Micro Electronics, Inc. v. Luigi Talamo
Claim Number: FA2005001895490
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, United States. Respondent is Luigi Talamo (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenter.cloud>, 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.
Alan L. Limbury, as Panelist.
Complainant submitted a Complaint to the Forum electronically on May 8, 2020; the Forum received payment on May 8, 2020.
On May 11, 2020, Tucows Domains Inc. confirmed by e-mail to the Forum that the <microcenter.cloud> 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 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 4, 2020 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 email@example.com. Also on May 15, 2020, 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.
A timely Response was received and determined to be complete on June 1, 2020.
Complainant submitted an Additional Submission on June 4, 2020. In reply, Respondent submitted an Additional Submission that same day.
On June 8, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Alan L. Limbury as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant, Micro Electronics Inc., based in Ohio, United States, is a nationwide company with in excess of $1 billion in sales. It sells computers, computer software and associated products and services online through its website at <microcenter.com> and through numerous physical outlets in the United States. In 2015 it was ranked as the 18th largest consumer electronics retailer in the United States and Canada. Complainant has rights in the MICRO CENTER mark based upon many registrations of the mark with the United States Patent and Trademark Office (“USPTO”) beginning in 1989.
Respondent’s <microcenter.cloud> domain name is confusingly similar to Complainant’s MICRO CENTER mark, as it incorporates the mark in its entirety and adds the “.cloud” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <microcenter.cloud> domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use the MICRO CENTER mark in any manner. Respondent uses the disputed domain name to divert Complainant’s customers to a third-party gambling website at <betxon.com>. This does not amount to a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
Respondent registered and is using the <microcenter.cloud> domain name in bad faith. The well-known status of Complainant’s mark has been recognized in Forum UDRP decisions Micro Electronics, Inc. v. Rohit Saluja, FA 1861308 (<microcenter.space>) and Micro Electronics, Inc. v. Tracy Chen, FA1870996 (<microcenter.app>). Respondent chose to register the disputed domain name with actual knowledge of Complainant’s rights in the mark. When someone looks at the disputed domain name, which is identical to Complainant’s mark, and the facts and circumstances surrounding the illegitimate use of the name to divert Internet traffic instantly to a third party gambling website, it is beyond peradventure that Respondent has willfully appropriated Complainant’s name and marks, which are well known, widely used across the United States, are registered in the USPTO and are incontestable. It is also readily apparent that Respondent has adopted Complainant’s domain name and registered trademark to divert Internet traffic away from Complainant’s site and to a gambling website. The copying of Complainant’s mark in selecting and registering a domain under these facts is strong evidence of bad faith registration coupled with the aforementioned actions taken to tarnish Complainant’s reputation and goodwill associated with the MICRO CENTER trademark, service mark and domain name.
The use of a confusingly similar domain name in connection with promoting gambling websites has been held to be evidence of bad faith use: Facebook Inc. v Wang Ming WIPO Case No. DLC 2019-0001.
Respondent was born and lives in Italy and has never been to the USA.
From 1996 to 2009 Respondent worked - exclusively in Italy - in the Information and Communications Technology (ICT) sector where he learned software coding as a personal hobby, his main job being Sales Manager at a major IT company, selling IT services, network systems, hardware and software, exactly the same activity that the Complainant has been doing for many years in the USA.
In all these years and up to now, Respondent has never known or heard of the American Microcenter brand, the most important references for the purchase of hardware or software in Italy being Amazon, Apple, Microsoft and many large IT chains, but none known as Microcenter. When looking on the net for the purchase of a computer with the <google.it> engine, the Complainant's brand does not appear at all in the search results.
On July 24, 2016 Respondent registered the <microcenter.cloud> domain name in Italy through the Italian provider Aruba S.p.A, which at the time offered .cloud domains at a cost of € 2 for 5 years. Respondent’s intention was to start, as a hobby, a site for amateur software development. For the name he was inspired by the well-known Micro-soft brand and thought that Micro-center could be a good name for a small (micro) software production “center”.
This project, like many others, remained on stand-by and never started. On October 25, 2019 (over three years later) Respondent registered the <betxon.com> domain name, again through the same Italian provider, with the aim of starting the same software production project of 2016, but specific for online betting, a sector in which Respondent specialized over the years. This is completely legal in Italy.
