Microsoft Corporation v. Jim Young
Claim Number: FA0803001163872
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group,
Inc.,
REGISTRAR
AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftvistapromotions.net>, registered with Moniker Online Services, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 17, 2008; the National Arbitration Forum received a hard copy of the Complaint on March 18, 2008.
On March 21, 2008, Moniker Online Services, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftvistapromotions.net> domain name is registered with Moniker Online Services, Inc. and that Respondent is the current registrant of the name. Moniker Online Services, Inc. has verified that Respondent is bound by the Moniker Online Services, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On March 25, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 14, 2008 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@microsoftvistapromotions.net by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 17, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <microsoftvistapromotions.net> domain name is confusingly similar to Complainant’s MICROSOFT and WINDOWS VISTA marks.
2. Respondent does not have any rights or legitimate interests in the <microsoftvistapromotions.net> domain name.
3. Respondent registered and used the <microsoftvistapromotions.net> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Since 1975, Complainant, Microsoft Corp., has manufactured and sold computer software and related products and services. Complainant has registered its MICROSOFT mark with multiple governmental entities, including with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,685,083 issued May 5, 1992). Complainant has also registered the WINDOWS VISTA mark with the USPTO on April 24, 2007 (Reg. No. 3,235,107). Complainant also owns the <microsoft.com> and <microsoft.net> domain names.
Respondent registered the <microsoftvistapromotions.net> domain name on January 21, 2008. Respondent has been using the disputed domain name to operate a website that purports to sell and promote Complainant’s products as well as unrelated products. At the website that resolves from the disputed domain name, Internet users are asked to enter personal information to receive the free products.
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."
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(e), 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 and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
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.
Complainant has registered its MICROSOFT and WINDOWS VISTA
marks with the USPTO. The panel in Janus International Holding Co. v.
Rademacher, D2002-0201 (WIPO Mar. 5, 2002), held that "[p]anel
decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable
presumption that the mark is inherently distinctive." Therefore, the Panel concludes that
Complainant’s registration has established rights to the mark pursuant to
Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration
of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the
mark.”).
The <microsoftvistapromotions.net>
domain name differs only slightly from Complainant’s marks, and Respondent has
failed to create a domain name distinct from the MICROSOFT and WINDOWS VISTA marks. The disputed domain name combines the
MICROSOFT mark with the second term of the WINDOWS VISTA mark and adds the
generic term “promotions” to the mark.
Previous panels have found that the addition of generic terms,
particularly terms that describe a complainant’s business, are not sufficient
for distinguishing the mark from the disputed domain name. Moreover, all registered domain names are
required to have a top-level domain. The
panel in Busy Body, Inc. v. Fitness
Outlet Inc., D2000-0127 (WIPO Apr. 22, 2000) found that “the addition of
the generic top-level domain (gTLD) name ‘.com’
is . . . without legal significance since use of a gTLD is
required of domain name registrants . . . ." Likewise, the Panel here concludes that the
addition of the gTLD “.net” does not distinguish the disputed domain name from
the MICROSOFT and WINDOWS VISTA marks.
Thus, the Panel finds that the <microsoftvistapromotions.net> domain
name is confusingly similar to Complainant’s MICROSOFT and WINDOWS VISTA marks
pursuant to Policy ¶ 4(a)(i). See L.L. Bean, Inc. v. ShopStarNetwork,
FA 95404 (Nat. Arb. Forum Sept. 14, 2000) (finding that combining the generic
word “shop” with the complainant’s registered mark “llbean” does not circumvent
the complainant’s rights in the mark nor avoid the confusing similarity aspect
of the ICANN Policy); see also Nintendo
of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing
similarity where respondent combined the complainant’s POKEMON and PIKACHU
marks to form the <pokemonpikachu.com> domain name).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Under Policy ¶ 4(a)(ii), Complainant has the initial burden of demonstrating that Respondent has neither rights nor legitimate interests in the disputed domain name. The panel in Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) held that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion. Here, the Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii) by asserting that Respondent lacks rights and legitimate interests in the <microsoftvistapromotions.net> domain name. As a result, the burden shifts to Respondent to show that it does have rights under Policy ¶ 4(c). See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”).
Respondent has not responded to the Complaint. In American Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002), the panel presumed that the respondent lacked all rights and legitimate interests in the disputed domain name because the respondent in that case had not responded. The Panel may presume that Respondent lacks all rights and legitimate interests as result of its failure to respond. The Panel, however, will consider all evidence in the record to determine if Respondent has any rights or legitimate interests under Policy ¶ 4(c). See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).
The WHOIS information does not suggest that Respondent is commonly known by the disputed domain name, and Complainant contends that because the WHOIS information indicates that the registrant is “Jim Young,” there is no basis for finding that Respondent is commonly known by the disputed domain name. Complainant also maintains that it has never licensed its marks to Respondent. The Panel concludes that Respondent is not commonly known by the <microsoftvistapromotions.net> domain name pursuant to Policy ¶ 4(c)(ii). See Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
Respondent’s use of the disputed domain name to operate a
website where Complainant’s products are allegedly offered for free and
Internet users enter personal information to receive those offers demonstrates
that Respondent lacks rights and legitimate interests in the disputed domain
name. Respondent also uses the website
that resolves from the disputed domain name to advertise products unrelated to
Complainant’s business. Respondent’s use
of the <microsoftvistapromotions.net>
domain name is neither a bona fide offering
of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial
offering of goods or services under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's
demonstrated intent to divert Internet users seeking Complainant's website to a
website of Respondent and for Respondent's benefit is not a bona fide offering
of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat.
Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products
relating to the famous SEIKO mark, to a website unrelated to the mark is not a
bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it
represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been
satisfied.
Respondent’s use of the disputed domain name to offer
Complainant’s products to Internet users willing to enter their personal
information and advertise unrelated products also evidences registration and
use in bad faith. In H-D Michigan, Inc. v. Petersons Auto.,
FA 135608 (Nat. Arb. Forum Jan. 8, 2003), the panel found that the disputed
domain name was registered and used in bad faith pursuant to Policy ¶ 4(b)(iv)
through the respondent’s registration and use of the infringing domain name to
intentionally attempt to attract Internet users to its fraudulent website by
using the complainant’s famous marks and likeness. In the instant case, the website that
resolves from the disputed domain name is capable of creating a likelihood of
confusion as to Complainant’s source, sponsorship, affiliation, or endorsement
for Respondent’s commercial gain. The
Panel concludes that Respondent’s use demonstrates registration and use in bad
faith under Policy ¶ 4(b)(iv). See G.D. Searle & Co. v. Celebrex
Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the
respondent registered and used the domain name in bad faith pursuant to Policy
¶ 4(b)(iv) because the respondent was using the confusingly similar domain name
to attract Internet users to its commercial website).
Respondent’s use is also capable of disrupting Complainant’s business, further evidence of registration and use in bad faith under Policy ¶ 4(b)(iii). See Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftvistapromotions.net> domain name be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: April 28, 2008
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