WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Micron Electronics, Inc. v. Brooks Hunt d/b/a Hunt International

Case No. D2001Ė0207

 

1. The Parties

(a) Complainant is Micron Electronics, Inc., a Minnesota corporation with its principal place of business at 900 East Karcher Road, Nampa, Idaho 83687 ("Micron").

(b) The Complainantís principal contact at Micron is Bradlee Frazer, Esq., Micron Electronics, Inc., 900 East Karcher Road, Nampa, Idaho 83687, U.S.A.

(c) The Complainantís authorized representative in this administrative proceeding is John Cain, Esq., Howrey Simon Arnold & White, LLP, 750 Bering Drive, Houston, Texas 77057, U.S.A.

(d) Respondent, according to the "WhoIs" database maintained by Internet Names WorldWide, a Division of Melbourne IT, LTD. ("INWW"), at INWW.Com, is Brook Hunt d/b/a Hunt International, 4707 Bison Way, Caldwell, Idaho 83607, U.S.A. ("Hunt International").

 

2. Domain Name and Registrar

(a) The domain name at issue is "ehostpro.com".

(The "Infringing Domain Name").

(b) The registrar for the domain name at issue is Internet Names WorldWide, a Division of Melbourne IT, LTD.

 

3. Procedural History

(a) On February 14, 2001, the Complaint was received by the WIPO Arbitration and Mediation Center (the "Center") by e-mail for decision in accordance with the Uniform Domain Name Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN") on August 26, 1999 (the "Policy") and in hard copy on February 19, 2001.

(b) The Center verified that the Complaint satisfies the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy approved by ICANN on October 24, 1999 (the "Rules") and WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").

(c) Payment in the required amount has been made by the Complainant to the Center.

(d) A copy of the Complaint, together with the cover sheet as prescribed by the Supplemental Rules, was sent or transmitted to both the Respondent and to Internet Names in compliance with the Rules.

(e) February 20, 2001, the Center transmitted to INWW a request for registrar verification in connection with this case.

(f) On February 20, 2001, the Center received INWWís Verification Response, (1) advising that Internet Names had not received a copy of the Complaint from the Complainant in accordance with the Supplemental Rules, (2) confirming that the Infringing Domain Name is registered with Internet Names, (3) confirming that the Uniform Dispute Resolution Policy applies to this domain name, (4) confirming that the Respondent is the current registrant of the Infringing Domain Name (5) providing the full contact details that are available in INWWís "WhoIs" database for the registrant, the technical and billing contacts and the administrative contact for the Infringing Domain Name, and (6) stating that the Infringing Domain Name is licensed.

(g) On February 20, 2001, the Center transmitted via post/courier, facsimile and e-mail Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint, to the Respondent and via e-mail to the Complainant. The Center advised that (1) the response was due by March 11, 2001, (2) in the event of default the Center would appoint a Panel to review the facts and to decide the case, (3) the Panel would be entitled to draw such inferences from Respondentís default as it considers appropriate, (4) Micron had elected for the matter to be decided by a single panelist who would be appointed within five days of the date the response was due, (5) the fees for the administrative proceeding would be paid in their entirety by Micron, (6) the Panel would decide the case within 14 days of its appointment, and (7) the Center could be contacted at stated postal and e-mail addresses, a stated telephone number, and a stated fax number.

(h) On March 13, 2001, the Center transmitted via email a Notification of Respondent Default to the Respondent and via email to the Complainant advising that Respondent had failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for submission of its Response and advising that the Center would proceed to appoint an Administrative Panel based on the number of panelists designated by the complainant.

(i) On April 2, 2001, the Center transmitted to the Complainant via e-mail and to the Respondent via email, Notification of Appointment of Administrative Panel and Projected Decision Date. The notification advised that Mr. Gaynell C. Methvin had been appointed as the single panelist, and that the decision would be due on April 16, 2001.

(j) On April 2, 2001, the Center transmitted the file in this case via post/courier and email to the appointed panelist, Mr. Methvin.

 

4. Factual Background; Partiesí Contentions

a. The Trademarks

The Complaint (∂∂ 13 - 21) is based on a trademark Micron registered in the U.S. Patent and Trademark Office.

Micronís products and services include:

"Website hosting products and services"

i) In connection with these goods and services, Micron owns the federal trademark "HOSTPRO." The United States Patent and Trademark Office has granted federal trademark registration for the "HOSTPRO" trademark as a brand name for Micronís web hosting services including, without limitation:

"hosting the websites of others on a computer server for a global computer network; hosting software applications for others on a computer server for a global computer network, in International Class 42."

