Complainant is Micro Electronics, Inc., United States of America (“United States” or “U.S.”), represented by Scarinci Hollenbeck, United States.
Respondent is Privacy Service Provided by Withheld for Privacy ehf, Iceland / Mack Gee, United States.
2. The Domain Name and RegistrarThe disputed domain name
The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 12, 2021. On August 13, 2021, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name. That same day, the Registrar transmitted by email to the Center its verification response disclosing registrant and contact information for the Domain Name, which differed from the named Respondent and contact information in the Complaint. The Center sent an email communication to Complainant on August 16, 2021, providing the registrant and contact information disclosed by the Registrar, and inviting Complainant to submit an amendment to the Complaint. Complainant filed an amended Complaint on August 17, 2021.
The Center verified that the Complaint satisfied the formal requirements of the .IO Domain Name Dispute Resolution Policy (the “Policy”), the Rules for .IO Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for .IO Domain Name Dispute Resolution Policy (the “Supplemental Rules”).
In accordance with the Rules, paragraphs 2 and 4, the Center formally notified Respondent of the Complaint, and the proceedings commenced on August 19, 2021. In accordance with the Rules, paragraph 5, the due date for Response was September 8, 2021. Respondent did not submit any response. Accordingly, the Center notified Respondent’s default on September 14, 2021.
The Center appointed Harrie R. Samaras as the sole panelist in this matter on September 21, 2021. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual BackgroundComplainant is a U.S. company in the business of selling computers, computer software, gaming and networking products and services, electronic hardware, accessories and related services, including computer repairs which it does online and in several brick and mortar locations around the country.
Complainant owns numerous registrations for the MICRO CENTER Mark (or “the Mark”), including U.S. Registration No. 1,552,264 (registered on August 15, 1989); U.S. Registration No. 3,020,431 (registered on November 29, 2005); U.S. Registration No. 3,267,567 (registered on July 24, 2007); and U.S. Registration No. 3,267,627 (registered on July 24, 2007).
Complainant sells and markets its goods under the Mark. Also, Complainant owns and uses the domain name
On a yearly basis, Complainant spends roughly USD 15 million in advertising and promoting the MICRO CENTER Mark. In 2014, Complainant was ranked number 93 on the list of 100 hottest retailers in the United States, compiled by the National Retail Federation. In 2015, the industry trade journal Dealerscope ranked Complainant as the 18th largest consumer electronics retailer in the U.S. and Canada. In 2016, Forbes magazine ranked it 195th among America’s largest private companies, with a staff of 2,750. In October 2016, Micro Center stores won first and second prizes in Intel’s “Score with Intel Core” competition, and donated their prize money to local schools.
Respondent registered the Domain Name on November 23, 2018. The registrant’s address is disclosed by the WhoIs as Capitol Region in Iceland, whereas the further information provided by the Registrar about the registrant’s address is Lawrenceville, Georgia, United States.
The Domain Name used to resolve to a website (“Respondent’s website”) advertising on the landing page: “microcenter shipper | COMPUTER ELECTRONICS GIANT | Welcome to our store. We carry most popular Brands. This includes HP, Lenovo, Acer, Asus, Dell, Apple, Toshiba, Seagate and Western Digital products.” The products shown for sale included airpods, computer printers, video cards, computer monitors, and laptop computers. The presentation of the products and pricing was akin to how Complainant presents its products and pricing on its website. On the last page of the website there was a disclaimer that states: “This Website is in no way affiliated with micro electronics inc. owner of The Microcenter store brand. We only sell similar products.”
At some point, the above-described website to which the Domain Name previously resolved was not accessible, only a webpage stating: “We’ll be Back Soon! . . . microcenter.io is currently unavailable. If you are a visitor to this store Please try again later. If you’re the owner of this store Please ‘sign in’ [link] to resolve the issue, or ‘contact support’ [link].” When the Panel visited the website during the course of this proceeding a warning message stated: “This website may be impersonating ‘microcenter.io’ to steal your personal or financial information. You should go back to the previous page.”
5. Parties’ Contentions A. ComplainantComplainant has rights in the Mark by virtue of its U.S. trademark registrations and its use of the Mark.
The Domain Name is confusingly similar to the Mark because it incorporates the entirety of the MICRO CENTER Mark. The addition of “.io” as a country code Top-Level Domain (“ccTLD”) should be disregarded in the analysis because domain name syntax requires TLDs. Nevertheless, use of the “.io” ccTLD contributes to the confusion created by the Domain Name because early adopters in the technology industry started using the “.io” as a ccTLD because it is an abbreviation of a standard industry term “input/output”. Further, Internet users around the world associate “.io” websites with the latest and greatest technology and software brands. Thus, the Domain Name is confusingly similar to Complainant’s Mark because it is used to promote computer, software and technology products.
Complainant has not authorized Respondent to use the Mark or to register the Domain Name. There is no indication Respondent is or has ever been known by “Micro Center”, or that it has any legitimate interests in it. Respondent registered the Domain Name solely for the purpose of trading on Complainant’s reputation and good will and infringing the Mark by offering for sale the same and similar goods and services in the same channels of trade on the website associated with the Domain Name. This is not a bona fide use of the Domain Name. Also, Respondent, whose identity is masked by a privacy service, is a person who is “not commonly known” by the Domain Name as shown by the WhoIs information for the Domain Name registrant. Respondent is using the Mark to misleadingly divert consumers away from Complainant and to tarnish the Mark.
Bad faith registration exists because: the Mark is well-known; the Domain Name appropriates the entirety of the MICRO CENTER Mark; other domain names could have been created that do not create confusion with the Mark and its associated goods and services; it is not a coincidence that Respondent chose to register the Domain Name for use with the online sale of the same goods and services as those offered by Complainant; and Respondent includes a disclaimer on its website stating that it is not associated with Complainant, which is stark evidence that Respondent knew of Complainant’s rights in the Mark at all relevant times.
