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WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microchip Technology, Inc. v. Milos Krejcik and EDI Corporation, d/b/a Aprilog.com
Case No. D2001-0337
1. The Parties
1.1 The Complainant is Microchip Technology, Inc., a corporation organized and existing under the laws of the State of Delaware, United States of America, having its principal place of business at 2355, West Chandler Boulevard, Chandler, Arizona, United States of America.
1.2 The Respondent is Milos Krejcik, an individual having an address at 2611 South Highland Drive, Las Vegas, Nevada, United States of America. Respondent claims that in registering the domain names at issue that he was acting as agent for an entity known as EDI Corporation, which is doing business under the name of Aprilog.com.
2. The Domain Name(s) and Registrar(s)
The domain names at issue are <pic-micro.com>, <picmicro.net>, <pic-micro.net>, <pic-micro.org>, and <picmicro.org>, which domain names are registered with Network Solutions, Inc.(NSI), based in Herndon, Virginia.
3. Procedural History
3.1 A Complaint was submitted electronically to the World Intellectual Property Organization Arbitration and Mediation Center (the "WIPO Center") on March 7, 2001, and the signed original together with four copies forwarded by express courier was received on March 9, 2001. An Acknowledgment of Receipt was sent by the WIPO Center to the Complainant, dated March 13, 2001.
3.2 On March 15, 2001, a Request for Registrar Verification was transmitted to the registrar, NSI requesting it to: (1) confirm that the domain names at in issue are registered with NSI; (2) confirm that the person 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 March 16, 2001, NSI confirmed by reply e-mail that the domain names at issue are registered with NSI, are currently in active status, and that the Respondent or someone listed as "private" giving Respondent's address is the current registrant of the names. In the Response filed in this matter, the Respondent admits that he registered the domain names at issue, but contends that in doing so he was acting as the agent for EDI Corporation, d/b/a Aprilog.com. The registrar 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 Panel has independently determined and agrees with the assessment of the WIPO Center that the Complaint is in formal compliance with the requirements of the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy"), the Uniform Rules, and 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 March 19, 2001, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification") was transmitted to the Respondent (with copies to the Complainant, NSI and ICANN), setting a deadline of April 7, 2001, by which the Respondent could file a Response to the Complaint. The Notification of Complaint 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 April 3, 2001. An Acknowledgment of Receipt (Response) was sent by the WIPO Center on April 3, 2001.
3.7 On April 20, 2001, having received a Statement of Acceptance and Declaration of Impartiality and Independence from M. Scott Donahey, the WIPO Center transmitted to the parties a Notification of Appointment of Administrative Panel and Projected Decision Date, informing them of his appointment as the Sole Panelist. The Projected Decision Date was May 4, 2001. This was subsequently extended to May 15, 2001at the Panelist's request. The 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 registered the PICMICRO mark in connection with integrated circuits and electrical microcontrollers with the United States Patent Office ("USPTO"), which registration issued on August 25, 1998. PICMICRO has also been registered in the European Community, Japan, and Taiwan. In addition Complainant has registered a "family" of marks surrounding the mark PIC, which mark originally was registered with the USPTO in 1981. Complaint, Annex 5.
4.2 Complainant has used the PICMICRO mark in connection with its products and services and serves to identify Complainant's goods. Complainant spent more than $860,000 during the year 2000 to advertise and promote the PIC family of marks. The marks are used in catalogs, brochures and on the Internet. Complainant contends that the marks are famous.
4.3 Respondent registered the domain names at issue during the period December 1999 through March 2000. Complaint, Annex 1.
4.4 Respondent uses the domain names at issue to resolve to websites that state, "Welcome to Pic-micro.com. Pic-micro.com Adapters for Microchip Technology PIC microcontrollers." The websites offer a variety of products for use in conjunction with Complainant's products.
4.5 Respondent has also registered domain names that contain the trademarks of Complainant's competitors, including ilog-2180.com, hitachi-h8.com, and infineon-c166.com.
