Microsoft Corporation v. chen wenjie / Private Whois Service
Claim Number: FA1104001384976
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington, D.C., USA. Respondent is chen wenjie / Private Whois Service (“Respondent”), Bahamas.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <downloadfreemsn.com>, <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <homaiil.com>, <hornail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, <hoymil.com>, <micerosoft.com>, <microsoftentourage.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, <microsoftsecurityessentialsdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, <microsoftword2010.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, <msntest.com>, <openofficeword.com>, <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowslivesignin.com>, <windowsmediaplayerclassic.com>, <windowsphone6.com>, <windowspone.com>, <windwosphone.com>, and <xbox360microsoft.com> registered with Dynadot, Llc.
The domain name at issue is <installwindows7.com>, registered with Go Montenegro Domains, Inc.
The domain name at issue is <microsoftessential.com>, registered with Internet.Bs Corp.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 20, 2011; the National Arbitration Forum received payment on April 21, 2011.
On April 21, 2011, Go Montenegro Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <installwindows7.com> domain name is registered with Go Montenegro Domains, Inc., and that Respondent is the current registrant of the name. Respondent is bound by the Go Montenegro Domains, 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 24, 2011, Dynadot, Llc confirmed by e-mail to the National Arbitration Forum that the <downloadfreemsn.com>, <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <homaiil.com>, <hornail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, <hoymil.com>, <micerosoft.com>, <microsoftentourage.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, <microsoftsecurityessentialsdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, <microsoftword2010.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, <msntest.com>, <openofficeword.com>, <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowslivesignin.com>, <windowsmediaplayerclassic.com>, <windowsphone6.com>, <windowspone.com>, <windwosphone.com>, and <xbox360microsoft.com> domain names were registered with Dynadot, Llc and that Respondent is the current registrant of the names. Dynadot, Llc has verified that Respondent is bound by the Dynadot, Llc 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 25, 2011, Internet.Bs Corp. confirmed by e-mail to the National Arbitration Forum that the <microsoftessential.com> domain name is registered with Internet.Bs Corp. and that Respondent is the current registrant of the name. Internet.Bs Corp., has verified that Respondent is bound by the Internet.Bs Corp. 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 May 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 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@downloadfreemsn.com, postmaster@freedownloadmicrosoftword.com, postmaster@genuinemicrosoftsoftware.com, postmaster@homaiil.com, postmaster@hornail.com, postmaster@hotmaifl.com, postmaster@hotmailnewaccount.com, postmaster@hoymai.com, postmaster@hoymil.com, postmaster@micerosoft.com, postmaster@microsoftentourage.com, postmaster@microsoftie8.com, postmaster@microsoftlivemessenger.com, postmaster@microsoftmath.com, postmaster@microsoftofficefreetrial.com, postmaster@microsoftofficeupdate.com, postmaster@microsoftsecurityessentialsdownload.com, postmaster@microsoftsidewinder.com, postmaster@microsofttrainsimulator.com, postmaster@microsoftword2010.com, postmaster@msnargentina.com, postmaster@msndirections.com, postmaster@msnfrance.com, postmaster@msngamesonline.com, postmaster@msntest.com, postmaster@openofficeword.com, postmaster@window7phone.com, postmaster@windows7drivers.com, postmaster@windowsdvdplayer.com, postmaster@windowslivesignin.com, postmaster@windowsmediaplayerclassic.com, postmaster@windowsphone6.com, postmaster@windowspone.com, postmaster@windwosphone.com, postmaster@xbox360microsoft.com, postmaster@installwindows7.com, and postmaster@microsoftessential.com. Also on May 3, 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 26, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <micerosoft.com>, <microsoftentourage.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftsecurityessentialsdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, <microsoftword2010.com>, <xbox360microsoft.com>, and <microsoftessential.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.
Respondent’s <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, and <openofficeword.com>
domain names are confusingly similar to Complainant’s MICROSOFT OFFICE mark.
Respondent’s <downloadfreemsn.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, and <msntest.com> domain names are confusingly similar to Complainant’s MSN mark.
Respondent’s <homaiil.com>, <hornail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, and <hoymil.com> domain names are confusingly similar to Complainant’s HOTMAIL mark.
Respondent’s <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowslivesignin.com>, <windowsmediaplayerclassic.com>, <windowsphone6.com>, <windowspone.com>, <windwosphone.com>, and <installwindows7.com> domain names are confusingly similar to Complainant’s WINDOWS mark.
Respondent’s <xbox360microsoft.com> domain name is confusingly similar to Complainant’s XBOX mark.
