WIPO

 

WIPO Arbitration and Mediation Center

 

ADMINISTRATIVE PANEL DECISION

Micron Technology, Inc. v. ThisDomain isForSale

Case No. D2001-0712

 

1. The Parties

The Complainant is Micron Technology, Inc., 8000 South Federal Way, Boise, Idaho 83707, United States of America.

The Respondent is ThisDomain isForSale, 777 Vorovskoy Pereulok, Lefortovo, Zona 77700 Russia. As at May 10, 2001 the administrative contact was listed as Allen Ginsberg, 19, Bondarenko Square, Obninsk, Kaluga reg 249020, Russia. As of May 22, 2001, the administrative contact was listed as Charles Bukowski, 19, Bondarenko Square, Obninsk, Kaluga reg 249020, Russia. The technical contact is listed as The Administrator, eee X Hosting, 1052 West Alameda Avenue #211, Burbank, CA 91506.

 

2. The Domain Name and Registrar

The domain name in issue is <microncommunications.com> (hereafter "the domain name").

The domain name is registered with Bulkregister.com, Inc., 7 East Redwood Street, Baltimore, MD 21202, United States of America.

The domain name was registered with Bulkregister.com on or about March 13, 2001.

 

3. Procedural History

(1) The Complaint was filed in email form on May 29, 2001, and in hardcopy form on June 1, 2001.

(2) The WIPO Arbitration and Mediation Center has found that:

- The Complaint was filed in accordance with the requirements of the Rules and Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy;

- Payment for filing was properly made;

- The Complaint complies with the formal requirements;

- The Complaint was properly notified in accordance with the Rules, paragraph 2(a);

- No Response was filed;

- The Respondent was appropriately notified of default; and

- The Administrative Panel was properly constituted.

As Panelist, I accept these findings.

(3) As Panelist, I submitted a Statement of Acceptance and Declaration of Impartiality and Independence.

(4) There have been neither further submissions nor communications from the Complainant and Respondent, or their representatives, after the appointment of the Panel.

(5) No extensions have been granted or orders issued in advance of this decision.

(6) The expected date of decision in this proceeding is: July 27, 2001.

(7) The language of the proceedings is English.

 

4. Factual Background

A. The Complainant and its marks

The Complainant is a worldwide leading manufacturer of semiconductors, personal computers and related products and services. It has sales operations in North America, Europe, Africa and Asia. Micron is a United States Fortune 500 company with average worldwide sales of several billion dollars annually.

Since its founding in 1982, the Complainant has adopted and has continuously used throughout the world several trademarks incorporating the mark "MICRON" (collectively, the "Micron marks"). Examples include the following:

 

Mark

Reg. No.

Reg. Date

Goods/Services

MICRON (US)

2,142,670

Mar 10/98

Semiconductor Devices

MICRON (US)

2,276,067

Sept 7 1999

Semiconductor Devices

MICRON (Australia)

768,087

July 21 1998

Semiconductor Products, Personal Computers, Servers and Computer Peripherals, Being Goods

MICRON (Israel)

121178

June 8 2000

Semiconductor Devices; Personal Computers, Servers, and Computer Peripherals; Radio Frequency Identification Devices; Field Emission Displays

MICRON (Norway)

196701

Mar 25 1999

Semiconductor Devices; Personal Computers, Servers, and Computer Peripherals; Radio Frequency Identification Devices; Field Emission Displays

MICRON (Switzerland)

470865

Mar 27 2000

Semiconductors Devices; Personal Computers, Servers, and Computer Peripherals; Radio Frequency Identification Devices; Field Emission Displays

The Complainant is also the registrant of domain names that contain the MICRON mark: <micron.com>, <micron.net>, <micronpc.com>, <micronu.com>, <micronauction.com>, <micronpcauction.com> and <microntechnology.com>. According to its Complaint, at one point the Complainant had a wholly-owned subsidiary called Micron Communications, Inc. that operated a web site at www.microncommunications.com. That company is no longer in business.

B. The Respondent

The Respondent has not filed a Response. According to the Whois database of the appropriate registrar, the Respondent in this administrative proceeding is ThisDomain isForSale, with the address and contact details as provided above. No further information is known about the Respondent.

C. The Domain Name

The domain name resolves to a single page site that has "Enter" prominently displayed. Upon clicking "enter" the user is lead onto a pornographic website found at www.pornolio.com.

