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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Micron Electronics, Inc. v. New World Concepts, Inc.
Case No. D2001-0225
1. The Parties
1.1. The Complainant is Micron Electronics, Inc., a corporation organized and existing under the laws of the State of Minnesota, United States of America, having its principal place of business at 900 East Karcher Road, Nampa, Idaho, United States of America.
1.2 The Respondent is New World Concepts, Inc., an entity having an address at 18373A E. Colima Rd. #544, Rowland Heights, California, United States of America.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are <thehostpro.com>, which domain name is registered with Register.com, Inc., located in New York, New York, United States of America, and <thehostpros.com>, which domain name is registered with eNom, Inc., located in Redmond, Washington, United States of America.
3. Procedural History
3.1 A Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on February 16, 2001.
3.2 A Request for Registrar Verification was transmitted to the registrars, eNom, Inc. and Register.com, Inc. requesting them to: (1) confirm that the domain names at in issue are registered with each of them, respectively; (2) confirm that the entity identified as the Respondent is the current registrant of the domain names; (3) provide the full contact details (i.e., postal address (es), telephone number(s), facsimile number(s), e-mail address (es)) available in the registrar’s Whois database for the registrant of the disputed domain names, the technical contact, the administrative contact and the billing contact; (4) confirm that the Uniform Domain Name Dispute Resolution Policy (the "Policy") is in effect; (5) indicate the current status of the domain names.
3.3 On February 19, 2001, eNom, Inc. and on February 21, 2001, Register.com, Inc. confirmed that the domain names at issue are registered with the respective registrar, are currently in active status, and that the Respondent is the current registrant of the name. The registrars also forwarded the requested Whois details, and confirmed that the Policy is in effect.
3.4 The WIPO Center determined that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the "Uniform Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). The required fees for a single-member Panel were paid on time and in the required amount by the Complainant.
3.5 No formal deficiencies having been recorded, on February 27, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, eNom, Inc., Register.com, Inc., and ICANN), setting a deadline of March 18, 2001, by which the Respondent could file a Response to the Complaint. The Commencement Notification was transmitted to the Respondent by courier and by e-mail to the e-mail addresses indicated in the Complaint. In any event, evidence of proper notice is provided by the evidence in the record of the Respondent’s participation in these proceedings.
3.6 A Response was received on March 24, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on March 26, 2001.
3.7 On May 10, 2001, having received M. Scott Donahey’s Statement of Acceptance and Declaration of Impartiality and Independence, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, in which M. Scott Donahey was formally appointed as the Sole Panelist. The Sole Panelist finds that the Administrative Panel was properly constituted and appointed in accordance with the Uniform Rules and the WIPO Supplemental Rules.
4. Factual Background
4.1 Complainant's wholly owned subsidiary, Micron PC Web Services, Inc. registered the mark HOSTPRO in connection with hosting the websites of others on a computer server, effective July 25, 2000, with the United States Patent Office ("USPTO"). The registration shows a first use in commerce on January 27, 1998, and an application date of August 17, 1999. Complaint, Annex G.
4.2 Complainant has used the mark as a brand name for its web hosting services, which services are marketed primarily through the Internet.
4.3 Respondent registered the domain name <thehostpros.com> on August 18, 1998, and registered the domain name <thehostpro.com> on September 28, 2000. Complaint, Annexes A and B. Complainant alleges that the domain names at issue resolve to a website at which Respondent offers website hosting services directly competitive with those offered by Complainant. Respondent admits that <thehostpros.com> resolves to such a site, but denies that <thehostpro.com> does or ever did resolve to such a site.
4.4 On October 25, 2000, Complainant sent Respondent a letter, requesting that Respondent voluntarily agree to transfer to Complainant the registration of the domain names at issue. Complainant, Annex M.
4.5 Respondent performed a trademark search in August 1998 prior to its registration of the first domain name at issue and found nothing. This was approximately one year prior to the filing of a trademark application by Complainant.
4.6 Respondent began using the domain name <thehostpros.com> in connection with its web hosting business shortly after registration of the name. Respondent avers that it has come to be known by that domain name exclusively.