2. Respondent does not have any rights or legitimate interests in the <downloadfreemsn.com>, <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <homaiil.com>, <hornail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, <hoymil.com>, <micerosoft.com>, <microsoftentourage.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, <microsoftsecurityessentialsdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, <microsoftword2010.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, <msntest.com>, <openofficeword.com>, <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowslivesignin.com>, <windowsmediaplayerclassic.com>, <windowsphone6.com>, <windowspone.com>, <windwosphone.com>, <xbox360microsoft.com>, <installwindows7.com>, <microsoftessential.com> domain names.
3. Respondent registered and used the <downloadfreemsn.com>, <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <homaiil.com>, <hornail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, <hoymil.com>, <micerosoft.com>, <microsoftentourage.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, <microsoftsecurityessentialsdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, <microsoftword2010.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, <msntest.com>, <openofficeword.com>, <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowslivesignin.com>, <windowsmediaplayerclassic.com>, <windowsphone6.com>, <windowspone.com>, <windwosphone.com>, <xbox360microsoft.com>, <installwindows7.com>, <microsoftessential.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured and sold computer software and related products and services since 1975. Complainant owns many trademarks used in connection with its computer and software goods and services, including MICROSOFT, MICROSOFT OFFICE, WINDOWS, MSN, XBOX, and HOTMAIL. Complainant holds numerous trademark registrations for the following marks with the United States Patent and Trademark Office (“USPTO”): MICROSOFT (e.g., Reg. No. 1,200,236 issued July 6, 1982), MICROSOFT OFFICE (Reg. No. 3,625,391 issued May 26, 2009), WINDOWS (e.g., Reg. No. 1,872,264 issued Jan. 10, 1995), MSN (e.g., Reg. No. 2,201,105 issued Nov. 3, 1998), XBOX (e.g., Reg. No. 2,646,465 issued Nov. 5, 2002), and HOTMAIL (e.g., Reg. No. 2,165,601 issued June 16, 1998).
Respondent registered the <windowsphone.com> disputed domain name on March 6, 2004. The remaining disputed domain names were not registered prior to December 1, 2010. Respondent uses the disputed domain names to resolve to directory websites with third-party links and advertisements for Complainant’s products and services, as well as links to Complainant’s competitors and commercial sites purporting to sell Complainant’s 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.
The Panel finds that Complainant has established rights in its MICROSOFT, MICROSOFT OFFICE, WINDOWS, MSN, XBOX, and HOTMAIL marks, under Policy ¶ 4(a)(i), through registration with the USPTO. 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); 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.”). It is not necessary for Complainant to register its marks within the country where Respondent resides or operates. 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); see also Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <microsoftentourage.com>, <micerosoft.com>, <microsoftessential.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftsecurityessentialdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, and <microsoftword2010.com> domain names are confusingly similar to Complainant’s MICROSOFT mark. The disputed domain names incorporate the entire mark and differ only by adding one or two letters, adding numbers, adding the generic or descriptive terms “free download,” “genuine software,” “entourage,” “essential,” “math,” “sidewinder,” “live messenger,” “security essential download,” “train simulator,” and “word,” and by adding the generic top-level domain (“gTLD”) “.com.” The Panel finds that additional letters or numbers do not adequately distinguish the disputed domain names from Complainant’s mark. See Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark). The Panel also finds that the addition of generic or descriptive words in the disputed domain names does not remove the 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)). Finally, the Panel finds that the addition of a gTLD to the mark does not avoid a finding of 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 concludes that the <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <microsoftentourage.com>, <micerosoft.com>, <microsoftessential.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftsecurityessentialdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, and <microsoftword2010.com> domain names are confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).
Respondent’s <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, and <openofficeword.com> domain names are confusingly similar to Complainant’s MICROSOFT OFFICE mark. The domain names incorporate the mark in its entirety and change it only by deleting the space between the words of the mark, by adding the generic words “open,” “free trial,” “update,” and “train simulator,” by adding the descriptive term “word,” deleting a word of the mark, and by attaching the gTLD “.com.” The Panel decides that the deletion of a space between words of a mark and addition of a gTLD do not sufficiently distinguish the disputed domain from Complainant’s mark. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i). The Panel also finds that attachment of a descriptive word, which relates to Complainant’s word processing software, or a generic term, does not adequately distinguish the disputed domain name from Complainant’s mark. See 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.”); see also 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). The deletion of a word of the mark also does not significantly differentiate the disputed domain name from Complainant’s mark. See WestJet Air Ctr., Inc. v. W. Jets LLC, FA 96882 (Nat. Arb. Forum Apr. 20, 2001) (finding that the <westjets.com> domain name is confusingly similar to the complainant’s mark, where the complainant holds the WEST JET AIR CENTER mark). The Panel concludes that Respondent’s <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, and <openofficeword.com> domain names are confusingly similar to Complainant’s MICROSOFT OFFICE mark under Policy ¶ 4(a)(i).