 

5. Partiesí Contentions

A. The Complainantsí assertions

The Complainant submits that the Respondent's domain name is identical or confusingly similar to the Complainantís mark for the following reasons:

- The second level domain MICRONCOMMUNICATIONS is confusingly similar to the Micron Trademarks. The combination of the generic term "communications" with the distinctive, famous and protectable trademark MICRON creates a likelihood of confusion with the Micron Trademarks. Upon seeing or hearing the domain name, a consumer or member of the industry is likely to associate it with Micron and/or to believe that Micron is the operator of the site or has otherwise sponsored or approved it.

The Complainant submits that the Respondent has no legitimate interest or rights in the domain name, for the following reasons:

- The Respondent is not a licensee of Micron, nor has Micron authorized the Respondent to use the MICRON Trademarks.

- Upon information and belief, the Respondent is not commonly known by the name MICRONCOMMUNICATIONS.

- The Respondent is currently using the domain name solely as a pointer to the web site at <www.pornolio.com>. The content of the <pornolio.com> site consists of explicit pornographic material.

- The Respondent is not using the domain name as part of a legitimate business.

The Complainant submits that the Respondent registered the domain names and is using them in bad faith, for the following reasons:

- The Respondent has offered to sell the domain name for a profit. First, the name of the Respondent is listed as ThisDomain isForSale, making the domain name clearly and publicly available for sale. Additionally, a link for "Buy This Name" is provided under the name of the administrative contact (formerly Allen Ginsberg, now Charles Bukowski). And finally, the Respondent has offered to "settle" this dispute in exchange for a cash payment from Micron in excess of its out-of-pocket expenses. Thus, it appears that Respondentís sole purpose in registering the domain name was to sell it for profit.

- The association of the domain name with pornography further constitutes bad faith. Any association made between Micron and the pornographic site would immediately and irreparably tarnish Micronís excellent reputation.

- Upon information and belief, the Respondent has made a concerted effort to register domain names while attempting to conceal its identity to make it difficult to obtain relief. The interplay between the ownership of, and web sites located at, <microncommunications.com>, <pornolio.com> and <eeex.net> implies that Allen Ginsberg is the alter ego and true owner and operator of all of these entities and web sites. Furthermore, Allen Ginsberg and Charles Bukowski appear to be either closely related or pseudonyms for the same person.

- Upon information and belief, the Russian addresses were chosen in an attempt to evade jurisdiction in the United States. The cease and desist letter, sent to the two different Russian addresses, was returned as undeliverable because neither address actually exists. The fact that the address for eee X Hosting and all of the phone numbers are in California confirms this further. This is all further evidence of bad faith. 15 U.S.C. ß 1125(d)(1)(B)(i)(VII) (respondentís provision of misleading false contact information regarding the domain name registration is evidence of bad faith under the ACPA), it appears that Respondent is trying to make it difficult to be caught by, among other things, not giving his name, using pseudonyms or a variety of different names, using different registrars, and using addresses outside of the country when he appears to be actually located in the United States.

- The person with whom Micronís counsel spoke on the telephone (believed to be Allen Ginsberg a/k/a Charles Bukowski or their alter ego) alluded to the need to "waste three months" and that Micron should obtain the domain name if it had "other ways of getting it." This implies that he is familiar with the UDRP procedures, which may further imply that he has been involved in one or more before.

Accordingly the Complainant requests that the Panel order that the domain name be transferred to the Complainant.

B. The Respondentís assertions

The Respondent has not filed a Response.

 

6. Discussion and Findings

Paragraph 4.a. of the Uniform Dispute Resolution Policy ("UDRP") requires the Complainant to make out three elements:

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar (paragraph 4.a.(i)); and

B. The Respondent has no rights or legitimate interests in respect of the domain name (paragraph 4.a.(ii)); and

C. The Respondent registered and is using the domain name in bad faith (paragraph 4.a.(iii)).

A. The Complainant has rights in a trade or service mark, with which Respondentís domain name is identical or confusingly similar.

There are two requirements that a Complainant must establish under this paragraph; that it has rights in a trade or service mark, and that the domain name is identical or confusingly similar to the marks.

The Complainant has provided the registration documents for the Micron marks. I conclude that the Complainant Ė as registered proprietor of the marks Ė has established the first requirement of this paragraph; that is, that it has rights in a relevant trademark.

