Microsoft Corporation v. Evgeny I Viktorov c/o Private Person
Claim Number: FA0909001285127
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 <zunecenter.com>, registered with Regtime Ltd.
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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to
the National Arbitration Forum electronically on
On
On October 5, 2009, a Russian Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 26, 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@zunecenter.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On
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.
Pursuant to Rule 11(a) the Panel determines that the language requirement has been satisfied through the Russian language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <zunecenter.com> domain name is confusingly similar to Complainant’s ZUNE mark.
2. Respondent does not have any rights or legitimate interests in the <zunecenter.com> domain name.
3. Respondent registered and used the <zunecenter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft
Corporation, is a developer, marketer, and provider of computer equipment and
software, including the music software Complainant promotes under the ZUNE
mark, which Complainant registered with the United States Patent and Trademark
Office (“USPTO”) on
Respondent registered the <zunecenter.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.
Respondent registered the <zunecenter.com>
domain name on
The Panel finds that Complainant has established rights in
the ZUNE mark for purposes of Policy ¶ 4(a)(i) through its trademark
registrations with the USPTO (Reg. No. 3,294,152
issued September 18, 2007). See Microsoft Corp. v. Burkes, FA
652743
(Nat. Arb. Forum
Complainant contends that
Respondent’s <zunecenter.com> domain name is confusingly similar to its ZUNE mark. The disputed domain name
differs from Complainant’s mark in two ways: (1) the generic term “center” has
been added to the end of the mark; and (2) the generic top-level domain
(“gTLD”) “.com” has been added. The
Panel finds that the addition of a generic term does not sufficiently
distinguish a domain name from an incorporated mark for the purposes of Policy
¶ 4(a)(i). The Panel also finds that the addition of a gTLD to a mark also does
not reduce the likelihood of confusion between the domain name and the mark,
because every domain name must contain a top-level domain. Therefore, the Panel finds that these changes
do not minimize or eliminate the resulting likelihood of confusion, and so
Respondent’s disputed domain name is confusingly similar to Complainant’s mark
pursuant to Policy ¶ 4(a)(i). See Am. Online Inc. v. Neticq.com Ltd., D2000-1606 (WIPO Feb. 12, 2001)
(finding that the addition of the generic word “Net” to the complainant’s ICQ
mark, makes the <neticq.com> domain name confusingly similar to the
complainant’s mark); see also Wells Fargo
Home Mortgage v. domains Ventures, FA 810215 (Nat. Arb. Forum Nov. 14,
2006) (finding the addition of the term “your” to the WELLS FARGO mark in the
<yourwellsfargomortgage.com> domain name to be insufficient to
distinguish the disputed domain name from the complainant’s mark under Policy ¶
4(a)(i)); see
also Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545
(Nat. Arb. Forum
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the disputed domain name. Under Policy ¶ 4(a)(ii), after the complainant makes a prima facie case against the respondent, the respondent then has the burden of showing evidence that it does have rights and legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case under Policy ¶ 4(a)(ii). Respondent has not responded to the Complaint in this case; however, the Panel will still examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Woolworths plc. v. Anderson, D2000-1113 (WIPO Oct. 10, 2000) (finding that, absent evidence of preparation to use the domain name for a legitimate purpose, the burden of proof lies with the respondent to demonstrate that it has rights or legitimate interests); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”).
Complainant contends that Respondent is not commonly known
by the <zunecenter.com>
domain name nor has it ever been the owner or licensee of the ZUNE mark.
The WHOIS record for the disputed domain name lists Respondent as “Evgeny I Viktorov c/o Private Person.” Respondent has failed to show any evidence
contrary to Complainant’s contentions.
In light of the evidence before it, the Panel finds that Respondent is
not commonly known by the
disputed domain name pursuant to Policy ¶ 4(c)(ii). See
Instron Corp. v. Kaner, FA
768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was
not commonly known by the <shoredurometer.com> and
<shoredurometers.com> domain names because the WHOIS information listed
Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of
the disputed domain names and there was no other evidence in the record to
suggest that the respondent was commonly known by the domain names in dispute); see also Wells
Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb.
Forum
The <zunecenter.com> domain name resolves to a website that features the ZUNE mark and images of Complainant’s
software products, and offers “unlimited music downloads” and other software. The
products offered are not Complainant’s products, but competing products. Complainant contends that Respondent is using
the disputed domain name and images of Complainant’s products in conjunction,
in order to “pass off” Respondent’s website as Complainant’s website. The Panel finds that Respondent’s attempt to
use the <zunecenter.com>
domain name to “pass off” Respondent’s website as Complainant’s website, and
then sell competing products, is neither a bona
fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate
noncommercial or fair use under Policy ¶ 4(c)(iii). See
Kmart of
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Complainant contends that Respondent is using the confusingly
similar disputed domain name, registered
Complainant also contends that Respondent is gaining
commercially through this diversion, through the sales of products that compete
with Complainant’s products. The Panel finds that Respondent is intentionally
using the <zunecenter.com> domain
name for commercial gain through a likelihood of confusion with Complainant’s
mark. Therefore, pursuant to Policy ¶
4(b)(iv), the Panel finds that this use for commercial gain also constitutes
evidence of registration and use in bad faith.
See Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad
faith registration and use pursuant to Policy ¶ 4(b)(iv) where the domain name
resolved to a website that offered similar products as those sold under the
complainant’s famous mark); see also World Wrestling Fed’n Entm’t, Inc. v.
Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (concluding that the
respondent registered and used the <wwfauction.com> domain name in bad
faith because the name resolved to a commercial website that the complainant’s
customers were likely to confuse with the source of the complainant’s products,
especially because of the respondent’s prominent use of the complainant’s logo
on the site).
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 <zunecenter.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: November 11, 2009
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