Respondent’s <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowsmediaplayerclasses.com>, <windowslivesignin.com>, <windowphone6.com>, <windowspone.com>, <windwosphone.com>, and <installwindows7.com> domain names are confusingly similar to Complainant’s WINDOWS mark. The disputed domain name utilizes the entire mark and differs only by adding the number “7” or “6,” adding the descriptive words “live sign in” and “media player classic,” adding the generic words “phone,” “drivers,” and “install,” misspelling the mark by a single letter, and adding the gTLD “.com.” The Panel finds that the changing of the mark by a single letter or number does not help to avoid a finding of confusing similarity. 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 Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). Adding generic words or descriptive words, which describe Complainant’s business, does not adequately distinguish the disputed domain names from Complainant’s mark. 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)). Finally, the affixation of a gTLD is not a factor in a Policy analysis. 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 finds that Respondent’s <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowsmediaplayerclasses.com>, <windowslivesignin.com>, <windowphone6.com>, <windowspone.com>, <windwosphone.com>, and <installwindows7.com> domain names are confusingly similar to Complainant’s WINDOWS mark under Policy ¶ 4(a)(i).
Respondent’s <downloadfreemsn.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, and <msntest.com> domain names are confusingly similar to Complainant’s MSN mark. The disputed domain names use the entire MSN mark and change it only by adding the generic words “download free,” “directions,” “games online,” and “test,” by adding the geographic terms “france” and “argentina,” and attaching the gTLD “.com.” The Panel finds that using geographic terms does not adequately differentiate the disputed domain name from Complainant’s mark. See Gannett Co. v. Chan, D2004-0117 (WIPO Apr. 8, 2004) (“…it is well established that a domain name consisting of a well-known mark, combined with a geographically descriptive term or phrase, is confusingly similar to the mark.”). Addition of a generic word also does not sufficiently distinguish the disputed domain names. 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). The affixation of a gTLD does not play a role in a Policy ¶ 4(a)(i) analysis. 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.”). The Panel concludes that Respondent’s <downloadfreemsn.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, and <msntest.com> domain names are confusingly similar to Complainant’s MSN mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <xbox360miscrosoft.com> domain name is confusingly similar to its XBOX and MICROSOFT mark. The disputed domain name combines both marks in their entirety and merely adds the number “360,” which relates to Complainant’s XBOX product, and adds the gTLD “.com.” The Panel finds that the addition of a number, especially one that relates to Complainant’s business does not serve to avoid a finding of confusing similarity. See Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark). Also, combining marks of Complainant and adding a gTLD does not adequately distinguish the disputed domain name. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); 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 that Respondent’s <xbox360microsoft.com> domain name is confusingly similar to Complainant’s XBOX mark under Policy ¶ 4(a)(i).
Lastly, Respondent’s <homaiil.com>, <homail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, and <hoymil.com> domain names are confusingly similar to Complainant’s HOTMAIL mark. The disputed domain names incorporate the mark entirely and change the mark by deleting a letter, adding a letter, or misspelling a letter, adding the generic words “new account,” and adding the gTLD “.com.” The Panel finds that changing a mark by a single letter whether through addition, deletion, or misspelling, does not remove the disputed domain name from the realm of confusing similarity. 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). The addition of generic words to a mark also does not help to avoid a finding of confusing similarity. See Warner Bros. Entm’t Inc. v. Rana, FA 304696 (Nat. Arb. Forum Sept. 21, 2004) (finding that the addition of the generic term “collection” to Complainant’s HARRY POTTER mark failed to distinguish the domain name from the mark). Again, the affixation of a gTLD does not serve to adequately distinguish the disputed domain name. 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). Therefore, the Panel concludes that Respondent’s <homaiil.com>, <homail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, and <hoymil.com> domain names are confusingly similar to Complainant’s HOTMAIL mark, according to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel found 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.” Here, Complainant has made a prima facie showing in support of its claims. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent lacks rights and legitimate interests under Policy ¶ 4(a)(ii). See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name.”). However, the Panel chooses to examine the record to determine whether Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c).
Complainant claims that Respondent is not commonly known by the disputed domain names. The WHOIS information identifies Respondent as “chen wenjie / Private Whois Service,” which is not similar to the disputed domain name. Furthermore, Complainant claims that it has not licensed or authorized Respondent to use its marks within the disputed domain names. The Panel concludes that Respondent is not commonly known by the disputed domain names according to 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 Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s disputed domain names resolve to websites displaying third-party links to commercial sites directly competing with Complainant’s computer and software business. The commercial websites purportedly sell Complainant’s goods and services or similar products. Respondent likely receives click-through fees from these links. The Panel finds that Respondent’s use of the disputed domain names to redirect Internet users to websites competing with Complainant’s business is 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 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 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)).
