Microsoft Corporation v. Domain Admin / Whois Privacy Corp.
Claim Number: FA2004001892070
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Domain Admin / Whois Privacy Corp. (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-eopen.com>, registered with Internet Domain Service BS Corp.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Petter Rindforth as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 14, 2020; the Forum received payment on April 14, 2020.
On April 16, 2020, Internet Domain Service BS Corp confirmed by e-mail to the Forum that the <microsoft-eopen.com> domain name is registered with Internet Domain Service BS Corp and that Respondent is the current registrant of the name. Internet Domain Service BS Corp has verified that Respondent is bound by the Internet Domain Service BS Corp registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 16, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 6, 2020 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@microsoft-eopen.com. Also on April 16, 2020, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On May 11, 2020, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Petter Rindforth as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
The Complainant is a worldwide leader in software, services, and solutions that help people and businesses. Complainant has rights in the MICROSOFT trademark through its registration of the trademark with the United States Patent and Trademark Office (“USPTO”) (e.g. Reg. No. 1,200,236, registered Jul. 6, 1982). Respondent’s <microsoft-eopen.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the MICROSOFT trademark in its entirety, adding only the generic terms “eopen” and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights or legitimate interests in the <microsoft-eopen.com> domain name. Respondent is not commonly known by the disputed domain name and Respondent is not licensed to use Complainant’s mark nor an authorized vendor, supplier, or distributor of Complainant. Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent uses Complainant’s trademarks and logos to mimic Complainant and divert internet users to the disputed domain name, potentially in furtherance of phishing.
Respondent registered and uses the <microsoft-eopen.com> domain name in bad faith. Respondent uses the disputed domain name to create the false impression that its services are offered or sponsored by Complainant and phish for personal information of visiting users. Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the trademark, given Respondent’s attempts to pass off as Complainant.
B. Respondent
Respondent failed to submit a Response in this proceeding.
The Complainant is the owner of several U.S. trademark registrations, for example:
No. 1,200,236 MICROSOFT (word), registered July 6, 1982 for goods and services in classes 9 and 42; and
No. 2,198,155 MICROSOFT (word), registered October 20, 1998 for services in class 35.
Respondent registered the <microsoft-eopen.com> domain name on February 11, 2020.
Paragraph 15(a) of the Rules instructs this Panel to "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."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
The Complainant asserts rights in the MICROSOFT trademark based on registration of the trademark with the USPTO (e.g. Reg. No. 1,200,236, registered Jul. 6, 1982). Registration of a trademark with the USPTO sufficiently confers a complainant’s rights in a trademark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”). Accordingly, the Panel find that Complainant has established rights in the MICROSOFT trademark for the purposes of Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <microsoft-eopen.com> domain name is identical or confusingly similar to Complainant’s trademark as it incorporates the MICROSOFT trademark in its entirety, adding only the generic terms “eopen” and the “.com” gTLD. The addition of a generic term and a gTLD fails to sufficiently distinguish a domain name for the purposes of Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i)). The Panel notes that EOPEN is in fact an existing open interoperable platform for unified access and analysis of Earth Observation data, but also that “eOpen” has been used by the Complainant an online tool that allows participants of the Microsoft Software Donation program to manage their software licenses. As such, the term is connected to the Complainant, and the Panel therefore finds that the <microsoft-eopen.com> domain name is indeed confusingly similar to the MICROSOFT trademark under Policy ¶ 4(a)(i).
Once the Complainant makes a prima facie case in support of its allegations in respect of the second element of the Policy, the burden shifts to the Respondent to show that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant contends Respondent lacks rights or legitimate interests in the <microsoft-eopen.com> domain name as Respondent is not commonly known by the disputed domain name and Respondent is not licensed to use Complainant’s trademark nor an authorized vendor, supplier, or distributor of Complainant. WHOIS information may be used to determine whether a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. LY Ta, FA 1789106 (Forum June 21, 2018) (concluding a respondent has no rights or legitimate interests in a disputed domain name where the complainant asserted it did not authorize the respondent to use the mark, and the relevant WHOIS information indicated the respondent is not commonly known by the domain name). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by the disputed domain name. See Emerson Electric Co. v. golden humble / golden globals, FA 1787128 (Forum June 11, 2018) (“lack of evidence in the record to indicate a respondent is authorized to use [the] complainant’s mark may support a finding that [the] respondent does not have rights or legitimate interests in the disputed domain name per Policy ¶ 4(c)(ii)”). The WHOIS information for the disputed domain name in the present case lists the registrant as “Domain Admin/Whois Privacy Corp.,” and there is no other evidence to suggest that Respondent was authorized to use the MICROSOFT trademark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Complainant next argues that Respondent fails to use the <microsoft-eopen.com> domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use as Respondent uses Complainant’s trademarks and logos to mimic Complainant and divert internet users to disputed domain name, potentially in furtherance of phishing. Passing off as a complainant in furtherance of phishing may indeed not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also DaVita Inc. v. Cynthia Rochelo, FA 1738034 (Forum July 20, 2017) (”Passing off in furtherance of a phishing scheme is not considered a bona fide offering of goods or services or legitimate noncommercial or fair use.”). Complainant argues that the disputed domain name resolves to a webpage which mimics the official webpage of Complainant’s Volume Licensing Program and provides screenshots of the both for comparison. Complainant asserts that, via the resolving webpage, Respondent requests the username and password of users. The Panel therefore finds that Respondent does not use the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).
The Complainant submits that Respondent registered and uses the <microsoft-eopen.com> domain name in bad faith because Respondent uses the disputed domain name to create the false impression that its services are offered or sponsored by Complainant and phish for personal information of visiting users. Passing off as a complainant in furtherance of phishing can show bad faith registration and use per Policy ¶¶ 4(b)(iii) and (iv). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding bad faith per Policy ¶¶ 4(b)(iii) and (iv) where the respondent used the disputed domain name to resolve to a website upon which the respondent passes off as the complainant and offers online cryptocurrency services in direct competition with the complainant’s business); see also Amazon Technologies, Inc. v. jaskima smith, FA 1750160 (Forum Oct. 26, 2017) (finding the respondent registered and used the disputed domain name in bad faith to pass off as the complainant in an attempt to gain personal information from users who mistakenly access the website). As noted above, Complainant argues, and has provided evidence to show this as a fact, that the disputed domain name resolves to a webpage which mimics the official webpage of Complainant’s Volume Licensing Program. Complainant asserts that, via the resolving webpage, Respondent requests the username and password of users. The Panel therefore finds that Respondent registered and uses the disputed domain name in bad faith per Policy ¶¶ 4(b)(iii) and (iv).
Finally, Complainant avers that Respondent registered the disputed domain name with actual knowledge of Complainant’s rights in the trademark, given Respondent’s attempts to pass off as Complainant. Actual knowledge of a complainant’s trademark prior to registering a disputed domain name is adequate to find bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Spectrum Brands, Inc. v. Guo Li Bo, FA 1760233 (Forum Jan. 5, 2018) (“[T]he fact Respondent registered a domain name that looked identical to the SPECTRUM BRANDS mark and used that as an email address to pass itself off as Complainant shows that Respondent knew of Complainant and its trademark rights at the time of registration.”). Complainant contends that Respondent’s attempts to pass off as Complainant shows Respondent had actual knowledge of Complainant’s rights in the MICROSOFT mark and thus evidenced bad faith under Policy ¶ 4(a)(iii). The Panel agrees with that conclusion.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoft-eopen.com> domain name be TRANSFERRED from Respondent to Complainant.
Petter Rindforth, Panelist
Dated: May 11, 2020
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