4.6 Respondent admits that the PICMICRO mark had been registered sixteen months prior to Respondent's first registration of the domain names at issue, but denies that Complainant's mark is famous.
4.7 Respondent contends that EDI Corporation, d/b/a Aprilog.com has been marketing its line of accessories and development tools using, and in conjunction with PIC or PICMICRO marks for a period of approximately 10 years with the knowledge and endorsement of Complainant. Respondent contends it is entitled to use the marks in conjunction with its after-market sales.
4.8 On several occasions Complainant or its counsel wrote Respondent protesting the use of the domain names and demanding that Respondent cease and desist from such use. Complaint, Annex 2.
5. Parties’ Contentions
5.1 Complainant contends that Respondent has registered domain names which are identical to the trademark registered and used by Complainant, that Respondent has no rights or legitimate interests in respect of the domain name at issues, and that Respondent has registered and is using the domain names at issue in bad faith.
5.2 Respondent contends that Complainant should have filed an action in federal court or taken the matter up with the USPTO, rather than bring an action under the Policy, that because Respondent has a reasonable belief that his actions are lawful that he is protected by United States statute, namely the alleged "safe harbor" provisions of the Anticybersquatting Consumer Protection Act, Section 1125(d)(1)(B)(ii), that other parties have registered domain names which include the mark PIC, and that Complainant is guilty of reverse domain name hijacking.
6. Discussion and Findings
6.1 Complainant petitions the Panel pursuant to paragraph 4(f) of the Policy to consolidate its disputes against Respondent. Paragraph 4(f) provides in pertinent part: "In the event of multiple disputes . . . either [the respondent] or the complainant may petition to consolidate the disputes before a single Administrative Panel . . . . [The Panel} may consolidate before it any or all such disputes in its sole discretion . . . ." In the present case, Respondent does not oppose such consolidation, and the Panel elects to exercise its broad discretion to consolidate the disputes pursuant to the Policy.
6.2 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."
6.3 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.
6.4 Paragraph 4(a) of the Policy directs that the Complainant must prove each of the following:
1) that the domain name 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 name; and,
3) that the domain name has been registered and is being used in bad faith.
6.5 It is clear that the domain names at issue are identical or confusingly similar to the mark in which the Complainant has rights. Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico, WIPO Case No. D2000-0477 ("[T]he elimination of the hyphen does not significantly affect the visual impression made by the domain name as compared with the mark and does not affect the pronunciation . . . .").
6.6 The Panel finds that Complainant has alleged that Respondent has no right or legitimate interest in respect of the domain name at issue. This shifts the burden to Respondent to show that it has rights or legitimate interests in respect of the domain name at issue. See, e.g., Policy, 4(c).
6.7 Respondent has alleged that as it engages in after-market sales of Complainant's products and has done so for ten years (albeit not at websites to which the domain names at issue resolve) without objection from Complainant, that Respondent has rights or legitimate interests in respect of the domain name at issue.
6.8 Paragraph 4(c)(i) of the Policy provides that a Respondent can demonstrate legitimate rights and interests to a domain name by showing that "before any notice to [Respondent] of the dispute, [Respondent's] [used], or demonstrabl[y] prepar[ed] to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services."
6.9 Is a Respondent's registration and use bona fide, where the Respondent registers and uses the domain names to sell after-market goods associated with Complainant's products prior to receiving any formal notice of dispute from Complainant but well after Respondent was aware of Complainant's trademark rights in the domain name?
6.10 At least two Panel Decisions, based on the identical set of facts, have found that an after-market reconditioner and seller of furniture who used the Complainant's trademark in its name ("Kittinger Collector") had rights and legitimate interests in respect of the domain names at issue. The Kittinger Company Inc. v. Kittinger Collector, ICANN Case Nos. AF-0107a and AF-0107b (<kittinger.com> and <kittingercollector.com>); The Kittinger Company Inc. v. James Fisgus, ICANN Case No. AF-0108a and AF-0108b (<kittenger.com> and <kittengerfurniture.com>). In both these cases the Complainant was an assignee of the trademarks at issue who was trying to revive the fortunes of a once famous furniture company that had fallen on hard times and had ceased operations for some period of time. The Respondent purchased, reconditioned and resold furniture that had been manufactured by the complainant's predecessor.