The <betxon.com> site is a website for the sale of software and ebooks written in Italian, aimed primarily at Italian citizens, with all prices expressed in euros.
Complainant notes that upon typing the “microcenter.cloud” site, the “betxon.com” home page and web address immediately appear in the browser. This confirms Respondent’s good faith: the type of redirect used was the “301 redirect” from his legally purchased <microcenter.cloud> domain name to his legally purchased “betxon.com” site, without in any way diverting traffic from the Complainant's site.
The “type 301” redirect provides that a user expressly entering “microcenter.cloud” is automatically redirected to the “betxon.com” site but the name “microcenter.cloud” disappears from the browser's address bar. There is therefore no possibility of confusion about the fact that the user is on another site than the one the user manually typed on the keyboard. If a “framed redirect” had been used, the disputed domain name would have remained in the browser's address bar, certainly creating confusion for the user, so the evidence provided by Complainant belies this possibility
It is also important to highlight, at this point, that having remained inactive from 2016 to April 2020, the <microcenter.cloud> domain name has never been indexed by Google or any other search engine, and therefore it doesn’t appear in the search results at all by searching for the simple word "microcenter".
Respondent’s Exhibit I shows that, using a free online verification service on the indexing of a site, and inserting the name of the <microcenter.cloud> domain name associated with the words "laptop", "computer", "hardware", "software", "online", searching with the American “google.com” engine, does not produce any results. It is clear therefore that a user can in no way be confused on the site he/she is visiting.
Complainant’s business and trademark are limited to USA, while Respondent is an EU citizen, a resident in Italy. Respondent denies having any knowledge of Complainant and/or its trademark when the disputed domain name was registered in Italy in 2016.
The proof of this is that today there are many microcenter websites with different extensions that are in no way attributable to Complainant, for example:
· microcenter.co.uk (a parked domain);
· microcenter.de (a parked domain sold for over $3,000);
· microcenter.net (one of the main world domain extensions, but it is a parked domain);
· microcenter.org (another main domain extension, but it is inactive);
· microcenter.nl (an ICT company in Holland);
· microcenter.ca (the site is inactive).
Complainant has provided no evidence that its trademark is well-known outside USA at the time Respondent registered the disputed domain name in Italy, and based on the foregoing, it is not even now.
It is also proven that Respondent did not register the disputed domain name to sell it to Complainant or others, nor did he ever ask Complainant to purchase it. Respondent understands only today that Complainant is a large and very important ICT Company in its country, but Respondent has demonstrated - beyond any reasonable doubt - that abroad Complainant does not have the visibility like Microsoft, Apple, HP or Amazon and therefore, in absolute good faith, Respondent could not know of its existence in 2016 and today.
There is no evidence to suggest that Respondent targeted Complainant’s trademark via the disputed domain name and thus there is no evidence of registration and use in bad faith.
Respondent’s passive holding of the disputed domain name does not amount to bad faith in the circumstances of the present case, in fact the disputed domain name was registered in 2016 and the <betxon.com> domain name at the end of 2019.
Complainant’s trademark is American, Respondent is resident in Italy, and had no way of knowing of Complainant’s trademark or whether such mark would meet the threshold of being sufficiently famous abroad.
As to identity/confusing similarity, it is true that the disputed domain name is identical to that of Complainant, but so are all the other numerous microcenter domains present on the web, for which Complainant, outside the USA, has no rights, some of which belong to companies operating in the same sector as Complainant, but from other countries outside the USA, where Complainant has no business: exactly as happened for the disputed domain name registration.
As to legitimacy, Respondent has shown that he has worked for many years in the IT sector, so in 2016 he registered the <microcenter.cloud> domain name in Italy by an Italian provider to start an online business for which he had, and still has today, all professional rights and skills.
As to bad faith registration and use, if Respondent’s thesis on the first two elements be accepted, there will be no need for further clarifications on his absolute good faith both in July 2016 when he registered the disputed domain name, and in April 2020, when he legitimately used a legally purchased service.
Respondent requests that the complaint be denied or, if not, at least that his good faith be recognized and that his name be redacted from the decision.
