Microsoft Corporation v. Yaser Taheri c/o Nikrayan Parsian
Claim Number: FA1105001391119
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington D.C., USA. Respondent is Yaser Taheri c/o Nikrayan Parsian (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <microsoftskype.us> and <microskype.us>, registered with Tucows 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.
Judge Ralph Yachnin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 27, 2011; the National Arbitration Forum received a hard copy of the Complaint on May 31, 2011.
On May 31, 2011, Tucows Inc. confirmed by e-mail to the Forum that the <microsoftskype.us> and <microskype.us> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with the U. S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On June 3, 2011, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of May 28, 2002 by which Respondent could file a Response to the Complaint, was transmitted to Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute Resolution Policy (the “Rules”).
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 27, 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 Forum has discharged its responsibility under Paragraph 2(a) of the Rules. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the Policy, the Rules, the 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 <microsoftskype.us> and <microskype.us> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftskype.us> and <microskype.us> domain names.
3. Respondent registered and used the <microsoftskype.us> and <microskype.us> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, owns the MICROSOFT mark. Complainant uses its mark in connection with the manufacture, marketing, and sale of computer software and related products and services. Complainant holds trademark registrations for the MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 issued July 6, 1982).
Respondent, Yaser Taheri c/o Nikrayan Parsian, registered the <microsoftskype.us> and <microskype.us> domain names on May 11, 2011. The disputed domain names are used to direct Internet users to websites offering to sell the disputed domain names and display examples of sites associated with similar domain names and search results for the domain names, including sites featuring news of Complainant’s acquisition of Skype.
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 or is being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent as applicable in rendering its decision.
Complainant contends that it has established rights in the MICROSOFT mark. Registration with federal trademark authority has consistently been found to establish rights in a mark. See 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 UDRP ¶ 4(a)(i)); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority). The registration need not be with a federal trademark authority in the country which the 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); 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). Complainant has provided evidence of registration of the MICROSOFT mark with the USPTO (e.g., Reg. No. 1,200,236 issued July 6, 1982). The Panel finds that Complainant has established rights in the MICROSOFT mark under Policy ¶ 4(a)(i) through registration with a federal trademark authority.
Complainant contends that the disputed domain names are confusingly similar to its MICROSOFT mark. The addition of the country-code top-level domain (“ccTLD”) does not distinguish a domain name from a mark. See Circuit City Stores, Inc. v. Leeds, FA 139662 (Nat. Arb. Forum Feb. 2, 2003) (finding the <circuitcitystores.us> domain name to be confusingly similar to the CIRCUIT CITY mark because the presence of a top-level domain like “.us” is “inconsequential to a Policy ¶ 4(a)(i) analysis”); see also Am. Express Co. v. McWIlliam, FA 268423 (Nat. Arb. Forum July 6, 2004) (holding that the “.us” ccTLD does not negate confusing similarity under Policy ¶ 4(a)(i)). Likewise, the addition of the SKYPE mark does nothing to distinguish the domain names from the MICROSOFT mark. 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 G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”). Finally, the abbreviation of the MICROSOFT mark to “micro” fails to differentiate the <microskype.us> domain name from the MICROSOFT mark. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under UDRP ¶ 4(a)(i)). As the only changes made to the MICROSOFT mark in the disputed domain names were the addition of a ccTLD and the SKYPE mark, as well as an abbreviation of the mark in one of the domain names, fails to differentiate the domain names from the MICROSOFT mark. The Panel finds that the <microsoftskype.us> and <microskype.us> domain names are confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been met.
Complainant has made a prima facie case in favor of its assertion that Respondent lacks rights and legitimate interests in the disputed domain names. Once this is done, the burden shifts to the respondent to prove that it does have rights or legitimate interests in the disputed domain name. 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 [UDRP]”); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names”). The Panel will review the record to determine if Respondent has rights or legitimate interests in the disputed domain names despite the Panel’s allowed presumption that Respondent has none as a result of Respondent’s failure to respond to the Complaint. 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 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”).
There is no evidence in the record to conclude that Respondent owns any service marks or trademarks that reflect the <microsoftskype.us> and <microskype.us> domain names. Therefore, the Panel finds that Respondent does not have rights or legitimate interests pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002)(finding that there was no evidence that the respondent was the owner or beneficiary of a mark that is identical to the <persiankitty.us> domain name); see also Pepsico, Inc. v. Becky, FA 117014 (Nat. Arb. Forum Sept. 3, 2002)(holding that because the respondent did not own any trademarks or service marks reflecting the <pepsicola.us> domain name, it had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Complainant asserts that Respondent is not commonly known by the disputed domain names. Previous panels have found that the WHOIS information for a domain name coupled with other information on the record is determinative of whether a respondent is commonly known by a disputed domain name. See 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); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name”). The WHOIS information for the disputed domain names does not imply that Respondent is commonly known by both or either of the disputed domain names. Additionally, Complainant never permitted Respondent to use the MICROSOFT mark in any way, and Respondent is in no way affiliated with Complainant. Therefore, the Panel finds that Respondent is not commonly known by either of the disputed domain names under Policy ¶ 4(c)(iii).
The disputed domain names resolve to associated websites offering to sell the disputed domain names. Panels have found that offering to sell a domain name demonstrates a lack of rights and legitimate interests because it is neither a bona fide offering of goods or services under Policy ¶ 4(c)(ii) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iv). See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name). As the sole use of the disputed domain names was to promote the sale of them, the Panel finds that Respondent’s use of the disputed domain names violation Policy ¶¶ 4(c)(ii) and 4(c)(iv) as being neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that Respondent’s offers to sell the disputed domain name demonstrate bad faith use of the domain names on the part of Respondent. Panels have found that a respondent’s willingness to sell a domain name and offers to sell to a complainant often are evidence of bad faith. See Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under UDRP ¶ 4(b)(i)); 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 [UDRP] ¶ 4(b)(i)”). In addition to using the disputed domains to offer to sell said domain names for a minimum of $200,000, Respondent contacted Complainant with an offer to sell the domain names for a minimum of $50,000 per domain name—far exceeding Respondent’s out-of-pocket costs. The Panel finds that Respondent’s use of the disputed domains was in bad faith under Policy ¶ 4(b)(i) because it was done with the sole intent to sell the disputed domain names, likely to Complainant.
Complainant alleges that Respondent registration of the disputed domain names was an act of opportunistic bad faith. Previous panels have found that the registration of a domain name directly following the announcement of an event which allows a respondent to capitalize off of the timing demonstrates bad faith. See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this”). Complainant announced on May 10, 2011 its acquisition of Skype. The following day Respondent registered the disputed domain names. The Panel finds that Respondent’s registration of the disputed domain names was done in order to take advantage of the timing directly following Complainant’s acquisition announcement. The Panel finds this to demonstrate Respondent’s Policy ¶ 4(a)(iii) bad faith registration of the disputed domain names.
The Panel finds that Policy ¶ 4(a)(iii) has been fulfilled.
Accordingly, it is Ordered that the <microsoftskype.us> and <microskype.us> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Ralph Yachnin, Panelist
Justice, Supreme Court, NY (Ret.)
Dated: June 27, 2011
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