <microtech-knife.com> each consists of Complainant's MICROTECH mark, a hyphen, the generic term "knife;" and the generic Top Level Domain ("gTLD"), ".com".

 

Complainant's MICROTECH mark is the dominant and only distinctive element in the disputed domain name. For the purposes of this Complaint the addition of the hyphen and the descriptive term "knife" contribute no distinguishing character to the disputed domain name, nor do they prevent a finding of confusing similarity between the disputed domain name and Complainant's mark.

 

The gTLD ".com" would be considered by Internet users as a necessary technical requirement for an Internet domain name and therefore does not prevent a finding of confusing similarity between the disputed domain name and Complainant's GUESS mark.

 

This Panel finds therefore that the disputed domain name is confusingly similar to the MICROTECH mark in which Complainant has rights and Complainant has therefore succeeded in the first element of the test in Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

In its Complaint, Complainant has made out an uncontested, credible prima facie case that the Respondent has no rights legitimate interests in the disputed domain name as set out in Complainant's detailed submissions above.

 

It is well established that once a complainant makes out a prima facie case that a respondent has no rights or legitimate interests in the domain name at issue, the burden of production shifts to the respondent to prove its rights or legitimate interests.

 

Respondent has failed to discharge that burden and therefore this Panel must find that Respondent has no rights or legitimate interests in the disputed domain name.

 

Complainant has therefore succeeded in the second element of the test in Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

Complainant has adduced uncontested evidence of its registered trademark rights in the MICROTECH mark going back to at least November 23, 1999 when the earlier of its abovementioned trademarks was registered in the United States.

 

The disputed domain name was registered many years later February 9, 2023.

 

The disputed domain name is almost identical to Complainant's own domain name <microtechknives.com>, which was registered on September 29, 1998, and which Complainant uses as the address of its website at "www.microtechknives.com".

 

Taking these factors into consideration, it is most improbable that the registrant of the disputed domain name was unaware of Complainant, its eponymous trademark, domain name and website when the disputed domain name was chosen and registered.

 

This Panel finds therefore that on the balance of probabilities the disputed domain name was registered in bad faith with the intention of taking predatory advantage of Complainant's goodwill and reputation in the MICROTECH mark.

 

The exhibited screen captures show that the disputed domain name resolves to a website which purports to offer MICORTECH-branded knives for sale. Respondent's website displays Complainant's trademarks, product photos, and copyrighted material, and mimics Complainant's website.

 

There is no indication on Respondent's website that Respondent has no association with Complainant and in fact there is a copyright legend displayed on Respondent's website which states "Copyright 2024 © microtech-knife.com" inferring that there is an association or at least intending to create confusion among Internet visitors.

 

Respondent is therefore using the disputed domain name to attract and lure Internet traffic, by creating an initial interest confusion among Internet users who are expecting to reach a website maintained by, or associated with, Complainant. Upon arriving at Respondent's website there is nothing to indicate that the visitor has not arrived at a website maintained by or associated with Complainant.

 

This Panel finds therefore that by using the disputed domain name in this manner, Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent's web site or other on-line location, by creating a likelihood of confusion with Complainant's MICROTECH mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site or location or of a product or service on Respondent's web site or location.

 

As this Panel has found that the disputed domain name was registered and is being used in bad faith, Complainant has therefore succeeded in the third element of the test in 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 <microtech-knife.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

_______________________________________________

 

James Bridgeman SC, Panelist

Dated: February 1, 2024