Microsoft Corporation v. Robert Altman
Claim Number: FA0906001266955
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 <zunehd.net>, 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.
Joel M.Grossman, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 9, 2009.
On June 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <zunehd.net> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 June 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of June 29, 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 email@example.com by e-mail.
A Response was received in electronic copy on June 29, 2009 prior to the Response deadline; however no hard copy was received. The National Arbitration Forum therefore does not consider the Response to be in compliance with ICANN Rule 5.
Complainant submitted an Additional Submission to the National Arbitration Forum on July 1, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted an Additional Submission to the National Arbitration Forum on July 1, 2009, which was deemed timely in accordance with the National Arbitration Forum’s Supplemental Rule 7.
On July 2, 2009, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
Complainant is the holder of several trademarks in the name Zune. Complainant asserts that Respondent, with full knowledge of the trademarks, registered the domain name in question. Complainant first asserts that the domain name is identical to or substantially similar to the Mark. Complainant notes that the mere addition of a common term such as “HD” or a gLTD such as “.net” will not in any way negate similarity between the domain name and the mark. Complainant cites several decisions under the UDRP in support of this.
Complainant further asserts that Respondent has no rights or legitimate interests in the name. In this regard, Complainant states that Respondent is not generally known by the name, and is not affiliated in any way with Complainant. Complainant points out that on its website, Respondent actually admits its knowledge of Complainant's trademark, and that Respondent is not affiliated with Complainant. Additionally, Complainant states that Respondent is not using the name in connection with a bona fide offering of goods and services, as respondent is using Complainant’s mark to provide advertising links and to earn pay-per-click fees when visitors click on links to Complainant’s competitors.
Finally, Complainant states that the name was registered and is being used in bad faith. Respondent clearly had knowledge of the mark the time that it registered the domain name. Moreover, Respondent attempted to trade on Complainant’s mark, using the mark to attract Internet users to its site, as the users would assume that the site was affiliated with Complainant. In addition, Respondent contacted Complainant and offered to sell the name to Respondent.
Respondent states that the name is not identical or confusingly similar to Complainant’s mark, since the letters comprising the word “zune” are used in a number of other domain names. Thus, Internet users would be familiar with multiple uses of the letters and would not be confused about any potential connection to Complainant. Moreover, Respondent implies that Complainant cannot go after Respondent’s domain name while letting others use the mark with impunity.
Next, Respondent states that the domain name was in fact being used for legitimate purposes, namely the bona fide offering of goods and services. Respondent asserts that it is using the name to sell hard drives that consumers would use in connection with Complainant’s products. This explains the letters “hd” in the domain name, which stands for hard drive and not for high definition.
In connection with Complainant’s assertion that the mark was registered and is being used in bad faith, Respondent asserts that it was Complainant which approached Respondent with an offer to purchase the name for $500. Further, it never intended to divert traffic from Complainant’s site or to confuse Internet users searching for Complainant’s site.
C. Additional Submissions
In Complainant’s Additional Submission it notes that it makes no difference whether the “hd” part of the name stands for high definition or hard drive. The name is still confusingly similar to the mark. Complainant also asserts that Respondent’s website at first had Complainant’s unique logo superimposed on the letters HD. This use of the logo, although later taken down from Respondent’s site, is further evidence of bad faith, and undercuts any argument that the use of the term “zune” was a coincidence. Complainant rebuts Respondent’s “selective prosecution” argument, i.e. that Complainant may not take action against it while allowing others to use the mark, noting that this is not a defense either under trademark law or UDRP law. Complainant also rebuts Respondent’s claim that it was engaged in the bona fide offering of goods and services, supposedly selling hard drives to use with Complainant’s products, noting that there was no way to actually purchase such products on Respondent’s website. As to bad faith, Complainant asserts that it was Respondent which initiated discussion of selling the name to Complainant, attaching a letter from Respondent to Complainant’s counsel which stated: “please advise what compensation will be offered for the transfer of the domain.” It was only after that request was made by Respondent that Complainant offered to buy the name for the sum of $500. Respondent’s response to this offer was to demand compensation that included 5 Zune music players, an Xbox, a Dell laptop computer, various accessories plus $5,000 in cash, compensation, and an internship with Complainant, altogether far in excess of Respondent’s out-of-pocket registration costs.
In Respondent’s Additional Submission it states that while over 3 million Zune music players have been sold by Complainant, the hit rate on Respondent’s site was very low, only 400 visitors. Respondent asserts that Complainant is a large corporation which is used to getting its way, but a neutral view of the facts would show that Respondent did not register or use the domain name in bad faith.
The Panel finds (1) that the domain name is identical to or confusingly similar to a mark in which Complainant has rights, (2) that Respondent has no rights or legitimate interests in the name, and (3) that the name was registered and is being used in bad faith.
Paragraph 15(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(2) the 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.
The Panel finds that the name is very similar
to the mark. Neither the insertion of the common letters “hd,” nor the addition
of the gLTD “.net” adequately distinguish the name from the mark, and are
irrelevant for purposes of this analysis. See Jerry Damson, Inc. v.
Respondent is not commonly known by the domain name, as it is identified in the WHOIS information as “Robert Altman.” This is one indication that Respondent has no rights or legitimate interests in the name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006). The Panel also finds that the name was not being used in connection with a bona fide offering of goods and services, as Respondent’s site provided no means for conducting sales of its hard drives, or anything else. Rather the name was being used to earn pay-per-click fees when visitors clicked on links to Complainant’s competitors. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007). These uses do not demonstrate any rights or legitimate interests in the name.
Unlike some respondents, the Respondent in
this matter does not contend that it was unaware of Complainant’s mark at the
time of registration of the domain name. Respondent admits its knowledge of the
name, in its pleadings and on the website. This is clear evidence of
registration in bad faith. See Yahoo! Inc. v.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zunehd.net> domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: July 15, 2009
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