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Lilly ICOS LLC v. Tudor Burden d/b/a BM Marketing/Burden Marketing [2005] GENDND 458 (21 June 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Micro Electronics, Inc. v. Strateks Corporation

Case No. D2005-0129

1. The Parties

The Complainant is Micro Electronics, Inc., Hilliard, Ohio, United States of America represented by Benesch, Friedlander, Coplan & Aronoff, LLP, United States of America.

The Respondent is Strateks Corporation, Vancouver, BC, Canada.

2. The Domain Name and Registrar

The disputed domain name <microcentre.com> (the “Domain Name”) is registered with Go Daddy Software Inc.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on February 4, 2005. On February 8, 2005, the Center transmitted by email to Go Daddy Software Inc. a request for registrar verification in connection with the domain name at issue. On the same day, Go Daddy Software Inc. transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on February 14, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was March 6, 2005.

On February 28, 2005, the Respondent advised that it had cancelled its ownership rights to the disputed domain name. The Center checked the GoDaddy.com whois database on March 8, 2005, and confirmed that the Respondent was still the Registrant. In an email sent to the Respondent on March 8, 2005, the Center advised that it would have to continue with the proceedings unless the Respondent wished to transfer the domain name to the Complainant and the Complainant requested a suspension of the proceedings. When no reply was forthcoming, the Center notified the Respondent’s default on March 8, 2005. A response from the Respondent later that day reiterated its earlier comment that it had given up the rights to the domain name and could no longer access it in order to affect a transfer.

The Center appointed Ross Wilson as the sole panelist in this matter on March 17, 2005. 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 Background

Micro Electronics is a Delaware corporation retailing books and magazines, office furniture, office supplies, computer and telecommunications equipment and educational services, repair and maintenance services and mail order services in the field of computer and related items. Micro Electronics has operated continuously under the name Micro Center since 1980 when it opened its first store. It currently has 20 stores in 13 states and its annual sales are several billion dollars annually. It invests millions of dollars in the advertising and promotion of its MICRO CENTER trademarks and associated goods and services. Through its website Micro Electronics grosses approximately 9,5 million United States dollars annually in business sales.

The Complainant began doing business through its first website using the domain name of <mei-microcenter.com> in 1998 and since May 2002 through <microcenter.com>. The domain name <microcenter.com> was registered on July 24, 1996.

Micro Electronics has two US trademark registrations for MICRO CENTER for different classes registered in August 15, 1989, and July 5, 1994, respectively, and one for MICRO CENTER ONLINE registered in December 16, 2003.

5. Parties’ Contentions

A. Complainant

The Complainant contends that:

- given the similarities in the domain name at issue and the notoriety of the Complainant’s trademarks, the Respondent necessarily knew of the Complainant’s rights in the mark MICRO CENTER when it registered the disputed domain name. The notice to the Respondent was both constructive and actual;

- its extensive use in commerce of the <microcenter.com> domain name before the Respondent’s registration evidences the Complainant’s ownership of common-law rights in the disputed domain name;

- the disputed domain name is a misspelling, by the inversion of two letters, of the Complainant’s own domain name which incorporates its federally registered trademarks. By differing only in two letters the disputed domain name is confusingly similar to the Complainant’s mark;

- the Respondent selected the Domain Name because it was confusingly similar to the Complainant’s marks and domain name;

- the Respondent has no rights or legitimate interests in the Domain Name because it does not own any federally registered trademarks with the words “micro” and “centre”, it is not commonly known by the mark or domain name <microcenter.com>, has not made any demonstrable preparations to use the Domain Name, is not making any legitimate non-commercial or fair use of the Domain Name and is not licensed and does not have any authorization to use the trademark MICROCENTER or a confusingly similar version of it;

- evidence of bad faith includes; the Respondent has linked the Domain Name to a web page that provides links to websites of actual and potential competitors of the Complainant, the Respondent has disrupted the Complainant’s business by redirecting users and thus creating a likelihood of confusion in the minds of actual and prospective customers, the implausibility that there could be any legitimate reason for the Respondent’s choice of a domain name that both incorporates the Complainant’s trademark and is virtually identical to the domain name that the Complainant uses to provide services to its customers, and the Respondent registered the Domain Name primarily for the purpose of selling the domain name registration to the Complainant or to a competitor for about 15,000 United States dollars, which is in excess of out-of-pocket costs related to the Domain Name.

