Microsoft Corporation v. Ana Borges
Claim Number: FA1012001362060
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Ana Borges (“Respondent”), Portugal.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com>, registered with GoDaddy.com, 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.
Judge Harold Kalina (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 7, 2010; the National Arbitration Forum received payment on December 7, 2010.
On December 7, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, and <windows7utilities.com> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 9, 2010, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <windowspilot.com> domain name is registered with GoDaddy.com, Inc. and that 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On December 13, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 3, 2011 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 postmaster@windows7cleaner.com, postmaster@windows7defrag.com, postmaster@windows7optimizer.com, postmaster@windows7privacy.com, postmaster@windows7registryclean.com, postmaster@windows7systemcleaner.com, postmaster@windows7tuneup.com, postmaster@windows7undelete.com, postmaster@windows7utilities.com, and postmaster@windowspilot.com. Also on December 13, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 7, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Harold Kalina (Re.) 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names are confusingly similar to Complainant’s WINDOWS mark.
2. Respondent does not have any rights or legitimate interests in the <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names.
3. Respondent registered and used the <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a global computer services provider and has been operating in this field since 1975. Complainant holds multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg No. 1,872,264 issued January 10, 1995) for its WINDOWS mark. Complainant uses the mark in support of its computer services business.
Respondent, Ana Borges, registered the disputed domain names as early as October 15, 2008. The disputed domain names resolve to websites which list third-party links to other sites, some of which are competitors of Complainant.
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.
Complainant contends that it has established rights in its WINDOWS mark via registration of the mark with a federal trademark authority. Previous panels have found that trademark registration with a federal trademark authority provides affirmative evidence of rights in the mark. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel holds that complainant has established rights in its WINDOWS mark under Policy ¶ 4(a)(i), based upon Complainant’s trademark registrations with the USPTO (e.g., Reg. No. 1,872,264 issued January 10, 1995).
Complainant also contends that Respondent’s <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, <windowspilot.com> domain names are confusingly similar to its own WINDOWS mark. The disputed domain names include the entirety of Complainant’s mark whilst separately adding these descriptive and generic terms, “cleaner,” “defrag,” “optimizer,” “privacy,” “registry,” “system,” “cleaner,” tune up,” “undelete,” “utilities,” and “pilot,” along with the number “7” in all but one domain name. Respondent also added the generic top-level domain (“gTLD”) “.com.” The Panel finds that Respondent has failed to differentiate its disputed domain names from Complainant’s mark by adding descriptive and generic terms, a number, and a gTLD; therefore, the disputed domain names are confusingly similar to Complainant’s mark according to Policy ¶ 4 (a)(i). See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); see also Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”).
The Panel finds the all requirements of Policy ¶ 4(a)(i) are satisfied.
The Panel finds that Complainant has met its burden of proof by making its prima facie case against Respondent. Previous panels have found that the burden to prove rights or legitimate interests in a mark shift to a respondent when the complainant meets its prima facie burden. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel may assume the Respondent has no rights or legitimate interests at all as Respondent has failed to file a Response to the initial Complaint. See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”). However, the Panel will still the examine the record fully to ascertain whether Respondent does in fact hold rights or legitimate interests in the disputed domain names.
Complainant contends that Respondent is not commonly known by the <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names. Respondent has brought forth no evidence to the contrary and the WHOIS information provided by Complainant identifies the registrant of the disputed domain names to be “Ana Borges;” which, Complainant claims is not similar to the disputed domain names. The Panel finds that Respondent is not commonly known by the <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names according the 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant also claims that Respondent is not engaging in a bona fide offering of goods or services or a legitimate or noncommerical use under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). Respondent’s disputed domain names resolve to a website offering links to third-parties, some of which are Complainant’s competitors. Presumably, Respondent receives click-through fees when Internet users go to its own site and then click on the links offered. The Panel finds that Respondent is not making a bona fide offering of goods or services or engaging in a legitimate noncommercial or fair use of the <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names under Policy ¶ 4(c)(i) and ¶ 4(c)(iii). See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar 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 also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (concluding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself commercially profiting from the click-through fees).
The Panel finds that all requirements of Policy ¶ 4(a)(ii) have been satisfied.
Respondent’s <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names resolve to a website offering links to third-parties, some of which are Complainant’s competitors. The disputed domain names disrupt Complainant’s business by offering links to its competitor’s sites thereby taking business away from Complainant. The Panel finds that Respondent’s use of the confusingly similar domain names to direct Internet users to its own site where it offers links to Complainant’s competitors disruptive to Complainant’s business and affirmative evidence of Respondent’s bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See EBAY, Inc. v. MEOdesigns, D2000-1368 (Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites); see also Am. Online, Inc. v. Tapia, FA 328159 (Nat. Arb. Forum Dec. 1, 2004) (“Respondent is referring Internet traffic that seeks out the <aol.tv> domain name to a competitor’s news site. The Panel strongly finds that appropriating Complainant’s mark to refer customers seeking Complainant to Complainant’s competitors is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant contends that Respondent’s registration and use of the <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names is in bad faith due to Respondent’s commercial gain from the sites pursuant to Policy ¶ 4(b)(iv). Respondent’s disputed domain names resolve to a site offering third-party links to competitors of Complainant. From these, Respondent presumably receives click-through revenues. Thus, the Panel finds that Respondent’s registration and use for its own pecuniary gain is affirmative evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
The Panel finds that all requirements of Policy ¶ 4(a)(iii) have 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 <windows7cleaner.com>, <windows7defrag.com>, <windows7optimizer.com>, <windows7privacy.com>, <windows7registryclean.com>, <windows7systemcleaner.com>, <windows7tuneup.com>, <windows7undelete.com>, <windows7utilities.com>, and <windowspilot.com> domain names be TRANSFERRED from Respondent to Complainant.
Judge Harold Kalina (Ret.), Panelist
Dated: January 20, 2011
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