Microcenters.com is a domain name registered in 2003, making it 17 years old.
The domain forwards to a zero click lander, monetizing type in traffic most likely aimed at the singular, Microcenter.com.
The computers and electronics brand is a trademark, however, and has been since 1989.
The ensuing UDRP brought the Complainant, Micro Electronics, Inc., against the domain’s registrant. As a Respondent, the registrant did not respond. The domain was sold in 2003 via Pool.com, and it appears to have been sold by BuyDomains in 2007 or 2008.
The sole panelist in this UDRP found the Respondent guilty of registering and using the domain Microcenters.com in bad faith, and ordered the domain to be transferred to the Complainant.
Full details follow:
Micro Electronics, Inc. v. DNS Admin / Domain Privacy LTD
Claim Number: FA2006001899373
PARTIES
Complainant is Micro Electronics, Inc. (“Complainant”), represented by David A. Einhorn of Scarinci Hollenbeck LLC, New York, USA. Respondent is DNS Admin / Domain Privacy LTD (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microcenters.com>, registered with Naugus Limited LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the Forum electronically on June 8, 2020; the Forum received payment on June 8, 2020.
On June 12, 2020, Naugus Limited LLC confirmed by e-mail to the Forum that the <microcenters.com> domain name is registered with Naugus Limited LLC and that Respondent is the current registrant of the name. Naugus Limited LLC has verified that Respondent is bound by the Naugus Limited LLC 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 June 15, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 6, 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 postmaster@microcenters.com. Also on June 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On July 10, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed The Honourable Neil Anthony Brown QC as Panelist.
Having reviewed the communications records, the Administrative Panel (the “Panel”) finds that the 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, the 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.
PARTIES’ CONTENTIONS
A. Complainant
Complainant made the following contentions.
Complainant Micro Electronics, Inc. is a national company that sells computer products and related services, both online and in retail stores nation-wide. Complainant has rights in the MICRO CENTER mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,552,264, registered Aug. 15, 1989). See Compl. Ex. E. Respondent’s <microcenters.com> domain name is confusingly similar and virtually identical to Complainant’s trademark as it contains Complainant’s MICRO CENTER mark, merely adding an “s” and the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interest in the <microcenters.com> domain name. Respondent is not authorized or licensed to use Complainant’s MICRO CENTER mark and is not commonly known by the disputed domain name. Additionally, Respondent’s use of the domain name does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use as the resolving webpage offers competing goods and includes links to competing websites.
Respondent registered and uses the <microcenters.com> domain in bad faith. Respondent uses Complainant’s mark to divert Internet traffic to Complainant’s competitors via hyperlinks on the resolving webpage. Additionally, Respondent had knowledge of Complainant’s rights in the MICRO CENTER mark at the time the disputed domain was registered, as evidenced by the Respondent’s use of the mark to divert Internet traffic to Complainant’s competitors. Furthermore, Respondent’s bad faith is demonstrated by the use of a privacy shield organization as the Registrant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
FINDINGS
1. Complainant is a United States company that sells computer products and related services, both online and in retail stores nation-wide.
2. Complainant has established its trademark rights in the MICRO CENTER mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,552,264, registered Aug. 15, 1989).
3. Respondent registered the disputed domain name on September 6, 2003.
4. Respondent has caused the domain name to resolve to a website that offers competing goods and includes links to competing websites.
DISCUSSION
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 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 first question that arises is whether Complainant has rights in a trademark or service mark on which it may rely. Complainant submits that it has rights in the MICRO CENTER mark based upon registration with the USPTO (e.g., Reg. No. 1,552,264, registered Aug. 15, 1989). See Compl. Ex. E. Registration of a mark is a valid demonstration of rights in a mark. 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).”). Therefore, the Panel finds the Complainant has rights in the MICRO CENTER mark under Policy ¶ 4(a)(i).
The next question that arises is whether the disputed domain name is identical or confusingly similar to Complainant’s MICRO CENTER mark. Complainant aruges that Responent’s <microcenters.com> domain name is confusingly similar and virtually identical to Complainant’s MICRO CENTER mark as it contains the enitre mark and merely adds an “s” and the “.com” gTLD. The addition of the letter “s” and gTLD to a mark does not significantly distiguish the disputed domain name from a mark per Policy ¶ 4(a)(i). See PathAdvantage Associated v. VistaPrint Technologies Ltd, FA 1625731 (Forum July 23, 2015) (holding that the <pathadvantages.com> domain name was confusingly similar to the PATHADVANTAGE trademark because the domain name “merely adds the letter ‘s’ to Complainant’s 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.”). Therefore, the Panel finds that the disputed domain name is confusingly similar to the MICRO CENTER mark under Policy ¶ 4(a)(i).
Complainant has thus made out the first of the three elements that it must establish.
Rights or Legitimate Interests
It is now well established that 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), then the burden shifts to Respondent to show 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”).
The Panel finds that Complainant has made out a prima facie case that arises from the following considerations:
(a) Respondent has chosen to take Complainant’s MICRO CENTER trademark and to use it in its domain name, containing the enitre mark and merely adding an “s” which does not negate the confusing similarity between the domain name and the trademark;
(b) Respondent registered the disputed domain name on September 6, 2003;
(c) Respondent has caused the domain name to resolve to a website that offers competing goods and includes links to competing websites;
(d) Respondent has engaged in these activities without the consent or approval of Complainant;
(e) Complainant argues that Respondent is not commonly known by the domain name <microcenters.com> and is not authorized to use Complainant’s MICRO CENTER mark. WHOIS information may be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See CheapCaribbean.com, Inc. v. Moniker Privacy Services, FA1411001589962 (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, a respondent’s lack of authorization to use a mark can indicate a respondent does not have rights or legitimate interests in the disputed domain name. See SPTC, Inc. and Sotheby’s v. Tony Yeh shiun, FA 1810835 (Forum Nov. 13, 2018) (finding no rights or legitimate interests in the <sothebys.email> domain name where the WHOIS identified Respondent as “Tony Yeh shiun,” Complainant never authorized or permitted Respondent to use the SOTHEBY’S mark, and Respondent failed to submit a response.). The WHOIS information for the disputed domain lists the registrant as “DNS Admin/Domain Privacy LTD” and no information indicates the Complainant has authorized this entity to use the MICRO CENTER mark. See Compl. Ex. A. Thus, the Panel finds the Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii);
(f) Complainant argues that Respondent does not use the disputed domain name to make a bona fide offering of goods or services or legitimate fair use as the resolving webpage offers competing goods and includes links to competing websites. Use of a disputed domain name to display links to competing goods and services is not considered a bona fide offering or legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Ashley Furniture Industries, Inc. v. domain admin / private registrations aktien gesellschaft, FA1506001626253 (Forum July 29, 2015) (“Respondent is using the disputed domain name to resolve to a web page containing advertising links to products that compete with those of Complainant. The Panel finds that this does not constitute a bona fide offering or a legitimate noncommercial or fair use.”); see also Vanguard Trademark Holdings USA LLC v. Dan Stanley Saturne, FA 1785085 (Forum June 8, 2018) (“Respondent’s use of the disputed domain name does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use” where “Respondent is apparently using the disputed domain name to offer for sale competing services.”). Complainant provides screenshots of the resolving webpages of the disputed domain that advertise competing computer products and links to various competitors of the Complainant. See Compl. Annex Exhibits C and I. Therefore, the Panel finds that the Respondent is not using the disputed domain name to make a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
All of these matters go to make out the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against it, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.
Complainant has thus made out the second of the three elements that it must establish.
Registration and Use in Bad Faith
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain name was registered in bad faith and has been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain name was registered and used in bad faith. That is so for the following reasons.
First, Complainant argues that Respondent’s registration and use of the <microcenters.com> domain is in bad faith because it disrupts Complainant’s business and attracts Internet traffic to the disputed domain name for commercial gain. The use of a disputed domain name to offer competing goods or services and hyperlinks to competing goods or services is evidence of bad faith disruption of a complainant’s business under Policy ¶ 4(b)(iii) and attraction for commercial gain under Policy ¶ 4(b)(iv). See Transamerica Corporation v. Carolina Rodrigues / Fundacion Comercio Electronico, FA 1798316 (Forum Aug. 20, 2018) (“Respondent’s use of the domain name to link to competitors of Complainant, presumably generating pay-per-click or referral fees for Respondent, is indicative of bad faith under paragraphs 4(b)(iii) and 4(b)(iv).”); see also Walgreen Co. v. MUHAMMAD SALEEM / WALGREENSGENERAL TRADING LLC, FA 1790453 (Forum Jul. 1, 2018) (“Respondent’s registration and use of the confusingly similar <walgreensshop.com> domain name in furtherance of trading competitively on Complainant’s WALGREENS trademark demonstrates Respondent’s bad faith pursuant to Policy ¶¶ 4(b)(iii) and (iv).”). Complaint has provided the Panel with screenshots that show the disputed domain name <microcenters.com> resolves to a website that features competing computer products and links to the websites of Complainant’s competitors. See Compl. Annex Exs. C, F, G, and I. Therefore, the Panel finds that the Respondent registered and uses the disputed domain name in bad faith under Policy ¶¶ 4(b)(iii) and (iv).
Secondly, Complainant argues that Respondent had actual knowledge of Complainant’s MICRO CENTER mark when registering the <microcenters.com> domain name based on the Respondent’s use of the disputed domain to divert Internet traffic to competing websites. Actual knowledge of the complainant’s mark can be shown by a disputed domain name that uses complainant’s well known mark and redirects Internet traffic to competing websites. 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 argues that Respondent had actual knowledge of Complainant’s rights at the time the disputed domain name was registered since the MICRO CENTER mark has been well known for an extensive period of time, the Respondent appropriated the entirety of the mark, and the website diverted Internet traffic to competing websites, including direct competitors of the Complainant. See Compl. Annex Exhibits C, F, G, and I. As the Panel agrees, the Panel finds Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Thirdly, Complainant argues that the Respondent’s use of a privacy shield organization as the Registrant of the disputed domain name indicates bad faith. The use of a WHOIS privacy service in a commercial context raises a rebuttable presumption of bad faith registration and use. See Phoenix Niesley-Lindgren Watt v. Contact Privacy Inc., Customer 0150049249, FA 1800231 (Forum Sep. 6. 2018) (“In a commercial context, using a WHOIS privacy service raises the rebuttable presumption of bad faith registration and use of the disputed domain name. An honest merchant in the marketplace does not generally try to conceal the merchant’s identity. Good faith requires honesty in fact. Respondent did nothing to rebut this presumption of bad faith. Therefore, the Panel will find bad faith registration and use for this reason.”). Complainant argues Respondent used the “DNS Admin/Domain Privacy LTD” as the Registrant of the disputed domain name in order to hide its identity and activities. As the Panel agrees, they may find Respondent registered the disputed domain name in bad faith per Policy ¶ 4(a)(iii).
Fourthly, in addition and having regard to the totality of the evidence, the Panel finds that, in view of Respondent’s registration of the disputed domain name using the MICRO CENTER mark and in view of the conduct that Respondent has engaged in when using the disputed domain name, Respondent registered and used it in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
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 <microcenters.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: July 11, 2020
