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WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Micro Electronics, Inc. v. MicroCenter

Case No. D2005-1289

 

1. The Parties

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

The Respondent is MicroCenter, of Manama, Bahrain.

 

2. The Domain Name and Registrar

The disputed domain name <microcentergulf.com> is registered with DomainPeople.

 

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on December 12, 2005. On December 14, 2005, the Center transmitted by email to DomainPeople a request for registrar verification in connection with the domain name at issue. On December 15, 2005, DomainPeople 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 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 December 20, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was January 9, 2006. The Response was filed with the Center on January 11, 2006.

The Center appointed Dr. David J.A. Cairns as the sole panelist in this matter on January 19, 2006. 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

The Complainant operates from many locations in the United States and is a retailer of, amongst other things, books and magazines, office furniture, office supplies, computer and telecommunications equipment and educational services, computer software and accessories, repair and maintenance services, and mail order services in the field of computer and related items.

The Complainant owns the following United States trademark registrations: (i) Registration Nє 1843328 for the word mark MICRO CENTER for retail store services in the field of books and magazines, office furniture, office supplies, and telecommunications equipment, and with a first use in commerce on February 21, 1983; (ii) Registration Nє 1552264 for the word mark MICRO CENTER for educational, retail and mail order and repair and maintenance services in the field of computers, and recording a first use in commerce of March 20, 1985; (iii) Registration Nє 2794827 for the word mark MICRO CENTER ONLINE for computerized on-line retail services in the field of computers and related technology, with a first use in commerce of July 1, 2002.

The Complainant registered the domain name <microcenter.com> in July 24, 1996. The Complainant has used this domain name or <mei-microcenter.com> for on-line merchandising since 1998.

The Respondent registered its business name with the Ministry of Commerce of Bahrain in 1984. The Respondent operates in the Arabian/Persian gulf region as a software company that develops its own software products and has distribution rights for international software companies. The Respondent registered the disputed domain name on August 28, 2001.

The Panel entered the Complainant’s website at the domain <microcenter.com> and the Respondent’s website at <microcentergulf.com> on January 30, 2006. The Panel noted that the Complainant and the Respondent used almost identical fonts on their respective websites for the word ‘Microcenter’ but that in all other characteristics their respective websites were quite different.

 

5. Parties’ Contentions

A. Complainant

The Complainant opened its first store in May 1980, and has operated continuously under the name MICRO CENTER since 1980. It has invested substantially in the promotion of this trademark. It has established significant goodwill in the trademark, which has become famous in computer and related products in the retail store and mail order services field. The Complainant began doing business through its website <mei-microcenter.com> in 1998, and, since May 2002, has conducted business exclusively through <microcenter.com>. The Complainant states that the Respondent’s knowledge of the Complainant’s rights in the MICRO CENTER trademark was both actual and constructive when the Respondent registered the disputed domain name.

The Complainant states that the disputed domain name is confusingly similar to the Complainant’s trademark because it incorporates the trademark and merely adds the suffix ‘gulf’. Further, in this case bad faith supports a finding of confusing similarity in that the disputed domain name was selected by the Respondent because of its confusing similarity to the Complainant’s trademarks and domain name. This is particularly evident because the Complainant’s actual logo is used on the Respondent’s web page. In sum, confusing similarity is established by the fact that (i) the disputed domain name is confusingly similar to the Complainant’s widely known registered trademarks MICRO CENTER and MICRO CENTER ONLINE, and is identical to Micro Electronics’ own domain name except for the addition of the “gulf” suffix, (ii) Respondent sells computer software and computer-related services as does the Complainant, and (iii) the ‘Mictro Center’ logo on the Respondent’s website is strikingly similar to the ‘Micro Center’ logo on the Complainant’s website, which the Complainant states is not a coincidence.

The Complainant states that the Respondent has no rights or legitimate interests in the disputed domain name. In particular, the Complainant states that the Respondent cannot rely on paragraphs 4(c)(i) of the Policy as the Respondent’s activities are a deliberate infringement of the Complainant’s rights and therefore do not constitute ‘a bona fide offering of goods or services’. The Complainant states that intentional infringement cannot constitute a bona fide offering of goods and services, and emphasises that the Respondent has copied the Complainant’s logo as well as its trademark.

The Complainant also states that the disputed domain name was registered and is being used in bad faith. The Respondent’s bad faith is reflected in the fact that, with both constructive and actual knowledge of the Complainant’s trademark rights: (i) the Respondent uses a logo that is strikingly similar, if not identical, to the Complainant’s logo; (ii) the Respondent uses the logo and the disputed domain name to benefit either from web traffic actually intended for the Complainant or to benefit from the perceived affiliation with, or sponsorship or approval by, the Complainant; and (iii) the Respondent can have no plausible legitimate reason for a choice of logo that is so similar to the Complainant’s logo other than for trading on the fame of the Complainant.