A copy of Micronís United States trademark registration for the "HOSTPRO trademark is attached to the Complaint as Exhibit "D".

b. The Complaint

Micron in support of its position asserts the following:

"13. The named registrant of the HOSTPRO mark is Micron PC Web Services, Inc., a Delaware Corporation. Micron PC Web Services, Inc., is a wholly owned subsidiary of Micron Electronics, Inc., a Minnesota corporation. Micron PC Web Services, Inc., recently changed its name to HostPro, Inc. Thus, HostPro, Inc., is now a wholly owned subsidiary of complainant Micron Electronics, Inc., and Micron Electronics, Inc., has rights in and to the HOSTPRO mark.

14. Micron is the owner of a federal trademark for HOSTPRO. Registered for "hosting the websites of others on a computer server for a global computer network; hosting software applications for others on a computer server for a global computer network, in International Class 42." (See Exhibit D of the Complaint).

15. Micron first began using its mark in commerce in January 1998. (See id. at ∂ 14.)

16. Micron filed for registration of the mark HOSTPRO on August 17, 1999. (See id. at ∂ 14.)

17. Micron registered the mark HOSTPRO® on July 25, 2000, as a brand name for its web hosting services. HOSTPRO® was intended to be, and is, marketed primarily through the Internet. (See id. at 14.)

18. Since its debut, Micron has used the HOSTPRO® mark continuously for its website hosting products and services. Micron has spent substantial time, effort and money advertising and promoting the HOSTPRO® mark throughout the world. As a result Micron has developed an enormous amount of goodwill in the mark.

19. On May 31, 2000, over two years after Micron began using HOSTPRO®, Respondent Hunt International, began using the domain name "ehostpro.com" by filing for the same electronically over the Internet. (See id. at7.)

20. Respondentís domain name "ehostpro.com" is identical or confusingly similar to Micronís service mark. For purposes of assessing the identity or confusing similarity between domain names and trademarks, panels have held that the addition of an "e" is an insignificant difference to a trademark where the holder of the trademark has prior rights. Nike, Inc., v. Farukh Zia, WIPO Domain Name Dispute Case D2000-0167 (finding the "eNike.com" domain name to be confusingly similar to the trademark NIKE. (See Exhibit E of the Complaint.)

21. Because "ehostpro.com" is being used as a domain name, Internet users who seek the official Micron HOSTPRO® website are being misdirected to the competing "ehostpro.com" website. Thus, Internet users may be confused as to the affiliation, sponsorship or endorsement of the "ehostpro.com" site, or believe that Micron is the source of the products and/or services offered through the "ehostpro.com" website. Goto.com, Inc., v. The Walt Disney Co., 200 F.3d 1199, 1206 (9th Cir., 2000). (See Exhibit F of the Complaint). ("With respect to Internet services, even services that are not identical are capable of confusing the public.")

22. On October 13, 2000, Micron sent a letter to Respondent concerning Respondentís bad faith registration and use of the "ehostpro.com" domain name and requesting that Respondent voluntarily agree to transfer the domain name to Micron. The letter was sent by first class mail to the physical address in Caldwell, Idaho listed in the "WhoIs" registration records of Internet Names WorldWide, a Division of Melbourne IT, LTD., at INWW.Com, for "ehostpro.com". As of yet Micron has not received a response to its demand letter from Respondent (See Exhibit G of the Complaint.)

c. Remedies Requested

As for relief, Micron requests at Paragraph 23:

As set forth herein, (i) Micron is the owner of the trademark rights in the mark HOSTPRO®, , for, among other things, website hosting; (ii) the Respondent has no right or legitimate interest in respect to the "ehostpro.com" domain name; and (iii) the Respondent has registered and used the "ehostpro.com" domain name in bad faith to direct Internet traffic seeking information about Micronís HOSTPRO® product and services to its own website at "ehostpro.com" and/or to otherwise profit from goodwill that Micron has built, and is continuing to build up, in its HOSTPRO® mark. Accordingly, Micron requests that the Panel appointed to hear this dispute issue an order transferring the domain name "ehostpro.com" from Respondent to Micron.

d. Respondentís Answer

Respondent has filed no answer, or any other document, with the Center.

 

5. Discussion and Findings

Paragraph 4 of the Policy directs that Micron must prove, with respect to the domain names in issue, each of the following:

(i) The domain names in issue are identical or confusingly similar to the Micron trademark, and

(ii) Respondent has no rights or legitimate interests in respect of the domain names, and

(iii) The domain names have been registered and are being used in bad faith.

