Microsoft Corporation v. Harisharnam
Claim Number: FA0807001218414
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <microsofttravel.com> and <microsoftjobsearch.com>, registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide.
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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 31, 2008; the National Arbitration Forum received a hard copy of the Complaint on August 1, 2008.
On August 4, 2008, Melbourne It, Ltd. d/b/a Internet Names Worldwide confirmed by e-mail to the National Arbitration Forum that the <microsofttravel.com> and <microsoftjobsearch.com> domain names are registered with Melbourne It, Ltd. d/b/a Internet Names Worldwide and that Respondent is the current registrant of the names. Melbourne It, Ltd. d/b/a Internet Names Worldwide has verified that Respondent is bound by the Melbourne It, Ltd. d/b/a Internet Names Worldwide 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 August
7, 2008, a Notification of Complaint and Commencement of Administrative
Proceeding (the "Commencement Notification"), setting a deadline of
August 27, 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@microsofttravel.com and postmaster@microsoftjobsearch.com
by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 4, 2008, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsofttravel.com> and <microsoftjobsearch.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsofttravel.com> and <microsoftjobsearch.com> domain names.
3. Respondent registered and used the <microsofttravel.com> and <microsoftjobsearch.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured and sold computer software and other related products and services since 1975. Complainant owns more than thirty marks with the United States Patent and Trademark Office (“USPTO”) alone including the famous MICROSOFT mark (Reg. No. 1,200,236 issued July 6, 1982).
Respondent registered both of the <microsofttravel.com> and <microsoftjobsearch.com> domain names on May 25, 2008. Respondent’s <microsofttravel.com> and <microsoftjobsearch.com> domain names resolve to websites featuring travel and job search related services, respectively.
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 established rights in the MICROSOFT mark for purposes of Policy ¶ 4(a)(i) through registration of the mark with the USPTO. 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.”); see also Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”).
Complainant contends that Respondent’s <microsofttravel.com> and <microsoftjobsearch.com>
domain names are confusingly similar to Complainant’s MICROSOFT mark. Respondent’s domain names contain
Complainant’s mark in its entirety, adds the generic terms “travel” or “job
search,” and the generic top-level domain (“gTLD”) “.com.” The Panel finds that addition of generic
terms or gTLD’s are not distinguishing characteristics under Policy ¶ 4(a)(i). See Sony
Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000)
(finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract
from the overall impression of the dominant part of the name in each case,
namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930
(Nat. Arb. Forum Apr. 11, 2003) (finding that the respondent’s domain names,
which incorporated the complainant’s
entire mark and merely added the descriptive terms “traffic school,” “defensive
driving,” and “driver improvement” did not add any distinctive features capable
of overcoming a claim of confusing similarity).
The Panel finds that
Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent does not have rights or legitimate interests in the <microsofttravel.com> and <microsoftjobsearch.com> domain names. In instances where a complainant has made a prima facie case, the burden shifts to the respondent to set forth evidence that it does possess rights or legitimate interests in the disputed domain names. The Panel finds that, in the instant case, Complainant has made a prima facie case under Policy ¶ 4(a)(i). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding 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 because this information is “uniquely within the knowledge and control of the respondent”); see also G.D. Searle v. Martin Mktg., FA 118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission constitutes a prima facie case under the Policy, the burden effectively shifts to Respondent. Respondent’s failure to respond means that Respondent has not presented any circumstances that would promote its rights or legitimate interests in the subject domain name under Policy ¶ 4(a)(ii).”).
Complainant contends that Respondent is using the <microsofttravel.com> and <microsoftjobsearch.com>
domain names to operate websites that offer Respondent’s own travel services
and job search services. The Panel finds
that Respondent’s attempts to profit off of the goodwill associated with
Complainant’s name in order to promote Respondent’s own services are not uses
of the <microsofttravel.com> and <microsoftjobsearch.com>
domain names in connection with a bona
fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii). See
Complainant further contends that Respondent is not commonly
known by the <microsofttravel.com> and <microsoftjobsearch.com>
domain names. The WHOIS information for
the disputed domain names list the registrant as “Harisharnam.” The Panel finds that
without evidence to the contrary, Respondent is not commonly known by the <microsofttravel.com> and <microsoftjobsearch.com>
domain names under Policy ¶ 4(c)(ii). See Wells Fargo
& Co. v. Onlyne Corp. Services11, Inc.,
FA 198969 (Nat. Arb. Forum Nov. 17,
2003) (“Given the WHOIS contact information for the disputed domain [name], one
can infer that Respondent, Onlyne Corporate Services11, is not commonly known
by the name ‘welsfargo’ in any derivation.”); see also Ian Schrager Hotels,
L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003)
(finding that without demonstrable evidence to support the assertion that a
respondent is commonly known by a domain name, the assertion must be rejected).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the <microsofttravel.com> and <microsoftjobsearch.com>
domain names to operate websites that offer Internet users travel and job
search related services, respectively. Complainant
contends that the website resolving from Respondent’s disputed domain names will likely confuse Internet users as to Complainant’s
sponsorship of and affiliation with the disputed domain names and corresponding
websites. The Panel finds that
Respondent is attempting to capitalize on this confusion through commercial
gain. As a result, Respondent has
registered and used the <microsofttravel.com> and <microsoftjobsearch.com>
domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See State
Fair of
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 <microsofttravel.com> and <microsoftjobsearch.com> domain names be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Honorable Paul A. Dorf (Ret.), Panelist
Dated: September 18, 2008
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