Bad faith use exists because: Respondent’s website uses the MICRO CENTER Mark; the website also offers the same goods as Complainant does under the MICRO CENTER Mark; the website contains a disclaimer evidencing Respondent’s knowledge of Complainant’s rights in MICRO CENTER and contains a false copyright notice: “© Microcenter Shipper.”
Respondent’s bad faith registration and use is also demonstrated by the almost total lack of identity information on the WhoIs page for Respondent, and its use of a privacy shield service to mask its identity to the public and Complainant, and mask its infringing activities. It is submitted that this was done to make it extremely difficult for the public and Complainant to discern who is infringing its Mark and using a confusingly similar domain name. Similarly, Respondent’s bad faith is evidenced by the most recent landing page indicating that “microcenter.io is currently unavailable”. There is no indication that Respondent is currently offering any goods or services under the Domain Name. Such passive holding of a domain name has been held to constitute bad faith use.
B. RespondentRespondent did not reply to Complainant’s contentions.
6. Discussion and FindingsAs set forth in International Business Machines Corporation v. Murat Satir,WIPO Case No. DIO2021-0001, under the Policy, a panel can “draw on the principles established under the UDRP as appropriate”. Those are very similar to what is required under the Uniform Domain Name Dispute Resolution Policy (the “UDRP”) except it is necessary for Complainant to establish only that the Domain Name was registered in bad faith or used in bad faith. Id.
A. Identical or Confusingly SimilarIt is uncontested that Complainant has established rights in their MICRO CENTER Mark by virtue of the above-referenced trademark registrations.
The Domain Name consists of Complainant’s MICRO CENTER Mark in its entirety, thus the Panel finds that it is identical to Complainants’ MICRO CENTER Mark. The suffix “.io”, being a ccTLD, is viewed as a standard registration requirement and as such is disregarded under the first element confusing similarity test.
The Panel therefore holds that Complainant has satisfied paragraph 4(a)(i) of the Policy.
B. Rights or Legitimate InterestsComplainant asserts for the lack of Respondent’s rights or legitimate interests in the Domain Name that: there is no indication that Respondent is or has ever been known by the Domain Name (the WhoIs information does not correspond with the Domain Name and there is no other information to the contrary); Complainant has not authorized Respondent to use the MICRO CENTER Mark for any purposes including to register the Domain Name; the Domain Name resolves to Respondent’s website (as described above) offering products and services that directly compete with Complainant in the computing, gaming and electronics market, thus, this use does not constitute a bona fide offering of goods or services or a noncommercial use of the Domain Name; and Respondent is currently making a passive use of the Domain Name.
Complainant has made out a prime facie case of Respondent’s lack of rights or legitimate interests. Accordingly, the burden of production on this element shifts to Respondent to come forward with relevant evidence demonstrating rights or legitimate interests. Because Respondent has failed to come forward with such relevant evidence, Complainant is deemed to have satisfied the second element. The Panel is therefore satisfied that Complainant has carried its burden of proving that Respondent has no rights or legitimate interests in the Domain Name within the meaning of paragraph 4(a)(ii) of the Policy.
C. Registered or Used in Bad FaithRespondent registered and has been using a domain name that is identical to Complainant’s registered Mark since November 23, 2018 -- many years after Complainant began using and registered the Mark. Insofar as Respondent has not shown any rights or legitimate interests in the Domain Name, Respondent registered the Domain Name using an established and registered trademark and then used it in conjunction with a website that was selling the kind of products the owner of the Mark sells. On the uncontroverted evidence, the Panel finds that Respondent registered the Domain Name knowing of Complainant and its rights in the MICRO CENTER Mark. The disclaimer on the website is further confirmation that Respondent was aware of Complainant when it registered the Domain Name. See Costco Wholesale Corporation, Costco Wholesale Membership, Inc. v. Gerardo Suarez, Medicina Mexico, S.A. De C.V.,WIPO Case No. D2013-1811. Thus, the Domain Name was registered in bad faith.
Although not needed in this proceeding, there is clear evidence of bad faith use. Using the Domain Name to sell products in competition with Complainant for commercial gain constitutes bad faith use. Regarding the disclaimer on the website, the Panel considers such use as an admission by Respondent that users may be confused. See WIPO Overview 3.0, section 3.7. Furthermore, the fact that the Domain Name does not currently resolve to an active website does not negate Respondent’s bad faith. The consensus view of previous UDRP panels is that such “passive holding” does not prevent a finding of bad faith, and a panel must look at the totality of the circumstances to determine whether a respondent is acting in bad faith. See WIPO Overview 3.0, section 3.3. Such circumstances may include: (i) the degree of distinctiveness or reputation of the complainant’s mark, (ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, (iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement), and (iv) the implausibility of any good faith use to which the domain name may be put. Id. Such a finding here is appropriate based on: (1) the long-term and established rights by Complainant in its MICRO CENTER Mark; (2) Respondent’s failure to respond to the allegations against it in this proceeding; (3) Respondent’s concealment of its identity; and (4) Respondent’s previous use of the Domain Name to direct Internet users to a website selling products in competition with Complainant.
When the Panel visited the website during the course of this proceeding a warning message stated: “This website may be impersonating ‘microcenter.io’ to steal your personal or financial information. You should go back to the previous page.” To the extent that Respondent is using the Domain Name for the untoward purpose of phishing, that is further evidence of bad faith use of the Domain Name.
For the foregoing reasons, the Panel finds that paragraph 4(a)(iii) of the Policy has been satisfied.
7. DecisionFor the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name
Harrie R. Samaras
Sole Panelist
Date: October 4, 2021