national arbitration forum

 

DECISION

 

Microsoft Corporation v. Hamid Hatam Tehrani

Claim Number: FA1104001381754

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington, D.C., USA.  Respondent is Hamid Hatam Tehrani (“Respondent”), Iran.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <microsoftroom.com> and <microsoftroom.net>, registered with OnlineNIC, Inc.

 

PANEL

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 Ralph Yachnin as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 4, 2011; the National Arbitration Forum received payment on April 4, 2011.

 

On April 7, 2011, OnlineNIC, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftroom.com> and <microsoftroom.net> domain names are registered with OnlineNIC, Inc. and that Respondent is the current registrant of the names.  OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 April 11, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 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@microsoftroom.com and postmaster@microsoftroom.net.  Also on April 11, 2011, 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 May 4, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Judge Ralph Yachnin 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <microsoftroom.com> and <microsoftroom.net> domain names are confusingly similar to Complainant’s MICROSOFT mark.

 

2.    Respondent does not have any rights or legitimate interests in the <microsoftroom.com> and <microsoftroom.net> domain names.

 

3.    Respondent registered and used the <microsoftroom.com> and <microsoftroom.net> domain names in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

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 uses the MICROSOFT mark in connection with these products and services.  Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MICROSOFT mark (e.g., Reg. No. 1,200,236 issued July 6, 1982).

 

Respondent, Hamid Hatam Tehrani, registered the <microsoftroom.com> and <microsoftroom.net> domain names on January 18, 2010 and March 9, 2011 respectively.  The disputed domain names resolve to inactive websites.  In addition, Respondent offered to sell the <microsoftroom.com> domain name to Complainant for $22,400.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

The Panel finds Complainant has rights in the MICROSOFT mark through its registration of the mark with USPTO (e.g., Reg. No. 1,200,236 issued July 6, 1982).  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 Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (finding that a trademark registration adequately demonstrates a complainant’s rights in a mark under Policy ¶ 4(a)(i)).  The Panel also finds it is irrelevant whether Complainant holds a trademark registration with the trademark authority in the country in which Respondent resides.  See Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction).

 

Complainant claims the <microsoftroom.com> and <microsoftroom.net> domain names are confusingly similar to its MICROSOFT mark.  Respondent replicates Complainant’s mark in the disputed domain name and then adds the generic term “room.”  Respondent also attaches the generic top-level domain (“gTLD”) “.com” to the <microsoftroom.com> domain name and the gTLD “.net” to the <microsoftroom.net> domain name.  The Panel finds Respondent’s additions fail to sufficiently distinguish Respondent’s domain names from Complainant’s mark.  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. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity 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).  Therefore, the Panel concludes Respondent’s <microsoftroom.com> and <microsoftroom.net> domain names are confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant must first make a prima facie case showing Respondent lacks rights and legitimate interests in the <microsoftroom.com> and <microsoftroom.net> domain names under Policy ¶ 4(a)(ii).  The burden then shifts to Respondent to prove it has rights or legitimate interests in the disputed domain names.  The Panel may view Respondent’s failure to submit a Response as evidence that Respondent lacks rights or legitimate interests.  See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also 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.”).  Despite Respondent’s failure to respond, the Panel will evaluate the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).

 

Complainant asserts it has not licensed or otherwise authorized Respondent to use its MICROSOFT mark.  Moreover, the WHOIS information lists “Hamid Hatam Tehrani” as the registrant of the <microsoftroom.com> and <microsoftroom.net> domain names, which the Panel finds is not similar to either domain name.  The Panel determines that Complainant’s assertion combined with the WHOIS registrant information support a finding that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See 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); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).

 

Complainant submits screen shots of the websites resolving from the disputed domain names.  These images show a site that contains only a banner stating, “Microsoftroom: For More Information Contact Us: info@microsoftroom.com.”  The Panel finds Respondent fails to make active use of the disputed domain names.  Therefore, the Panel holds Respondent does not use the <microsoftroom.com> and <microsoftroom.net> domain names to make a bona fide offering of goods or services under Policy ¶ 4(a)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).  See 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); see also 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).

 

Complainant claims it received an unsolicited offer from Respondent on March 11, 2011 to purchase the <microsoftroom.com> domain name.  Complainant provides evidence that Respondent wrote, “I believe this domain should be owned by Microsoft, so I decided to send my first offer to the main owner of this domain.”  After multiple communications, Respondent offered to transfer the disputed domain name to Complainant for $22,400.  The Panel finds that Respondent offered to sell the <microsoftroom.com> domain name to Complainant for more than its out-of-pocket costs.  Therefore, the Panel finds this behavior provides further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).  See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).

 

Registration and Use in Bad Faith

 

The Panel finds that Respondent’s offer to sell the <microsoftroom.com> domain name to Complainant for more than its out-of-pocket costs amounts to registration and use in bad faith under Policy ¶ 4(b)(i).  See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”).

 

Prior panels have found failure to make active use of a domain name can constitute bad faith use when the domain name registration occurred after the complainant acquired rights in a mark.  See Accor v. Value-Domain Com, Value Domain, D2009-1797 (WIPO Feb. 8, 2010) (finding bad faith use where respondent passively held the domain name and the domain name registration occurred approximately 19 years after the complainant had filed trademark registrations in the mark); see also OneWest Bank, FSB v. Jacob Zakaria d/b/a EQ Funding, FA 1328894 (Nat. Arb. Forum July 20, 2010) (the panel found bad faith use where respondent failed to make active use of the disputed domain name and the respondent registered the domain name approximately 7 years after the complainant registered its trademark with the USPTO).  Respondent registered its confusingly similar domain names decades after Complainant gained trademark rights in the MICROSOFT (e.g., Reg. No. 1,200,236 issued July 6, 1982).  Therefore, the Panel concludes that Respondent’s failure to make an active use of the domain name constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

 

The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <microsoftroom.com> and <microsoftroom.net> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Hon. Ralph Yachnin, Panelist

Justice, Supreme Court, NY (Ret.)

 

Dated:  May 4, 2011

 

 

 

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