C. Additional Submissions
Respondent admits that the disputed domain name is identical to Complainant’s MICRO CENTER mark and does not dispute that:
(a) he is not commonly known by that name;
(b) Complainant never permitted or authorized him to use that mark; and
(c) the disputed domain name resolves directly to the third party “betxon.com” website, which has nothing to do with Complainant and which offers gambling products and services.
This is strong evidence that Respondent has no legitimate interests in MICRO CENTER.
In the face of the undisputed well-known status of the MICRO CENTER mark, Respondent argues that Complainant is not entitled to a decision in its favor because Complainant is based in the United States and Respondent is based in Italy. This argument is without merit. Complainant has prevailed in many other UDRP actions involving domain names incorporating the MICRO CENTER mark against foreign respondents, including, for example:
Portugal: <microcenter.xyz>. See Micro Electronics, Inc. v Filipe Diogo, FA1863581(Forum October 28, 2019).
India: <microcenter.space>. See Micro Electronics, Inc. v Rohit Saluja, FA1861308 (Forum October 7, 2019).
China: <microcenter.club>. See Micro Electronics, Inc. v Eddie Rao, FA1779441(Forum April 26, 2018).
China: <microcenter.app>. See Micro Electronics, Inc. v Tracy Chen, FA1870996 (Forum December 15, 2019).
Cayman Islands: <microcenter.info>. See Micro Electronics, Inc. v Quality Ads, FA1788456 (Forum June 25, 2018).
Respondent further argues, without evidence, that he did not know of Complainant’s rights in MICRO CENTER and that the MICRO CENTER mark is not known in Italy. These arguments fall far short of the mark.
First, as demonstrated in the Amended Complaint, MICRO CENTER is a well-known and notorious trademark that has been used for over 40 years with many uncontested registrations. Second, the location of Respondent is not a relevant consideration for UDRP analysis, and a United States trademark registration is sufficient evidence of rights under the first prong of the Policy, no matter where the respondent is located. See Boxador, Inc. v. Ruben Botn-Joergensen, WIPO Case No. D2017-2593: “While the Respondent has been at pains to explain that his business is in Norway/Europe, which he claims is a totally different territory from that in which the Complainant operates, he is, nonetheless engaged in online business and is well aware that for the most part websites connected to gTLDs are in general terms accessible from all jurisdictions.”
Third, Respondent asserts that he is a skilled Internet Technology professional. As such, when he selected the disputed domain name, it is reasonable to find that he would have conducted an Internet search for the MICRO CENTER name and he would have found that a Google® search returns Complainant and MICRO CENTER as the first result.
Respondent confirms that the disputed domain name is the same as Complainant's trademark but says he has already amply explained the reason for choosing that domain in 2016, just as other sites - with the exact same domain name - have done in the world.
The fact that Complainant prevailed in other similar disputes does not necessarily mean that Respondent, an Italian citizen, should have known Complainant's trademark.
Respondent has not dealt with the IT sector for over 10 years, so in 2016 had been out of that environment for 6 years.
Today Respondent has no interest in the domain name and was completely unaware of all these problems related to the use of a service he legitimately purchased in Italy four years ago. Respondent sent Complainant an email with request to immediately transfer the domain name before the start of this procedure, to which there has been no response. That is why Respondent would like the Panel to consider the possibility that he really is in good faith but, above all, regardless of the resolution, that his name be redacted from the decision.
Complainant has failed to establish all the elements entitling it to relief.
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.
Complainant has established that it has rights in the MICRO CENTER mark based upon numerous registrations of the mark with the United States Patent and Trademark Office (“USPTO”), the earliest being Reg. No. 1,552,264, registered August 15, 1989.
Respondent’s <microcenter.cloud> domain name is confusingly similar to Complainant’s MICRO CENTER mark, as it incorporates the mark in its entirety and adds the “.cloud” generic top-level domain (“gTLD”), which may be ignored for the purposes of this comparison.
In light of the Panel’s decision in relation to the next element, it is unnecessary to determine whether Respondent has rights or legitimate interests in the disputed domain name.
Paragraph 4(b) of the Policy sets out four illustrative circumstances, which, though not exclusive, shall be evidence of the registration and use of the domain name in bad faith for purposes of paragraph 4(a)(iii) of the Policy, i.e.
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has 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 the respondent has engaged in a pattern of such conduct; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 its website or location.
