national arbitration forum

 

DECISION

 

Microsoft Corporation v. Bret daCosta

Claim Number: FA1104001382269

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Bret daCosta (“Respondent”), Arizona, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <microsofttagmaster.com> and <mstagmaster.com>, registered with GoDaddy.com, 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.

 

Honorable Paul A. Dorf (Ret.) as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on April 7, 2011; the National Arbitration Forum received payment on April 7, 2011.

 

On April 7, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsofttagmaster.com> and <mstagmaster.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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).

 

On April 7, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 27, 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@microsofttagmaster.com and postmaster@mstagmaster.com.  Also on April 7, 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 3, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (Ret.) 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 <microsofttagmaster.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.

 

Respondent’s <mstagmaster.com> domain name is confusingly similar to Complainant’s MS mark.

 

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

 

3.    Respondent registered and used the <microsofttagmaster.com> and <mstagmaster.com> domain names in bad faith.

 

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

 

FINDINGS

Complainant, Microsoft Corporation, develops and sells software and other goods and services, including its Microsoft Tag technology, which allows consumers to use their mobile phones to snap an image and gain instant access to relevant online content. Complainant owns multiple trademark registrations for the MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,200,236 issued July 6, 1982) and other trademark authorities around the world. Complainant also owns a trademark registration for the MS mark with the USPTO (Reg. No. 1,303,495 issued November 6, 1984).

 

Respondent, Bret daCosta, registered the <mstagmaster.com> domain name on January 9, 2011 and the <microsofttagmaster.com> domain name on January 28, 2011. The disputed domain names resolve to landing pages that contain information about Complainant’s MICROSOFT Tag product, including links to Complainant’s website, a video about Complainant’s product, and a link that redirects to the <wix.com> domain name where the user can get free services for web design.

 

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

 

Complainant owns multiple trademark registrations for the MICROSOFT mark with the USPTO (Reg. No. 1, 200,236 issued July 6, 1982) and other trademark authorities around the world. The Panel finds this evidence of trademark registration with the USPTO demonstrates Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Morgan Stanley v. Fitz-James, FA 571918 (Nat. Arb. Forum Nov. 29, 2005) (finding from a preponderance of the evidence that the complainant had registered its mark with national trademark authorities, the Panel determined that “such registrations present a prima facie case of Complainant’s rights in the mark for purposes of Policy ¶ 4(a)(i).”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world). 

 

Complainant also owns a trademark registration for the MS mark with the USPTO (Reg. No. 1,303,495 issued November 6, 1984). The Panel again determines that this trademark registration is sufficient to prove Complainant’s rights in the MS mark pursuant to Policy ¶ 4(a)(i). See AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where the complainant had submitted evidence of its registration with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Bloomberg L.P. v. Johnston, FA 760084 (Nat. Arb. Forum Oct. 25, 2006) (finding that the complainant had established rights in the BLOOMBERG mark through registration with the United States Patent and Trademark Office).

 

Complainant alleges that the <microsofttagmaster.com> domain name is confusingly similar to Complainant’s MICROSOFT mark because the disputed domain name merely adds the descriptive or generic terms “tag” and “master” and the generic top-level domain (“gTLD”) “.com” to Complainant’s mark. The Panel finds that adding generic or descriptive terms to Complainant’s mark does not create a disputed domain name that is distinct from Complainant’s mark. See Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); see also Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002) (finding that several domain names incorporating the complainant’s entire EXPERIAN mark and merely adding the term “credit” were confusingly similar to the complainant’s mark). The Panel also concludes that a gTLD does not prevent a finding of confusing similarity. See 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.”).Thus, the Panel finds that Respondent’s <microsofttagmaster.com> domain name is confusing similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i). 

 

Complainant contends that the <mstagmaster.com> domain name is confusingly similar to Complainant’s MS mark because the disputed domain name again combines the MS mark with only the descriptive or generic terms “tag” and “master” and the gTLD “.com.” The Panel finds that the addition of generic or descriptive terms to Complainant’s mark does not dispel confusing similarity. See 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 Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”). The Panel also concludes that the gTLD has no effect on preventing confusing similarity. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).  The Panel thus holds that Respondent’s <mstagmaster.com> domain name is confusingly similar to Complainant’s MS mark according to Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

In order to satisfy the requirements of Policy ¶ 4(a)(ii) and shift the evidentiary burden of proof to Respondent, Complainant must present a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names. As Complainant has satisfied this obligation, Respondent now bears the burden of proving rights and legitimate interests, but it has failed to do so since it has not responded to the Complaint. The Panel accordingly infers that Respondent does not possess rights and legitimate interests in the disputed domain names and accepts Complainant’s allegations as true. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the respondents’ failure to respond can be construed as an admission that they have no legitimate interest in the domain names).  The Panel will nevertheless consider the complete record against the Policy ¶ 4(c) factors, however, in order to reach an independent conclusion on Respondent’s rights and legitimate interests.

 

Complainant asserts that Respondent is not commonly known by the <microsofttagmaster.com> or <mstagmaster.com> domain names. Complainant contends that Respondent is not affiliated with Complainant, is not licensed by Complainant to use its marks, and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Based on this information and the fact that the WHOIS information for the disputed domain names identifies the registrants as “Bret daCosta,” the Panel determines that Respondent is not commonly known by the disputed domain name and lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail"); see also G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii).  However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).

 

Complainant alleges that the disputed domain names resolve to landing pages that feature links to Complainant’s website, a video and information about Complainant’s TAG product, and a link to the <wix.com> domain name where the user can get free services for web design. Complainant asserts that Respondent presumably profits from diverting consumers to this third-party website, which the Panel finds does not constitute a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy              ¶ 4(c)(iii). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (finding that the respondent’s use of a domain name to redirect Internet users to websites unrelated to a complainant’s mark is not a bona fide use under Policy ¶ 4(c)(i)); see also Wells Fargo & Co. v. Nadim, FA 127720 (Nat. Arb. Forum Nov. 29, 2002) (finding that the respondent’s use of the complainant’s WELLS FARGO mark to redirect Internet users to a domain name featuring magazine subscriptions was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).

 

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

 

Registration and Use in Bad Faith

 

Complainant alleges that Respondent’s disputed domain names redirect to a website discussing Complainant’s TAG product and linking to and promoting a third-party not affiliated with Complainant. Complainant contends that the use of Complainant’s marks in the disputed domain names and the references to Complainant and its products on the resolving website are designed to attract Internet users seeking Complainant and create a likelihood of confusion as to the source, affiliation or sponsorship of the disputed domain names. Complainant asserts that Respondent presumably earns revenue from the third-party link advertised on the resolving website. The Panel finds that Respondent’s activities in connection with these disputed domain name thus reveal bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that the respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and the complainant’s LIL PUNK mark by using the contested domain name to maintain a website with various links to third-party websites unrelated to Complainant, and that such use for the respondent’s own commercial gain demonstrated bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). 

 

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

 

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 <microsofttagmaster.com> and <mstagmaster.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Paul A. Dorf (Ret.), Panelist

Dated:  May 10, 2011

 

 

 

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