Micros Systems, Inc. v. SFR Funding
NAF Case: FA 1602001659618
While a complainant/trademark owner may win on the Policy ¶4 (a)(i) analysis and prove 'confusing similar’, where the Respondent has simply tacked a generic term onto the complainant’s trademark, it (the Complainant) may still lose the entire case because it fails to prove the Respondent did not have rights or legitimate interests in the domain name and that the Respondent acted in bad faith. That is what happened here, so the Complainant failed. It is therefore a salutary reminder for complainants that it is no use winning on one point out of three; it has to win on all points.
Disputed Domain Name: <microsretail.com>
The Complainant owned the MICROS mark through its trademark registration with the USPTO and it was also shown that it had common law trademark rights in the same word. The Complainant used the mark in connection with computer software, electronic cash registers and point of-sale terminals. The Respondent had simply added “retail” to the trademark, so anyone who saw the domain name would think it related to the retail sale of products sold under the MICRO mark. The Complainant thus won on element 1.
On element 2, the Respondent argued that the domain name consisted of two generic words, ”micro” used in its technical sense and “retail” which is clearly generic and that it had used the domain name in connection with those words, i.e. to sell micro or small technical products and to sell them retail. The Panel agreed and thus held that this gave the Respondent a right or legitimate interest in the domain name. It relied on Verkaik v. Crownonlinemedia.com, D2001-1502 (WIPO Mar. 19, 2002) (finding that the respondent’s use of the <skyart.com> domain name to sell “digital and photo images of Southwest scenes, especially the sky” bestowed rights and legitimate interests in the domain name).
This case is interesting because of course the Panel had already found under the first element that the domain name was confusingly similar to the trademark, relying on Mead Johnson & Company, LLC v. Chau, FA 1497581 (Nat. Arb. Forum Jun. 18, 2013) (concluding that the addition of the generic term “coupons” and a gTLD did not remove the disputed domain name from the realm of confusing similarity). This is also consistent with cases like Thor Equities, LLC v andreas meinhold / Xenois Hospitality llc FA 1602001659721 (Nat. Arb. Forum Mar. 11, 2016) and Whitney Nat'l Bank v Easynet Ltd. FA 9344330 (Nat. Arb Forum Apr. 30, 2007). If the term added to the trademark is a generic or descriptive term and is commonly related to the Complainant's business, the domain name will be found to be confusingly similar to the trademark. See also General Motors LLC v MIKE LEE FA 1602001659965 (Nat. Arb. Forum Mar. 10, 2016) and Yahoo! Inc. v Michael Herlache FA 1602001660699 (Nat. Arb. Forum Mar. 09, 2016). Moreover, Panels have often found that "the additions of generic words with an obvious relationship to Complainant's business and gTLD renders the disputed domain name confusingly similar to Complainant's mark pursuant to Policy 4(a)(i).
However, when it came to the second element and to the third element, bad faith, the domain name was wholly generic and would be understood by internet users to be so and it was only being used to sell small products retail and did not target or reflect on the Complainant and its trademark. Those features both gave the Respondent a legitimate interest in the domain name and enabled the Panel to find it had not been registered and used in good faith.
This case is thus an example of a case where generic terms in a domain name will mean that the domain name can be confusingly similar to a trademark, and yet the Respondent is then found to have a right or legitimate interest in the domain name and not to be acting in bad faith. Complainant’s can win at the first hurdle, but fail at the second and third.