Respondent registered the disputed domain name on July 24, 2016. On October 25, 2019 he registered the <betxon.com> domain name and subsequently redirected the disputed domain name to the “betxon.com” website, which Respondent describes as promoting the sale of software and ebooks written in Italian, aimed primarily at Italian citizens, with all prices expressed in euros.
The Panel is not satisfied that Respondent’s use falls within the circumstances set out in paragraph 4(b)(iv) of the Policy. In any event, such circumstances are merely evidence and are not conclusive of bad faith registration and use. See Viz Communications, Inc., v. Redsun dba www.animerica.com and David Penava, WIPO Case No. D2000-0905. Even assuming that Respondent’s use does fall within paragraph 4(b)(iv) of the Policy, the Panel is not persuaded that such use would suffice to prove that the disputed domain name was originally registered in bad faith some three years earlier.
As to paragraphs 4(b)(i), (ii) and (iii), all of which focus on the purpose of registration, the critical issue in this proceeding is whether Respondent was aware of Complainant when he registered the disputed domain name in 2016. Respondent denies this. Complainant says his denial is not supported by evidence. However, the onus is on Complainant to establish that it is more likely than not that Respondent did know of Complainant.
Respondent says Complainant’s trademark is American, Respondent is resident in Italy, and had no way of knowing of Complainant’s trademark or whether such mark would meet the threshold of being sufficiently famous abroad.
Complainant says Respondent’s argument is without merit, given:
(a) the undisputed well-known status of the MICRO CENTER mark; and
(b) Complainant has prevailed in many other UDRP actions involving domain names incorporating the MICRO CENTER mark against foreign respondents.
As to (a), all Complainant’s trademark registrations are in the United States and, in describing its name and marks as well known, widely used across the United States, registered in the USPTO and incontestable, Complainant does not claim any reputation in its name and marks outside the United States.
As to (b), all five Forum cases cited by Complainant as examples of cases in which it has prevailed against overseas respondents were cases in which no Reponse was filed, so the decisions were made on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and the Panelists drew such inferences as they considered appropriate pursuant to paragraph 14(b) of the Rules.
In uncontested proceedings the Panel is entitled to accept all reasonable allegations set forth in a complaint. In cases FA1863581, FA1779441, FA1870996 and FA1788456 Complainant expressly alleged that the respondent had actual knowledge of its MICRO CENTER mark. In case FA1861308 Complainant alleged the respondent had appropriated Complainant’s MICRO CENTER mark in an effort to create confusion, an assertion which implies actual knowledge.
The present case differs from all of the above cited cases because Respondent denies knowing of Complainant and its mark when he registered the domain name in Italy.
Complainant further argues that the location of Respondent is not a relevant consideration for UDRP analysis, and a United States trademark registration is sufficient evidence of rights under the first prong of the Policy, no matter where the respondent is located, citing Boxador, Inc. v. Ruben Botn-Joergensen, WIPO Case No. D2017-2593.
The first prong of the Policy involves a simple side by side comparison of the domain name and the mark to determine identity or confusing similarity. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), paragraph 1.7. Where a mark is registered and where a respondent is located are irrelevant to the first prong. Whether a respondent had knowledge of a complainant’s mark is likewise irrelevant to the first prong but is highly relevant to the third.
In Boxador, Inc. v. Ruben Botn-Joergensen, WIPO Case No. D2017-2593, the Panel found that the respondent, in Norway, had knowledge of the complainant and its business in the United States because the respondent sent an email to the complainant enquiring as to whether the complainant would be interested in purchasing a domain name which the Respondent had registered the previous day.
There is no evidence in the present case that Respondent ever communicated with Complainant until shortly before the present Complaint was filed, nor that Respondent had Complainant or its mark in mind when registering the disputed domain name in 2016 or redirecting it to his “betxon” website some three years later. Respondent’s explanation for registering the disputed domain name is plausible, as is his explanation of his failure to use it before linking it to his “betxon” website.
Under these circumstances and in light of Respondent’s plausible denial of knowledge of Complainant and its mark when he registered the disputed domain name, the Panel finds that Complianant has failed to establish, on the balance of probabilities, that the disputed domain name was registered in bad faith.
Having not established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.
Accordingly, it is Ordered that the <microcenter.cloud> domain name REMAIN WITH Respondent.
Alan L. Limbury, Panelist
Dated: June 12, 2020
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