Microsoft Corporation v. Forsyte Corporation
Claim Number: FA0903001254182
Complainant is Microsoft
Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <microsoftfonts.com>, registered with Availabledomains.ca 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 25, 2009; the National Arbitration Forum received a hard copy of the Complaint on March 26, 2009.
On March 27, 2009, Availabledomains.ca Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftfonts.com> domain name is registered with Availabledomains.ca Inc. and that Respondent is the current registrant of the name. Availabledomains.ca Inc. has verified that Respondent is bound by the Availabledomains.ca 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 31, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of April 20, 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 postmaster@microsoftfonts.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On April 23, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 <microsoftfonts.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftfonts.com> domain name.
3. Respondent registered and used the <microsoftfonts.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured and sold computer software and related products and services since 1975. Complainant has registered its MICROSOFT mark numerous times with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 1,200,236 issued July 6, 1982), and other governmental trademark authorities worldwide.
Respondent registered the <microsoftfonts.com> domain name on May 27, 2006. The disputed domain name resolves to a website with links and advertisements, some of which lead to Complainant’s direct competitors.
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.
Pursuant to Policy ¶ 4(a)(i), the Panel finds that Complainant’s registration of the MICROSOFT mark with the USPTO confers sufficient rights in the mark upon Complainant. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s disputed <microsoftfonts.com>
domain name contains Complainant’s
MICROSOFT mark and adds: (1) the descriptive term
“fonts;” and (2) the generic top-level domain (“gTLD”) “.com.” The Panel finds that the addition of a gTLD
is irrelevant. See Rollerblade, Inc.
v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of
the domain name such as “.net” or “.com” does not affect the domain name for
the purpose of determining whether it is identical or confusingly
similar). The Panel notes that the term
“fonts” describes one element of Complainant’s software products, and thus
fails to add any distinction of merit to the disputed domain name. Therefore, the disputed domain name is
confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Space
Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000)
(finding confusing similarity where the respondent’s domain name combines the
complainant’s mark with a generic term that has an obvious relationship to the
complainant’s business).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed 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. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also Hanna-Barbera Prods., Inc. v. Entm’t 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); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
The Panel notes that the WHOIS information lists Respondent
as “Forsyte Corporation.” Moreover,
Complainant argues that Respondent is not permitted or authorized to use
Complainant’s mark. Complainant asserts,
and the Panel so finds, that Respondent is not nor has ever been commonly known
by the disputed domain name under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb.
Forum Feb. 5, 2001) (finding no rights or legitimate interests because the
respondent is not commonly known by the disputed domain name or using the
domain name in connection with a legitimate or fair use); 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).
Respondent’s disputed domain name resolves to a website that promotes Complainant’s competitors via click-through advertising and links. The Panel presumes Respondent has conducted this venture for the receipt of referral fees. Therefore, the Panel finds that Respondent has failed to create a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding that the respondent was not using a disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by redirecting Internet users to a commercial search engine website with links to multiple websites that may be of interest to the complainant’s customers and presumably earning “click-through fees” in the process); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (holding that using an identical or confusingly similar domain name to earn click-through fees via sponsored links to a complainant’s competitors does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii)).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
The resolving website for the disputed domain name displays
links and advertisements for Complainant’s competitors. The disruptive nature of this endeavor with
regards to Complainant’s business allows for the Panel’s finding that
Respondent has engaged in Policy ¶ 4(b)(iii) bad faith
registration and use of the disputed domain name. See Travant
Solutions, Inc. v. Cole, FA 203177 (Nat.
Arb. Forum Dec. 6, 2003) (“Respondent
registered and used the domain name in bad faith, pursuant to Policy ¶
4(b)(iii), because it is operating on behalf of a competitor of Complainant . .
.”); see
also David
Finally, the Panel finds that Respondent has created a
likelihood of confusion as to Complainant’s source of, or affiliation with, the
disputed domain name and resolving website.
The Panel infers Respondent primarily intended to obtain commercial
benefit through the registration and use of the confusingly similar disputed
domain name and the display of competitive advertisements on the corresponding
website. Thus, Respondent has engaged in
bad faith registration and use under Policy ¶ 4(b)(iv). See
GMAC LLC v. WhoisGuard Protected, FA
942715 (Nat. Arb. Forum May 9, 2007) (“Under Paragraph 4(b) of the Policy,
evidence that a domain name registrant has intentionally attempted to attract,
for commercial gain, Internet users to the registrant’s website by creating a
likelihood of confusion with the complainant’s mark serves as evidence of bad
faith.”); see also Williams-Sonoma, Inc.
v. Fees, FA 937704 (Nat. Arb.
Forum Apr. 25, 2007) (holding that the use of a confusingly similar domain name
to display links to various third-party websites demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iv)).
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 <microsoftfonts.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: May 7, 2009
National
Arbitration Forum
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