Microsoft Corporation v. hung ho
Claim Number: FA1004001320863
Complainant is Microsoft
Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsofttown.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, and <ordermicrosoft.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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 22, 2010.
On April 25, 2010, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsofttown.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, and <ordermicrosoft.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. 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 April 28, 2010, the Forum served
the Complaint and all Annexes, including a Written Notice of the Complaint,
setting a deadline of May 18, 2010 by which Respondent could file a Response to
the Complaint, via e-mail to all entities and persons listed on Respondent’s
registration as technical, administrative, and billing contacts, and to
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On May 25, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsofttown.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, and <ordermicrosoft.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsofttown.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, and <ordermicrosoft.com> domain names.
3. Respondent registered and used the <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsofttown.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, and <ordermicrosoft.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, holds numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its MICROSOFT mark (e.g., Reg. No. 1,685,083 issued May 5, 1992) in conjunction with its software and technology related products and services.
Respondent, hung ho, registered the <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, <microsofttown.com>, and <ordermicrosoft.com> domain names no earlier than April 30, 2006. The <directmicrosoft.com> domain name resolves directly to Complainant’s website resolving from its <microsoft.com> domain name. The <microsoftadvisors.com> domain name fails to resolve to an active website. The <magicmicrosoft.com>, <microsoftwire.com>, <microsoftwired.com>, and <microsoftwires.com> domain names resolve to a website entitled “Microsoft Wired New” that contains hyperlinks to Complainant’s competitors in the technology business. The <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, and <ordermicrosoft.com> domain names feature third-party blog information about Complainant’s products. The <microsofttown.com> domain name resolves to a website that features software products that compete with Complainant’s software products.
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.
A complainant may establish rights in a mark for purposes of
Policy ¶ 4(a)(i) by registering the mark with a
federal trademark authority. See Miller
Brewing
Complainant alleges that Respondent’s <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsofttown.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, and <ordermicrosoft.com> domain names are confusingly similar to Complainant’s MICROSOFT. All of the disputed domain names contain Complainant’s MICROSOFT mark and simply add the generic terms: “direct,” “magic,” “advisors,” “bust,” “buzz,” “scoop,” “town,” “wire,” “wired,” “wires,” and “order.” The disputed domain names also include the generic top-level domain (“gTLD”) “.com.” The Panel finds the addition of a generic term and a gTLD do not adequately distinguish the disputed domain names from Complainant’s mark. See Google Inc. v. Xtraplus Corp., D2001-0125 (WIPO Apr. 16, 2001) (finding that the respondent’s domain names were confusingly similar to Complainant’s GOOGLE mark where the respondent merely added common terms such as “buy” or “gear” to the end); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark). Thus, the Panel concludes that Respondent’s disputed domain names are confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the disputed domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
Respondent has not presented any evidence in support of a finding that Respondent is commonly known by the disputed domain names. Complainant claims that Respondent is not authorized or licensed to use the MICROSOFT mark. The WHOIS information identifies the registrant of the disputed domain names as “hung ho,” which the Panel finds is not similar to the disputed domain names. Based on the lack of affirmative evidence in the record, the Panel determines that Respondent is not commonly known by the disputed domain names 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 IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name).
Respondent’s the <magicmicrosoft.com>,
<microsoftwire.com>, <microsoftwired.com>, and <microsoftwires.com>
domain names resolve to a website entitled “Microsoft Wired News” that contains
hyperlinks to Complainant’s competitors in the technology business. The Panel finds Respondent’s use of the
disputed domain names is not a bona fide
offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of
the disputed domain names pursuant to Policy ¶ 4(c)(iii). See 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), or a legitimate noncommercial or fair
use under Policy ¶ 4(c)(iii).”); see also ALPITOUR S.p.A. v.
Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the
respondent’s contention of rights and legitimate interests in the
<bravoclub.com> domain name because the respondent was merely using the
domain name to operate a website containing links to various competing
commercial websites, which the panel did not find to be a use in connection
with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to
Policy ¶ 4(c)(iii)).
Respondent’s <microsofttown.com>
domain name resolves to a website that features software products that
compete with Complainant’s software products.
The Panel finds Respondent’s operation of a website that directly
competes with Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use of the disputed domain name pursuant to
Policy ¶ 4(c)(iii). See Oregon State Bar v. A Special Day, Inc., FA 99657 (Nat. Arb. Forum Dec. 4, 2001) (“Respondent's advertising of legal
services and sale of law-related books under Complainant's name is not a bona
fide offering of goods and services because Respondent is using a mark
confusingly similar to the Complainant's to sell competing goods.”); see
also Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that
the respondent's “use of the domain name (and Complainant’s mark) to
sell products in competition with Complainant demonstrates neither a bona fide
offering of goods or services nor a legitimate noncommercial or fair use of the
name”).