B. Respondent

As mentioned above, the Respondent did not reply to the Complainant’s contentions but chose to cancel its ownership rights to the disputed domain name indicating that it did not wish to challenge the Complainant’s right in the Domain Name.

6. Discussion and Findings

While the Respondent does not wish to challenge the Complainant’s contentions it has indicated that it is no longer able to transfer the disputed domain name. Consequently, while the Respondent remains the registrant of the Domain Name the proceeding must continue and the Panel must consider the case based on the evidence before it.

A. Identical or Confusingly Similar

According to paragraph 4(a) of the Policy, the Complainant must prove that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.

The Complainant has three registered trademarks using the words “micro” and “Center”, with the earliest dating from 1989. The existence of the registered trademarks satisfies the threshold requirement of having rights in the mark MICRO CENTER.

The disputed domain name is <microcentre.com> and the relevant part differs by the misspelling or the transposition of the last two letters of the word “center”. While not identical, the disputed domain name is confusingly similar to the Complainant’s mark. Domain names with minor misspelled variations of trademarks have been held consistently to be “confusingly similar”. For example, American Online Inc. v. John Zuccarini, WIPO Case No. D2000-1495, The Toronto-Dominion Bank v. Boris Karpachev, WIPO Case No. D2000-1571, Google Inc. v. Namerental.com and Leonard Bensonoff, WIPO Case No. D2001-0060, Telstra Corporation Limited v. Kandasamy Mahalingam, WIPO Case No. D2000-0999 and Pfizer Inc. v. Enamecorp.com, WIPO Case No. D2001-0791. The American Online case summarises the position taken on misspellings as “[t]he mere addition of a minor misspelling…does not create a new or different mark in which the Respondent has rights. Instead it results in a domain name that is confusingly similar to the Complainant’s mark”.

The Panel finds that the Complainant has proven that the disputed domain name is confusingly similar to a trademark or service mark in which the Complainant has rights.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy sets out how a Respondent can demonstrate rights to and legitimate interests in the disputed domain name. The ways include, but are not limited to:

“(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or an organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights: or

(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Based on the information before the Panel, none of the above ways of demonstrating rights to or legitimate interests in the disputed domain name could possibly be maintained by the Respondent. The Respondent registered its domain name well after the Complainant obtained rights in its trademark. There is no evidence that the Respondent is commonly known or has acquired rights in the Domain Name. The Complainant has stated that the Respondent is not a representative of the Complainant or licensed to use the Complainant’s trademark.

Finally, the Respondent’s use of the disputed domain name deliberately diverted to the Complainant’s competitors and others those Complainant’s customers or those Internet users interested in the company’s products who unintentionally make a typographical error when keying in the Complainant’s domain name. Consequently, no legitimate non-commercial or fair use of the Domain Name can be found.

Based on the evidence presented, it is the Panel’s view that the Respondent has no rights or legitimate interests to the disputed domain name.

C. Registered and Used in Bad Faith

For the purposes of determining if there was bad faith the Panel considered the circumstances of the registration and use of the domain name as set out in paragraph 4(b) of the Policy, noting that it does not impose any limitation on how the registration and use of a domain name in bad faith is evidenced.

The circumstances of paragraph 4(b) involve possible bad faith motives of: (1) selling, renting or otherwise transferring the domain name for valuable consideration, (2) preventing the trademark owner from having its trademark as a domain name (provided there is a pattern of such conduct), (3) disrupting the business of a competitor or (4) attracting Internet users to a website for commercial gain by creating confusion with the Complainant’s trademark.

In this case the last of the above bad faith motives is apparent, that is, attracting Internet users to a website for commercial gain by creating confusion with the Complainant’s trademark. There can be little doubt that the Respondent was aware of the Complainant’s trademark and associated reputation when it registered the misspelling of the Complainant’s trademark as a domain name and set about creating a website based solely on links to other computer sites including links to four of the Complainant’s actual and potential competitors.

In view of the evidence provided, the Panel finds that the Respondent registered and used the disputed domain name in bad faith.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the domain name <microcentre.com> be transferred to the Complainant.

Ross Wilson
Sole Panelist

Dated: March 27, 2005