The Complainant also states that the addition of a generic suffix constitutes evidence of bad faith registration and use, refers to the implausibility that there could be any legitimate reason for the Respondent’s choice of the disputed domain name that incorporates the Complainant’s trademark and a logo that is virtually identical to the Complainant’s logo. It states that the only conceivable purpose of the Respondent’s actions is to confuse the Complainant’s customers and profit from a wrongful association with the Complainant, and such conduct constitutes bad faith.

B. Respondent

The Respondent states that it has been in business in Bahrain since 1983, and registered the name MicroCenter in 1984. It states that at the time of the Respondent’s commercial registration it had no knowledge of the Complainant’s company name, trademark or the nature of its business. In fact at this time the name Micro Center was not even registered by the Complainant. It also had conducted business under the name MicroCenter for eleven years prior to the registration by the Complainant of its domain name, and states that the registration of a domain name does not guarantee the rights to all domain names which contain part of the registered domain name. The Respondent states that its prior corporate registration of its name therefore has a prior right to the domain name <microcenter.com>. However, the internet became popular in Bahrain much later that the United States and Europe, and when it found that <microcenter.com> was already taken, it opted for the disputed domain name that included the Respondent’s registered name and the additional word ‘gulf’ (referring to the Arabian Gulf / Persian Gulf) which appropriately identifies the Respondent’s region of operation.

The Respondent states that it has also invested millions of dollars since 1983, in promoting its name in the Arabian and Persian gulf region, and has operated a bank account and carried out transactions with international software companies under this name.

The Respondent states that it conducts no business in North America and therefore has no relation or conflicts in business interests or name with the Complainant. It notes that U.S. trademark registrations are not global registrations.

As regards its logo, the Respondent states that its official logo has three components: (i) its name in English; (ii) its trade mark; (iii) its name in Arabic. It further states that the logo was designed by a professional agency on behalf of the Respondent. Any similarity found in the fonts of the English name (part of the full logo) is either purely coincidental or could be attributed to the Complainant. In any case this has no bearing in this case which is related to a dispute over a domain name.

The Respondent also emphasises that it registered the disputed domain name in 2001, and the Complainant has taken almost 4 years to file the Complaint, and states that ‘this deliberate delay in putting up this complaint after so many years for an out of court settlement is a known technique used by many squatters around the globe to get financial gains and therefore this sudden interest does not leave anything for the imagination.’

 

6. Discussion and Findings

The Panel is required to decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules, and any rules and principles of law that it deems appropriate.

Paragraph 4(a) of the Policy requires the Complainant to prove all three of the following elements to be entitled to the relief sought: (i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and (ii) that the Respondent has no rights or legitimate interests in respect of the disputed domain name; and (iii) that the Respondent’s domain name has been registered and is being used in bad faith. Paragraph 4(b) of the Policy elaborates some circumstances that shall be evidence of the registration and use of a domain name in bad faith. Paragraph 4(c) sets out various circumstances which, if found by the Panel to be proved based on the evaluation of all the evidence presented, shall demonstrate that the Respondent has rights and legitimate interests in the disputed domain name.

A. Whether the Disputed Domain Name is Identical or Confusingly Similar to the Complainant’s Trademarks

The Panel accepts that the Complainant owns registrations of the MICRO CENTER trademark in the United States.

The disputed domain name is not identical with the MICRO CENTER trademark, but does incorporate this trademark entirely. The fact that a trademark is incorporated in its entirety in a domain name is a solid indication, but does not ipso facto mean, that the domain name is confusingly similar to the trademark. The similarity of the trademark and the domain name depends on many factors, including “the relative distinctiveness of the trademark and the non-trademark elements of the domain name, and whether the non-trademark elements detract from or contradict the function of the trademark as an indication of origin” (See Pfizer Inc v. The Magic Islands, WIPO Case No. D2003-0870). In this case the Respondent has added the suffix ‘gulf’ to the Complainant’s trademark which is descriptive of the geographical area in which the Respondent conducts its business.

The Complainant’s trademark combines the prefix ‘micro’ meaning ‘in composition, reduced or minute’ with the descriptive term ‘center’ in this case referring to a place of retail sale. ‘Micro’ is a relatively common prefix in relation to technology in words such as ‘microelectronic’, ‘microcomputer’ or ‘microchip’. Accordingly, there is a descriptive element to the Complainant’s trademark, but MICRO CENTER remains an unusual combination of terms with considerable distinctiveness. The suffix ‘gulf’ is a geographical term, suggesting business activity in a ‘gulf’ region (in this case the Arabian/Persian gulf, but the term might also suggest other geographical areas to Internet users, such as the gulf of Mexico). The suffix ‘gulf’ emphasises the trademark function of the MICRO CENTER as an indicator of origin, suggesting sales or distribution under this trademark in a specific geographical area. Accordingly, a customer of the Complainant might well assume from the disputed domain name that the site offers the Complainant’s products in a specific geographical region.