Respondent’s <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, and <ordermicrosoft.com> domain names feature third-party blog information about Complainant’s products. Complainant alleges that Respondent profits from this use in some way. The Panel determines that Respondent’s use of the confusingly similar disputed domain names for this purpose is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000) (“The unauthorized providing of information and services under a mark owned by a third party cannot be said to be the bona fide offering of goods or services.”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
The <directmicrosoft.com> domain name resolves directly to Complainant’s website resolving from Complainant’s <microsoft.com> domain name. Respondent is attempting to pass itself off as Complainant. The Panel finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names pursuant to Policy ¶ 4(c)(iii). See MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding the respondent lacked rights and legitimate interests in the disputed domain name when the respondent copied the complainant’s websites in their entirety at the disputed domain names); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The <microsoftadvisors.com>
domain name fails to resolve to an active website. The Panel finds Respondent’s failure to make
an active use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the
disputed domain name pursuant to Policy ¶ 4(c)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that
the respondent lacked rights or legitimate interests in a confusingly similar
domain name that it had not made demonstrable preparations to use since its
registration seven months prior to the complaint); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25,
2007) (finding that the respondent had no rights or legitimate interests in a
domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed
to make any active use of the domain name).
The Panel finds Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s <magicmicrosoft.com>, <microsoftwire.com>, <microsoftwired.com>,
and <microsoftwires.com> domain names resolve to a website that
features hyperlinks to Complainant’s competitors in the technology
industry. Respondent uses the <microsofttown.com>
domain name to offer software products that compete with Complainant’s
software products. Internet users
interested in Complainant’s technology products may purchase similar products
from Complainant’s competitors or Respondent instead of Complainant because of
Respondent’s use of the confusingly similar disputed domain names. Respondent uses the <microsoftbust.com>,
<microsoftbuzz.com>, <microsoftscoop.com>, and <ordermicrosoft.com>
domain names to feature third-party
blog information about Complainant’s products.
Complainant alleges that it does not have control of this blog
information and, therefore, the blog information may disrupt Complainant’s
technology business. The Panel finds
Respondent’s <magicmicrosoft.com>, <microsoftbuzz.com>, <microsoftwire.com>,
<microsoftwired.com>, <microsoftwires.com>, <microsoftbust.com>,
<microsoftbuzz.com>, <microsoftscoop.com>, and <ordermicrosoft.com>
domain names do disrupt Complainant’s technology business, which constitutes
bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin.
Ltd. v. Domain Mgmt. Servs., FA 877982
(Nat. Arb. Forum
Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to
attract Internet users to a directory website containing commercial links to
the websites of a complainant’s competitors represents bad faith registration
and use under Policy ¶ 4(b)(iii));
see also Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000)
(defining “competitor” as “one who acts in opposition to another and the
context does not imply or demand any restricted meaning such as commercial or
business competitor”).
Complainant alleges that Respondent commercially profits
from the <magicmicrosoft.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>,
<microsofttown.com>, <microsoftbust.com>, <microsoftbuzz.com>,
<microsoftscoop.com>, <ordermicrosoft.com>, and <directmicrosoft.com>
domain names. Internet users may become
confused as to Complainant’s affiliation with or sponsorship of the disputed
domain names and resolving websites. The
Panel concludes that Respondent’s registration of the disputed domain names
constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See
Respondent fails to make
an active use of the <microsoftadvisors.com> domain name.
The Panel determines that this failure to make an active use constitutes
bad faith registration and use pursuant to Policy ¶ 4(a)(iii). See Telstra Corp. v. Nuclear Marshmallows,
D2000-0003 (WIPO Feb. 18, 2000) (“[I]t is possible, in certain circumstances,
for inactivity by the Respondent to amount to the domain name being used in bad
faith.”); see also DCI S.A. v.
Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the
respondent’s [failure to make an active use] of the domain name satisfies the
requirement of ¶ 4(a)(iii) of the Policy).
The Panel finds 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 <directmicrosoft.com>, <magicmicrosoft.com>, <microsoftadvisors.com>, <microsoftbust.com>, <microsoftbuzz.com>, <microsoftscoop.com>, <microsofttown.com>, <microsoftwire.com>, <microsoftwired.com>, <microsoftwires.com>, and <ordermicrosoft.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: June 1, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum