An obvious typographical version of domain names can lead to the filing of a UDRP. In the case of Microenter.com, one would think this is some type of small entrance to the world of entrepreneurship.
Alas, it’s a typo-domain and a variant of “Microcenter” that’s a heavily protected trademark.
The domain’s registrant held it for a good 5 years, potentially generating PPC income from the various landers; that’s how typo-domains work. The omission of the letter “C” creates a domain that may or may not stand the test of the UDRP.
In this case, the Forum (NAF) panelist ordered the domain name Microenter.com to be transferred to the Complainant; the Respondent’s willingness to transfer the domain required no further analysis by the panelist. One could say that it was an easy-collected arbitration fee!
The domain transfer was denied.
Micro Electronics, Inc. v. Abedellatif Shatila
Claim Number: FA2209002013008
PARTIES
Complainant is Micro Electronics, Inc. (“Complainant”), represented by Joseph M. Manak of Scarinci Hollenbeck LLC, New York, USA. Respondent is Abedellatif Shatila (“Respondent”), Lebanon.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is , registered with Dynadot, LLC.
PANEL
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to Forum electronically on September 21, 2022; Forum received payment on September 21, 2022.
On September 23, 2022, Dynadot, LLC confirmed by e-mail to Forum that the domain name is registered with Dynadot, LLC and that Respondent is the current registrant of the name. Dynadot, LLC has verified that Respondent is bound by the Dynadot, 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 September 27, 2022, Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 17, 2022, 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@microenter.com. Also on September 27, 2022, 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 October 26, 2022, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is in the business of selling computers, computer gaming equipment, computer software, mobile phones and other electronic devices, as well as related services, including computer repairs.
Complainant holds a registration for the MICRO CENTER trademark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 3,267,567, registered July 24, 2007, and renewed as of December 22, 2016.
Respondent registered the domain name on or about March 21, 2017.
The domain name is confusingly similar to Complainant’s MICRO CENTER trademark.
Respondent is not licensed or otherwise authorized to use Complainant’s MICRO CENTER mark.
Respondent has not been commonly known by the domain name.
Respondent does not use the domain name for either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Rather, Respondent uses the domain name to host pay-per-click hyperlinks at its resolving webpage, which links resolve to the websites of enterprises offering products or services in competition with the business of Complainant, and from the operation of which links Respondent derives illicit profit.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent’s employment of the domain name disrupts Complainant’s business.
Respondent knew of Complainant’s rights in the MICRO CENTER mark prior to its registration of the domain name.
Respondent both registered and now uses the domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding compliant with the requirements of the Policy and its attendant Rules. However, in an e-mail message addressed to the Forum, Respondent recited as follows:
I[‘]m willing to give this domain name free…. Just tell me how to do that.
DISCUSSION
Paragraph 4(a) of the Policy requires that, in the ordinary course, in order to obtain from a Panel a decision that a domain name be transferred to it, Complainant must prove each of the following:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the same domain name has been registered and is being used by Respondent in bad faith.
Notwithstanding the foregoing, Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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.”
Further, Policy ¶ 3(a) provides for the transfer of a domain name registration upon the written instructions of the parties to a UDRP proceeding without the need for otherwise required findings and conclusions. See, for example, Malev Hungarian Airlines, Ltd. v. Vertical Axis Inc., FA 212653 (Forum Jan. 13, 2004):
In this case, the parties have both asked for the domain name to be transferred to the Complainant . . . Since the requests of the parties in this case are identical, the Panel has no scope to do anything other than to recognize the common request, and it has no mandate to make findings of fact or of compliance (or not) with the Policy.
See also Disney Enterprises, Inc. v. Morales, FA 475191 (Forum Jun. 24, 2005):
[U]nder such circumstances, where Respondent has agreed to comply with Complainant’s request, the Panel felt it to be expedient and judicial [sic] to forego the traditional UDRP analysis and order the transfer of the domain names.
DECISION
Respondent does not contest the material allegations of the Complaint, and, in particular, it does not contest Complainant’s request that the disputed domain name be transferred to Complainant. Rather, in the face of Complainant’s allegations, as spelled out in its Complaint, and its demand that the domain name be transferred to it, Respondent has expressed in writing its willingness to surrender it. Thus the parties have effectively agreed in writing to a transfer of the domain name from Respondent to Complainant without the need for further proceedings.
Accordingly, it is Ordered that the domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: October 31, 2022