The second requirement is that the domain name be identical or confusingly similar to the mark. There is no suggestion that the domain name is identical to the Complainantís marks. None of the Complainantís marks are for "MICRON COMMUNICATIONS". Therefore, the only basis on which the Complainant might succeed is if the domain name is confusingly similar to one or other of the Complainantís marks. Here that Complainant pleads the following:

"The second level domain MICRONCOMMUNICATIONS is confusingly similar to the Micron Trademarks. The combination of the generic term "communications" with the distinctive, famous and protectable trademark MICRON creates a likelihood of confusion with the Micron Trademarks. Upon seeing or hearing the domain name, a consumer or member of the industry is likely to associate it with Micron and/or to believe that Micron is the operator of the site or has otherwise sponsored or approved it."

I do not accept the Complainantís argument. The basic word in issue, "MICRON", is a word in the English language meaning one millionth of a meter (see http://www.m-w.com/cgi-bin/dictionary/book=Dictionary&va=micron). It is not an invented word, nor is it an inherently distinctive word. It is incontrovertible that there are other companies, businesses, and organisations, which will appropriately use the word "MICRON" in their names. The only limitation upon this use will be, pursuant to the Complainantís US registrations, that these businesses must not label semiconductor products with the "MICRON" mark. The likelihood of confusion of the domain name with the Complainantís marks is, therefore, not obvious on its face. Though the Complainant is a large corporation it is not so famous that the inclusion of a generic suffix after its name would likely result in confusion. The Complainantís situation is to be contrasted with cases involving either famous marks, or strongly distinctive marks, that have been paired with generic suffixes or prefixes, see for example Quixtar Investments, Inc. v Dennis Hoffman, WIPO Case No. D2000-0253; Yahoo!, Inc. v Eitan Zviely, et al, WIPO Case No D2000-0273; Shopping24 Gesellschaft für multimediale Anwendungen GmbH v Christian Rommel, WIPO Case No. D2000-0508; CLT-UFA SA v This Domain is for Sale, WIPO Case No D2000-0801. I therefore reject the Complainantís pleading on this point.

Alternatively, the Complainant could have suggested that the suffix "communications" is so closely related to its business that the consumer will inevitably confuse the domain name with the Complainant. The Complainant does not plead this directly. In any event, the expression "communications" is not so closely and directly linked to the business of the Complainant Ė which is in semiconductors, memory chips, and associated products Ė that a consumer is likely to be confused when coming upon the web site. The Complainant would have failed on this basis also, had it pleaded the issue.

Finally, here is an indication in the pleadings that the Complainant once ran a business called Micron Communications, Inc., and had a prior registration for the domain name in issue, <microncommunications.com>. The Complainant indicates that the business is now defunct, and of course the domain name registration lapsed. There is no information given as to the scope of the business, the length of time it traded, the volume of business it transacted, or what products or services it offered. In the absence of this information it is impossible to conclude that the Complainant had acquired any common law rights or interest in the name "microncommunications" outside those discussed above. I conclude therefore that there is insufficient evidence that the domain name would engender any confusion in the minds of consumers, based on this earlier "Micron Communications" business. I conclude therefore that the Complainant has not established confusing similarity exists between the domain name and any of its marks.

The Complainant has shown that it has rights in trademarks. However it has not shown that the domain name is identical or confusingly similar to these marks. I conclude therefore that the Complainant has not satisfied the requirements of paragraph 4.a.(i) of the UDRP.

It may well be that the Respondent is an abusive registrant. The relationship between "microncommunications" and a porn site is not really clear; and the Complainant indicates that the Respondent seems to be suspiciously aware of the UDRP process and may have gone through it before. However, the UDRP does not ask panelists to assess the male fides of Respondents by making a subjective assessment of whether they look like they might be abusive registrants. The UDRP instead requires the Complainant to make out all of the elements of Paragraph 4.a. The Complainant has failed to make out the requirements of Paragraph 4.a.(i). Therefore the Complainant fails completely.

The requested remedy is denied.

 

7. Decision

The Complainant has not made out all of the elements of paragraph 4.a. of the Uniform Domain Name Dispute Resolution Policy.

Pursuant to Paragraph 4.i. of the Uniform Domain Name Dispute Resolution Policy and Rule 15 of the Rules for the Uniform Domain Name Dispute Resolution Policy, the requested remedy is denied.

I hereby order that the domain name <microncommunications.com> remain with the Respondent.

 


 

Dan Hunter
Sole Panelist

Dated: July 24, 2001