4.7 Complainant fails to allege when it learned of the registration and use of <thehostpros.com>, and the text of its cease and desist letter is obscured by a photocopy of the signed certified mail receipt which is superimposed.
4.8 Respondent registered the domain name <thehostpro.com> more than a year after Complainant had filed for a trademark with the USPTO more than two months after the trademark issued. Respondent stated that its intent in registering the second domain name was to prevent a third party from registering it and causing confusion with its plural form of the Second Level Domain name ("SLD"). Respondent stated it has no objection to the transfer of this second domain name to Complainant.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered domain names that are confusingly similar to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain names at issue, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent contends that because the mark is largely descriptive, there is no confusing similarity between the mark and the domain names, that Respondent had a right to register and use the domain name <thehostpros.com> prior to any trademark application by Complainant and without any knowledge of the Complainant's use of the name, and that Respondent's registration and use of the domain name <thehostpros.com> was and is in good faith.
6. Discussion and Findings
6.1 Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: "A Panel shall 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."
6.2 Since both the Complainant and Respondent are domiciled in the United States, and since United States’ courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States.
6.3 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain names registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and,
2) that the Respondent has no rights or legitimate interests in respect of the domain names; and,
3) that the domain names have been registered and are being used in bad faith.
6.4 It is clear that the domain names at issue are identical or confusingly similar to the mark in which the Complainant has rights. Dollar Financial Group, Inc. v. Same, ICANN Case No. FA94734 (addition of "the" before mark in SLD does not defeat confusing similarity); EthnicGrocer.com, Inc. v. Unlimited Latin Flavors, Inc., ICANN Case No. FA94385 (registration of plural form does not defeat confusing similarity).
6.5 Respondent registered and used the domain name <thehostpros.com> prior to the application or issuance of Complainant's trademark and without knowledge of its use and for a period of more than two years prior to receiving any notification of dispute from Complainant. Thus, Respondent has established rights and legitimate interests in respect of the domain name <thehostpros.com>. Policy, ¶ 4(c)(i); Gateway, Inc. v. Pixelera.com, Inc., ICANN Case No. D2000-0109; Avnet, Inc. v. AV-Network, Inc., ICANN Case No. D2000-0097.
6.6 However, the Panel finds that Respondent has no right or legitimate interest in respect of the domain name <thehostpro.com>. This name was not registered until well after Complainant's trademark application and two months after the issuance of the mark. Since Respondent is located in the United States, Respondent is on notice of the registration of Complainant's mark with the USPTO. Cellular One Group v. Paul Brien, ICANN Case No. D2000-0028. Having such notice, Respondent could not, nor did it, make bona fide use of the domain name, nor could it have rights or legitimate interests in respect of the domain name. Motorola, Inc. v. NewGate Internet, Inc., ICANN Case No. D2000-0079.
6.7 Respondent registered a domain name, <thehostpro.com> that at the time of registration Respondent at least constructively knew was confusingly similar to a mark in which Complainant had rights. Given Respondent's prior history of checking trademark status prior to registering a domain name, it is likely that Respondent had actual knowledge of Complainant's trademark rights. Respondent made no use of the domain name since its registration. Respondent is a direct competitor of Complainant. In light of the above facts, the Panel finds that Respondent's inaction in the present case constitutes bad faith registration and use. Telstra Corporation Limited v. Nuclear Marshmallows, ICANN Case No. D2000-0003.
For all of the foregoing reasons, the Panel decides that the domain names at issue are confusingly similar to the mark in which the Complainant has rights, that the Respondent has no rights or legitimate interests in respect of the domain name <thehostpro.com>, but that Respondent does have rights and legitimate interests in respect of the domain name <thehostpros.com>, and that the domain name <thehostpro.com> has been registered and is being used in bad faith. Accordingly, pursuant to Paragraph 4(i) of the Policy, the Panel requires that the registration of the domain name <thehostpro.com> be transferred to the Complainant. Complainant's claim as to the domain name <thehostpros.com> is dismissed.
M. Scott Donahey
Dated: June 20, 2001