Microsoft Corporation v. La Duzi
Claim Number: FA0910001288612
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina
Rosette of Covington & Burling LLP,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <microsofr.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically October 9, 2009; the National Arbitration Forum received a hard copy of the Complaint October 12, 2009.
On October 12, 2009, Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com confirmed by e-mail to the National Arbitration Forum that the <microsofr.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.Com verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a Publicdomainregistry.com registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 20, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 9, 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@microsofr.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On November 16, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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. The domain name that Respondent registered, <microsofr.com>, is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent has no rights to or legitimate interests in the <microsofr.com> domain name.
3. Respondent registered and used the <microsofr.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures, markets,
and sells computer software and related products and services, including
computer operating systems, client/server applications, business and consumer
productivity applications, software programming tools, interactive media
programs, internet platform and development tools, online information and
entertainment services, electronic commerce services, and computer
publications. Complainant began its
business in 1975, and owns more than twenty-five
Respondent, La Duzi, registered the disputed domain name April 27, 2007. The disputed domain name resolves to a website featuring a variety of third-party links that compete with Complainant’s products and services. The disputed domain name previously resolved to a website displaying adult-oriented content.
Respondent has been the Respondent in several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants in those cases. See Lernco, Inc. v. La Duzi, D2009-0960 (WIPO Sept. 7, 2009); see also LEGO Juris A/S v. Deng Yi Xia, La Duzi, and Hu Li, DI2009-0858 (WIPO Aug. 18, 2009).
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 provided evidence of the registration of the
MICROSOFT mark with the USPTO (Reg. No. 1,200,236 issued July 6, 1982) as well
as evidence of registration with the Chinese governmental trademark authority (Reg.
No. 621,767 issued December 10, 1992).
The Panel finds Complainant’s registration of its mark in any
jurisdiction, whether in the country of the Respondent or not meets the
requirements of Policy ¶ 4(a)(i), as these
registrations each do. 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 Reebok Int’l Ltd. v.
UDRP panelists have repeatedly found that a domain name is confusingly similar to a mark when a domain name contains a clear misspelling of a complainant’s mark. See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant). Respondent’s domain name is almost identical to Complainant’s mark; it is clearly an intentional mistyping of the final letter of the MICROSOFT mark as an “r”, because the letter “r” is located directly adjacent to the letter “t” on a Latin character computer keyboard. Further, Respondent added the identical generic top-level domain “gTLD”) “.com.” The Panel finds that the addition of a gTLD is not relevant in a Policy ¶ 4(a)(i) analysis. See Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”); see also 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 finds an effort to capitalize on Internet users who inadvertently mistype Complainant’s famous mark when trying to reach Complainant’s website does not change the overall impression of the mark or render the disputed domain name distinct from the mark. Therefore, the Panel finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Internet Movie Database, Inc. v. Temme, FA 449837 (Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain names were confusingly similar to the complainant’s mark because the disputed domain names were common misspellings of the mark involving keys that were adjacent to the current keys comprising the complainant’s mark); see also Dow Jones & Co., Inc. v. Powerclick, Inc., D2000-1259 (WIPO Dec. 1, 2000) (holding that the deliberate introduction of errors or changes, such as the addition of a fourth “w” or the omission of periods or other such “generic” typos do not change respondent’s infringement on a core trademark held by the complainant).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleged that Respondent lacks rights and legitimate interests in the <microsofr.com> domain name. Based upon the allegations made in the Complaint, the Panel finds Complainant established a prima facie case pursuant to Policy ¶ 4(a)(ii). As such, the burden of proof shifts to Respondent. Although Respondent did not respond to the Complaint, the Panel still examines the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to demonstrate that it does have such rights or interests.”); 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 interest 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).
Respondent is not commonly known by Complainant’s mark. The WHOIS record identifies the registrant as
“La Duzi”, and the Panel finds that Respondent is not commonly known by
Complainant’s MICROSOFT mark under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi,
FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in
Respondent’s WHOIS information implies that Respondent is ‘commonly known by’
the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see
also
Previously, Respondent used the disputed domain name to resolve to a website featuring adult-oriented content. The Panel finds this prior use of the disputed domain name was not 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 Vivendi Universal Games v. Chang, FA 206328 (Nat. Arb. Forum Dec. 17, 2003) (finding that the respondent did not use a domain name in connection with a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the domain name to divert Internet users seeking the complainant's goods or services to pornographic material and links, while presumably earning a commission or referral fees from advertisers); see also Target Brands, Inc. v. Bealo Group S.A., FA 128684 (Nat. Arb. Forum Dec. 17, 2002) (finding that use of the <targetstore.net> domain name to redirect Internet users to a pornographic website did not equate to a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of a domain name under Policy ¶ 4(c)(iii)).