A number of Respondent’s disputed domain names include Complainant’s HOTMAIL and MICROSOFT marks and only add or delete a letter, or misspell a letter to make a typographical error, including <homaiil.com>, <homail.com>, <hotmaifl.com>, <hoymai.com>, <hoymil.com>, and <micerosoft.com>. Complainant asserts that the typographical errors capitalize on Internet users’ typing mistakes by redirecting them to Respondent’s websites. The Panel concludes that this is additional evidence that Respondent does not have rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). See Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (concluding that by registering the <microssoft.com> domain name, the respondent had “engaged in typosquatting, which provides additional evidence that [the] respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).”); see also Nat’l Ass’n of Prof’l Baseball Leagues, Inc. v. Zuccarini, D2002-1011 (WIPO Jan. 21, 2003) (“Typosquatting … as a means of redirecting consumers against their will to another site, does not qualify as a bona fide offering of goods or services, whatever may be the goods or services offered at that site.”).
The Panel finds that Policy ¶ 4(a)(ii) has been met.
Complainant argues that Respondent’s registration and use of 37 different domain names that violate Complainant’s rights in its MICROSOFT, MICROSOFT OFFICE, WINDOWS, MSN, XBOX, and HOTMAIL marks constitutes a pattern of bad faith registration. The Panel finds that Respondent’s registration and use of multiple infringing domain names is evidence of bad faith under Policy ¶ 4(b)(ii). See Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000) (finding that the respondent violated Policy ¶ 4(b)(ii) by registering multiple domain names that infringe upon others’ famous and registered trademarks); see also Caterpillar Inc. v. Miyar, FA 95623 (Nat. Arb. Forum Dec. 14, 2000) (finding that registering multiple domain names in a short time frame indicates an intention to prevent the mark holder from using its mark and provides evidence of a pattern of conduct).
Complainant also argues that Respondent’s use of the disputed domain names disrupts its business. Internet users intending to purchase Complainant’s computer and software goods and services may find Respondent’s websites and purchase from a competing third-party instead. The Panel finds that Respondent’s registration and use of the confusingly similar disputed domain names does disrupt Complainant’s business, which constitutes bad faith under Policy ¶ 4(b)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business); see also 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)).
The Panel infers that Respondent generates click-through fees from the previously mentioned third-party links. Respondent uses the disputed domain names to operate directory websites advertising products and services offered by Complainant and Complainant’s competitors. The use of Complainant’s marks within the disputed domain names creates a likelihood of confusion as to Complainant’s sponsorship of, or affiliation with, the resolving websites and featured links. Respondent attempts to capitalize on this confusion through the receipt of click-through fees. The Panel finds that such registration and use is evidence of bad faith under Policy ¶ 4(b)(iv). See 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); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Some of Respondent’s disputed domain names only add or delete a letter, or misspell a letter to make a typographical error, including <homaiil.com>, <homail.com>, <hotmaifl.com>, <hoymai.com>, <hoymil.com>, and <micerosoft.com>. Complainant asserts that the typographical error takes advantage of Internet users’ typing mistakes by redirecting them to Respondent’s websites. The Panel concludes that this is typosquatting, further evidence that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent engaged in typosquatting, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii)); see also Microsoft Corp. v. Domain Registration Philippines, FA 877979 (Nat. Arb. Forum Feb. 20, 2007) (finding bad faith registration and use of the <microssoft.com> domain name as it merely misspelled the complainant’s MICROSOFT mark).
The Panel finds that Policy ¶ 4(a)(iii) has been met.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <downloadfreemsn.com>, <freedownloadmicrosoftword.com>, <genuinemicrosoftsoftware.com>, <homaiil.com>, <hornail.com>, <hotmaifl.com>, <hotmailnewaccount.com>, <hoymai.com>, <hoymil.com>, <micerosoft.com>, <microsoftentourage.com>, <microsoftie8.com>, <microsoftlivemessenger.com>, <microsoftmath.com>, <microsoftofficefreetrial.com>, <microsoftofficeupdate.com>, <microsoftsecurityessentialsdownload.com>, <microsoftsidewinder.com>, <microsofttrainsimulator.com>, <microsoftword2010.com>, <microsoftessential.com>, <msnargentina.com>, <msndirections.com>, <msnfrance.com>, <msngamesonline.com>, <msntest.com>, <openofficeword.com>, <window7phone.com>, <windows7drivers.com>, <windowsdvdplayer.com>, <windowslivesignin.com>, <windowsmediaplayerclassic.com>, <windowsphone6.com>, <windowspone.com>, <windwosphone.com>, <installwindows7.com> and <xbox360microsoft.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: June 2, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page