6.11 Another Panel Decision has held that where the Respondent has used the domain name at issue to resolve to a website where users are likely to be confused as to whether the site is sponsored by or affiliated with the Complainant and where the Respondent had registered a domain name identical to the trademark of the Complainant, then the Respondent's use could not be bona fide, even where the Respondent had been offering legitimate goods for sale prior to any notice of dispute. Universal City Studios, Inc. v. G.A.B. Enterprises, WIPO Case No. D2000-0416 (<fieldofdreams.com>). To the same effect are cases such as Easyjet Airline Company Limited v. Mahmoud Panjehshahi, WIPO Case No. D2000-0384 (<easyjet.org>)and Scania CV AB v. Leif Westyle, WIPO Case No. D2000-0169.
6.12 While the Panel agrees with the decisions in the Kittinger cases, supra, it believes that those decisions are limited to their particular and unusual facts. The Panel is persuaded that the reasoning set out in the Universal City Studios case is correct, and that a use of the domain name to sell legitimate goods and services which precedes any notice of the dispute cannot be bona fide where the Respondent has established a website that causes a user to be confused as to whether it is affiliated or sponsored by the Complainant and where the respondent had prior knowledge of the Complainant's mark. In the present case the Panel finds that Respondent knew of Complainant's mark, whether registered or common law, and that Respondent's websites created an unnecessary likelihood of confusion. Complaint, Annex 9. Accordingly the Panel finds that Respondent has no rights or legitimate interests in respect of the domain names at issue.
6.13 Paragraph 4(b)(iv) of the Policy provides that if a Respondent uses a domain name to intentionally attempt to attract Internet users for commercial gain by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation or endorsement of the website or the products or services offered there that this constitutes bad faith registration and use. The Panel finds that Respondent's conduct falls squarely within this description and that Respondent has registered and is using the domain names at issue in bad faith.
6.14 Respondent claims that its actions are protected by a "safe harbor" provision of the Anticybersquatting Consumer Protection Act, namely Section1125(d)(1)(B)(ii). That section provides: "Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise unlawful."
6.15 The Panel finds that this provision of the Anticybersquatting Consumer Protection Act is not applicable to proceedings under the Policy. Subparagraph (A), referenced in the quoted section, deals with liability in a civil action. The Anticybersquatting Consumer Protection Act provides for civil liability in the form of monetary damages (see, 15 U.S.C. §§ 1117(a) and 1118); the Policy does not. Moreover the Policy expressly sets out examples of conduct which constitutes bad faith registration and use. See, Policy, paragraph 4(b). The Panel has found that Respondent's conduct fell within one of the subparagraphs of paragraph 4(b).
6.16 Finally, it is the Panel's belief that where, as here, the Respondent has registered multiple variations of Complainant's registered trademark, which trademark is entirely fanciful, and where Respondent knew that it was registering such a trademark, the good faith belief defense under the Anticybersquatting Consumer Protection Act would not be not available, even were that provision of the act to be applicable to proceedings under the Uniform Domain Name Dispute Resolution Policy.
For all of the foregoing reasons, the Panel decides that the domain names registered by Respondent are identical to the trademark in which the Complainant has rights, that the Respondent has no rights to or legitimate interests in respect of the domain names at issue, and that the Respondent's domain name 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 names <pic-micro.com>, <picmicro.net>, <pic-micro.net>, <pic-micro.org>, and <picmicro.org> be transferred to the Complainant. Because the Panel finds for the Complainant, the Panel expressly declines to find bad faith reverse domain name hijacking.
M. Scott Donahey
Dated: May 10, 2001