Currently, Respondent uses the site to display links to third party competitors of Complainant’s products and services. The Panel finds such use is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and that it is not a legitimate noncommercial or fair use pursuant to policy ¶ 4(c)(iii). See ALPITOUR S.p.A. v. balata inc, FA 888649 (Nat. Arb. Forum Feb. 27, 2007) (finding that “using the confusingly similar <viaggidea.com> domain name to operate a website that features links to various commercial websites from which Respondent presumably receives referral fees….is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate non-commercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also Skyhawke Techns., LLC v. Tidewinds Group, Inc., FA 949608 (Nat. Arb. Forum May 18, 2007) (“Respondent is using the <skycaddy.com> domain name to display a list of hyperlinks, some of which advertise Complainant and its competitors’ products. The Panel finds that this use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant asserts that Respondent engaged in typosquatting. Typosquatting occurs when a domain name reflecting the misspelling of a trademark is registered with the intent of diverting internet users. Here, Respondent misspelled Complainant’s mark in registering the disputed domain name and the Panel finds that Respondent has engaged in typosquatting, which supports findings that Respondent lacks rights and legitimate interests pursuant to Policy ¶ 4(a)(ii). See IndyMac Bank F.S.B. v. Ebeyer, FA 175292 (Nat. Arb. Forum Sept. 19, 2003) (finding that the respondent lacked rights and legitimate interests in the disputed domain names because it “engaged in the practice of typosquatting by taking advantage of Internet users who attempt to access Complainant's <indymac.com> website but mistakenly misspell Complainant's mark by typing the letter ‘x’ instead of the letter ‘c’”); see also LTD Commodities LLC v. Party Night, Inc., FA 165155 (Nat. Arb. Forum Aug. 14, 2003) (finding that the <ltdcommadities.com>, <ltdcommmodities.com>, and <ltdcommodaties.com> domain names were intentional misspellings of Complainant's LTD COMMODITIES mark and this “‘typosquatting’ is evidence that Respondent lacks rights or legitimate interests in the disputed domain names”).
The Panel finds that Complainant satisfied the elements of
ICANN Policy ¶ 4(a)(ii).
Respondent has been the respondent in several other UDRP proceedings in which the disputed domain names were transferred from Respondent to the respective complainants. See Lernco, Inc. v. La Duzi, D2009-0960 (WIPO Sept. 7, 2009); see also LEGO Juris A/S v. Deng Yi Xia, La Duzi, and Hu Li, D2009-0858 (WIPO Aug. 18, 2009). The Panel finds this constitutes a pattern of bad faith registration and use under Policy ¶ 4 (b)(ii). See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (“As Complainant's filing date for its valid registration of the NAF NATIONAL ABORTION FEDERATION mark on the Principal Register of the U.S. Patent and Trademark Office predates Respondent's registration of the disputed domain name by over a year, this registration is additional evidence of Complainant's rights in the mark.”); see also Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
The disputed domain name currently resolves to a website
displaying third-party links that compete with Complainant’s business. The Panel finds this current use of the
disputed domain name constitutes disruption and is evidence of bad faith
registration and use under Policy ¶ 4(b)(iii). See
Persohn v.
Lim, FA 874447 (Nat. Arb. Forum Feb.
19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii)
where a respondent used the disputed domain name to operate a commercial search
engine with links to the complainant’s competitors); see also
By currently using the domain name to resolve to competing
links, Respondent has intentionally attempted to attract, for commercial gain,
Internet users to its website, by creating the likelihood of confusion with the
complainant’s mark as to the source, sponsorship, affiliation, or endorsement of
its website or location or of a product or service on its website or location
pursuant to Policy ¶ 4(b)(iv).
Also, Respondent’s disputed domain name previously resolved
to a website featuring adult-oriented content.
This Panel finds this evidence also supports findings of bad faith
registration and use under Policy ¶ 4 (a)(iii). See Ty,
Inc. v. O.Z. Names, D2000-0370 (WIPO June 27, 2000) (finding that absent
contrary evidence, linking the domain names in question to graphic,
adult-oriented websites is evidence of bad faith); see also Wells Fargo & Co.
v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003)
(finding that the respondent’s tarnishing use of the disputed domain names to redirect Internet users to
adult-oriented websites was evidence that the domain names were being used in
bad faith).
Further, the Panel finds that Respondent’s previously
discussed practice of typosquatting constitutes bad faith registration and use
pursuant to Policy ¶ 4(a)(iii). See Zone Labs,
Inc. v. Zuccarini, FA 190613 (Nat.
Arb. Forum Oct. 15, 2003) (“Respondent’s
registration and use of [the <zonelarm.com> domain name] that capitalizes
on the typographical error of an Internet user is considered typosquatting.
Typosquatting, itself is evidence of bad faith registration and use pursuant to
Policy ¶ 4(a)(iii).”); see also K.R. USA,
INC. v. SO SO DOMAINS, FA 180624 (Nat. Arb. Forum Sept. 18, 2003) (finding that the respondent’s registration
and use of the <philadelphiaenquirer.com> and
<tallahassedemocrat.com> domain names capitalized on the typographical
error of Internet users seeking the complainant's THE PHILADELPHIA
INQUIRER and TALLAHASSEE DEMOCRAT marks, evincing typosquatting and bad faith
pursuant to Policy ¶ 4(a)(iii)).
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsofr.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 30, 2009.
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