national arbitration forum

 

DECISION

 

Microsoft Corporation v. Alvin Posey

Claim Number: FA1201001427458

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Alvin Posey (“Respondent”), California, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <microsoft-csolutions.com> and <microsoft-style-apps.com> registered with Network Solutions, LLC.

 

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on January 31, 2012; the National Arbitration Forum received payment on January 31, 2012.

 

On February 1, 2012, Network Solutions, LLC. confirmed by e-mail to the National Arbitration Forum that the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names are registered with Network Solutions, LLC. and that Respondent is the current registrant of the names.  Network Solutions, LLC. has verified that Respondent is bound by the Network Solutions, 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 February 1, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 21, 2012 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@microsoft-csolutions.com and postmaster@microsoft-style-apps.com.  Also on February 1, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 February 28, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.

 

2.    Respondent does not have any rights or legitimate interests in the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names.

 

3.    Respondent registered and used the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names are in bad faith.

 

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

 

FINDINGS

Complainant, Microsoft Corporation, uses its MICROSOFT mark in connection with software and related goods and services.  Complainant began using its MICROSOFT mark in 1975.  Complainant owns numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MICROSOFT mark (e.g., Reg. No. 1,200,236 registered July 6, 1982).

 

Respondent, Alvin Posey, registered the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names no earlier than October 28, 2011.  Respondent’s <microsoft-csolutions.com> domain name resolves to a website that tells Internet users, in Spanish, to click on a link to the <microsoft-style-apps.com> domain name.  The <microsoft-style-apps.com> domain name resolves to a website, also in Spanish, that features Complainant’s mark and images and offers a download of what purports to be a pre-beta version of Complainant’s Windows 8 software but is not.

 

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 offers computer software and related products and services under its MICROSOFT mark, and Complainant first began using its MICROSOFT mark in 1975.  Complainant holds multiple trademark registrations with the USPTO for its MICROSOFT mark (e.g., Reg. No. 1,200,236 registered July 6, 1982).  Based on this information, the Panel concludes that Complainant holds rights in its MICROSOFT mark pursuant to Policy ¶ 4(a)(i).  See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).

 

Respondent’s <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names feature Complainant’s entire MICROSOFT mark.  The disputed domain names also contain hyphens, generic terms, such as “solutions,” “style,” and/or “apps,” the letter “c,” and the generic top-level domain (“gTLD”) “.com.”  The Panel finds that these additions fail to adequately distinguish the disputed domain names from Complainant’s mark.  See Teradyne, Inc. v. 4Tel Tech., D2000-0026 (WIPO May 9, 2000) (finding that the “addition of a hyphen to the registered mark is an insubstantial change. Both the mark and the domain name would be pronounced in the identical fashion, by eliminating the hyphen"); 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); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (“The mere addition of a single letter to the complainant’s mark does not remove the respondent’s domain names from the realm of confusing similarity in relation to the complainant’s mark pursuant to Policy ¶ 4(a)(i).”); 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.”).  Thus, the Panel holds that Respondent’s <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names are confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).

 

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

 

Rights or Legitimate Interests

 

Complainant alleges that Respondent does not have any rights or legitimate interests in the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names.  The burden shifts to Respondent to prove it does have rights or legitimate interests when Complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii).  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.”).  The Panel finds Complainant made a sufficient prima facie case.  Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names.  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).  However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).  

 

Respondent did not respond to this case and, therefore, did not allege it is commonly known by the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names.  The WHOIS information lists “Alvin Posey” as the registrant of the disputed domain names, which the Panel determines is not similar to either of the disputed domain names.  Complainant did not license Respondent to use Complainant’s MICROSOFT mark, and Respondent is not an authorized vendor, supplier, or distributor of Complainant’s software products and services.  Accordingly, the Panel finds that Respondent is not commonly known by the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names for the purposes of Policy ¶ 4(c)(ii).  See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); 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).

 

Respondent’s <microsoft-csolutions.com> domain name resolves to a website that states “Click Aqui Para Ser enviado a : [<microsft-style-apps.com>],” which roughly translates as an instruction to Internet users to click on the hyperlink that resolves to the website located at the <microsoft-style-apps.com> domain name.  Respondent’s <microsoft-style-apps.com> domain name resolves to a website that contains Complainant’s MICROSOFT mark, images related to Complainant, and a purported download of a pre-beta version of Complainant’s Windows 8 software, which is not the actual download.  Based on Respondent’s use of the confusingly similar disputed domain names for this purpose, the Panel concludes that Respondent makes neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names.  See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also Pfizer Inc. v. Internet Gambiano Prods LLC., D2002-0325 (WIPO June 20, 2002) (finding that because the VIAGRA mark was “clearly well-known” at the time of the respondent’s registration of the domain name, the panel could infer that the respondent acted for the purpose of “capitalizing on the confusion created by the domain name’s similarity to the [m]ark”).

 

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

 

Registration and Use in Bad Faith

 

The Panel finds that the enumerated Policy ¶ 4(b) factors are not exhaustive, and thus the totality of the circumstances may be considered when analyzing bad faith registration and use under Policy ¶ 4(a)(iii).  See Digi Int’l Inc. v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (determining that Policy ¶ 4(b) sets forth certain circumstances, without limitation, that shall be evidence of registration and use of a domain name in bad faith); see also Cellular One Group v. Brien, D2000-0028 (WIPO Mar. 10, 2000) (finding that the criteria specified in 4(b) of the Policy is not an exhaustive list of bad faith evidence).

 

As noted above, Respondent’s <microsoft-csolutions.com> domain name resolves to a website that instructs Internet users in Spanish to click on the hyperlink to the website located at Respondent’s <microsoft-style-apps.com> domain name.  Respondent’s <microsoft-style-apps.com> domain names resolves to a Spanish language website that features extensive use of Complainant’s MICROSOFT, XBOX, XBOX LIVE, SKYDRIVE, and related marks and images.  The resolving website also purports to offer a download of a pre-beta version of Complainant’s Windows 8 software.  The download does not actually offer a pre-beta version of Complainant’s Windows 8 software.  Based on Respondent’s registration and use of the <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names for such a purpose, the Panel concludes that Respondent is guilty of Policy ¶ 4(a)(iii) bad faith registration and use.  See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding bad faith where the respondent failed to provide any evidence to controvert the complainant's allegation that it registered the domain name in bad faith and where any future use of the domain name would do nothing but cause confusion with the complainant’s mark, except in a few limited noncommercial or fair use situations, which were not present); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name ‘karlalbrecht.com’ was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith.”).

 

Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the MICROSOFT mark. Complainant argues that Respondent's featuring of Complainant’s MIRCROSOFT mark and Complainant’s related marks at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

The Panel finds Policy ¶ 4(a)(iii) is 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 <microsoft-csolutions.com> and <microsoft-style-apps.com> domain names be TRANSFERRED from Respondent to Complainant.

 

 

John J. Upchurch, Panelist

Dated:  March 12, 2012

 

 

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