Microsoft Corporation v. FM c/o fake jeans
Claim Number: FA0812001238684
Complainant is Microsoft
Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc.,
The domain name at issue is <unlimitedzunedownloads.com>, registered with Godaddy.com, Inc.
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.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On December 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 2009 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 firstname.lastname@example.org by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
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 <unlimitedzunedownloads.com> domain name is confusingly similar to Complainant’s ZUNE mark.
2. Respondent does not have any rights or legitimate interests in the <unlimitedzunedownloads.com> domain name.
3. Respondent registered and used the <unlimitedzunedownloads.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant sells computer software and related products and services, including a media player that it promotes and sells under the ZUNE mark, which Complainant registered with the United States Patent and Trademark Office (“USPTO”) on September 18, 2007 (Reg. No. 3,490,714 filed August 16, 2006). Complainant has been using the ZUNE mark continuously in commerce since at least June, 2006, when it began using the ZUNE mark to advertise the media player on its website.
Respondent registered the <unlimitedzunedownloads.com>
domain name on
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’s registration of its ZUNE mark with the USPTO
adequately establishes Complainant’s rights in the mark pursuant to Policy ¶
4(a)(i). See Men’s
Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002)
Complainant contends that
Respondent’s <unlimitedzunedownloads.com> domain name is confusingly similar to its ZUNE mark. The disputed
domain name differs from Complainant’s mark in three ways: (1) the generic term
“unlimited” has been added to the beginning of the mark; (2) the descriptive
term “downloads” has been added to the end of the mark; and (3) the generic
top-level domain (“gTLD”) “.com” has been added to the end of the mark. Under
Policy ¶ 4(a)(i), neither generic nor descriptive
terms distinguish a domain name from a mark that it incorporates. See Space
Imaging LLC v. Brownell, AF-0298 (eResolution
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant alleges that Respondent lacks rights and legitimate interests in the <unlimitedzunedownloads.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Because Respondent has not responded to the Complaint, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Hanna-Barbera Prods., Inc. v. Entertainment Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant contends that Respondent has never been commonly
known by the <unlimitedzunedownloads.com> domain name. The WHOIS information identifies Respondent
as “FM c/o fake jeans,” and the Panel can find no evidence in the record
suggesting that Respondent is commonly known by the disputed domain name. Therefore, the Panel concludes that
Respondent lacks rights and legitimate interests in the <unlimitedzunedownloads.com>
domain name under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v.
Taylor, FA 173369 (Nat. Arb. Forum
Respondent’s <unlimitedzunedownloads.com> domain name resolves to a website that imitates Complainant’s website and prominently displays Complainant’s ZUNE trademark. Respondent is using the <unlimitedzunedownloads.com> domain name as an attempt to pass itself off as Complainant in order to defraud Complainant’s customers, which the Panel finds is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”); see also American Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The Panel finds that Respondent’s use of the disputed domain
name to purport to offer competing services through its imitation of
Complainant disrupts Complainant’s operations.
Therefore, this constitutes evidence of Respondent’s bad faith
registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v.
Aston, FA 593977 (Nat. Arb. Forum
Respondent uses the <unlimitedzunedownloads.com>
domain name to divert Internet users seeking Complainant’s products to
Respondent’s own website which appears to offer the same services by imitating
Complainant’s website. Customers are
therefore likely to become confused as to the source or affiliation of this
website. Respondent is attempting to
profit from the goodwill associated with Complainant’s ZUNE mark, which is
confusingly similar to Respondent’s <unlimitedzunedownloads.com>
domain name. Such use of the disputed
domain name for commercial gain is evidence of bad faith registration and use
pursuant to Policy ¶ 4(b)(iv). See Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb.
The Panel finds that Policy ¶ 4(a)(iii) is 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 <unlimitedzunedownloads.com> domain name be TRANSFERRED from Respondent to Complainant.
Dated: January 27, 2009
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