Paragraph 4(b) of the Policy sets out four illustrative circumstances which, for purposes of Paragraph 4(a)(iii) above, shall be evidence of the registration and use of a domain name in bad faith.

Paragraph 4(c) of the Policy sets out three illustrative circumstances which, if proved by respondent, shall demonstrate respondentís rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii) above.

a. Identity or Confusing Similarity

Micron urges, and has the burden of proving, that the domain name in dispute is either identical to, or confusingly similar to, the Micron trademark. Respondentís failure to respond does not relieve Micron of its burden of proof on this element or on either of the other two elements of Paragraph 4(a) of the Policy. However, Respondentís failure to deny any of Micronís averments permits this panel to take Micronís averments as true and to draw appropriate inferences.

On its face, the domain name in issue incorporates the term "HOSTPRO". The addition of the letter "E" in front of the term does not prevent the domain name at issue from being confusingly similar to Micronís trademark. In light of the truth and controlling nature of the facts set forth in the Complaint, paragraphs 13 through 20, the Panel finds that the domain name in issue is confusingly similar to the Micron trademark.

b. Rights or Legitimate Interests

On this record, no challenge has been leveled with respect to (1) the validity of the Micron trademark, (2) Micronís rights in the mark with respect to Micron services and goods, (3) the global goodwill associated with the mark, or (4) any fact averred by Micron as to promotion of the mark, use of the mark, and total sales of services and goods under the mark. Accordingly, such facts are found to be true.

No challenge has been leveled with respect to Micronís averments as to registrantís conduct.

In light of the foregoing, it is found that this record demonstrates that Respondent has no rights or legitimate interests vis-a-vis "ehostpro.com".

c. Registration and Use in Bad Faith

Registration of the domain name in issue in bad faith is a matter of the appropriate inferences to draw from circumstantial evidence. Each is to be proved by Micron.

The facts asserted by Micron in support of its position that Respondentís registration was in bad faith are found in the Complaint in paragraphs 21 through 22:

"21. Because "ehostpro.com" is being used as a domain name, Internet users who seek the official Micron HOSTPRO® website are being misdirected to the competing "ehostpro.com" website. Thus, Internet users may be confused as to the affiliation, sponsorship or endorsement of the "ehostpro.com" site, or believe that Micron is the source of the products and/or services offered through the "ehostpro.com" website. Goto.com, Inc., v. The Walt Disney Co., 200 F.3d 1199, 1206 (9th Cir., 2000). (See Exhibit F of the Complaint). ("With respect to Internet services, even services that are not identical are capable of confusing the public.")

22. On October 13, 2000, Micron sent a letter to Respondent concerning Respondentís bad faith registration and use of the "ehostpro.com" domain name and requesting that Respondent voluntarily agree to transfer the domain name to Micron. The letter was sent by first class mail to the physical address in Caldwell, Idaho listed in the "WhoIs" registration records of Internet Names WorldWide, a Division of Melbourne IT, LTD., at INWW.Com, for "ehostpro.com". As of yet Micron has not received a response to its demand letter from Respondent (See Exhibit G of the Complaint.)"

These facts are found to be true and as such demonstrate that Respondent has registered the domain name "ehostpro.com" in bad faith.

d. Paragraph 4c Factors

With respect to the domain name in issue, by failing to respond to the Complaint, Respondent has failed to prove any of the three circumstances set out in Paragraph 4(c) of the Policy, viz.:

(i) before any notice to Respondent of the dispute, Respondentís use of or preparations to use the domain name were in connection with a bona fide offering of goods or services,

(ii) Respondent or a related entity has been commonly known by the domain name, and

(iii) Respondent is making legitimate noncommercial or fair use of the domain name in issue, "without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

As averred by Micron and properly inferred from the undisputed facts as to Respondentís conduct, each of these three factors must be resolved against Respondent and in favor of Micron.

 

6. Decision

The panel has jurisdiction of this dispute. Respondent has received notice of the commencement of this proceeding, the Policy, the Complaint, and the consequences of Respondentís default. Respondent has been afforded due process.

With respect to the request for transfer of the domain names at issue, the Panel decides that Micron has carried its burden of proving (a) the domain name in issue here is identical to or confusingly similar to the Micron mark, (b) Respondent has no rights and no legitimate interests in respect of the domain name in issue, and (c) the domain name in issue has been registered and used in bad faith by Respondent. Accordingly, the Panel requires that the registration of the domain name "ehostpro.com" be transferred to Micron.

 


 

Gaynell C. Methvin
Sole Panelist

Dated: April 16, 2001