Accordingly, the Panel is satisfied that the addition of the suffix ‘gulf’ does not avoid a confusing similarity between the MICRO CENTER trademark and the disputed domain name, and so the first element of the Policy is satisfied.

B. Whether the Respondent has no Rights or Legitimate Interests in respect of the Disputed Domain Name

Paragraph 4(c)(i) and (ii) of the Policy provide that a respondent has rights and legitimate interests in the disputed domain name where either of the following circumstances are proved: (i) before any notice to the respondent of the dispute, its 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) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent acquired no trademark or service mark rights. Paragraph 4(c)(iii) relates to use without intent for commercial gain and is not relevant to the present case. The circumstances in paragraph 4(c) apply in particular but without limitation to demonstrate rights or legitimate interests, so that a panel can find that rights or legitimate interests are proved by other circumstances.

The Panel notes that paragraph 4(c)(ii) does not apply because the evidence shows that the Respondent is in fact commonly known by the name of MicroCenter and not ‘microcentergulf’. There is no evidence that the Respondent uses ‘microcentergulf’ in any circumstances except in its domain name.

The Panel is satisfied that the Respondent has offered its services and conducted its present business since 1984, under the name MicroCenter, and has invested considerable sums in the promotion of this tradename. There is no doubt that the Respondent has rights and legitimate interests in its tradename MicroCenter, at least in Bahrain or more generally in the Arabian and Persian gulf region, based on business registration and extensive use. The disputed domain name consists of this tradename in which the Respondent has rights, and a geographical identifier appropriate to the location of the Respondent’s business, and has been used for approximately four years before any notice of this dispute. In these circumstances the Panel concludes that the Respondent also has rights or legitimate interests in the disputed domain name.

The Complainant emphasises that the Respondent’s use of the disputed domain name is not bona fide, because the Respondent’s activities are a deliberate infringement of the Complainant’s rights. The Complainant refers to the fact that the Respondent clearly knew of the Complainant’s rights in the trademark MICRO CENTER at the time of registration of the disputed domain name, the overlap in commercial services offered by the Complainant and the Respondent, and particularly to the almost identical logo adopted by the Respondent, as demonstrating deliberate infringement. The Respondent acknowledges that it knew of the Complainant’s ownership of the <microcenter.com> domain name when it registered the disputed domain name. It does not deny an overlap in services with the Complainant, but does say that the services are offered in distinct geographical areas, and the disputed domain name refers to its geographical territory. In respect of the similarity in the logos, and Respondent states that its logo was designed by a professional agency and the similarity in the font is purely coincidental.

The Respondent also states (and the Panel accepts) that its official logo in fact consists of three elements, being its name in English, its name in Arabic, and a trademark device, and the only element similar to the Complainant’s use of its trademark is in the font of the English name. From the Panel’s own observation, the websites are further distinguished in terms of the smaller size of the Respondent’s use of ‘Microcenter’, and the different slogans that appear with the word Microcenter (being ‘Online’ in the Complainant’s website, ands ‘Application Software & Integration Specialists’). Accordingly, while the font similarity is striking, the overall appearance of the two websites is quite distinct.

The Panel finds that the Respondent’s use of the disputed domain name is in respect of a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy (and, further, meets standards analogous to those set out in Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903). The Complainant and the Respondent independently adopted the same name in different parts of the world over twenty years ago. The internet, which knows no geographical boundaries, has brought their identical names into conflict. This case is complicated by the choice of an identical font for their tradenames and, although this circumstance is highly suspicious and of understandable concern to the Complainant, the Respondent’s website does not otherwise falsely suggest any connection or relationship with the Complainant or intent to benefit from the Complainant’s goodwill. On the contrary, there is ample evidence to confirm that the Respondent is using the domain name for legitimate purposes arising from its established business under the name ‘MicroCenter’ in the gulf region. The Panel is not convinced that a contested issue regarding the Respondent’s choice of font in the representation of its tradename deprives the Respondent of its rights and legitimate interests in the disputed domain name. “The Panel does not believe it is the function of the Policy to serve to disentangle the conflicting rights of parties to a mark once it is apparent both parties have colorable claims to a mark underlying a disputed domain name”. See Action Sports Videos v. Jeff Reynolds, WIPO Case No. D2001-1239.

Accordingly, the Panel finds that it has not been demonstrated that the Respondent has no rights or legitimate interests in respect of the disputed domain name, and accordingly, the Complaint is dismissed.

Under the circumstances, there is no need for the Panel to address the third element of the Policy.

 

7. Decision

For all the foregoing reasons, the Complaint is denied.


David J.A. Cairns
Sole Panelist

Date: January 31, 2006

 

Источник информации: https://www.internet-law.ru/intlaw/udrp/2005/d2005-1289.html

 

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