Microsoft Corporation v. Eric Cusimano
Claim Number: FA1202001428805
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Eric Cusimano (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftquote.com>, <microsoftquote.net>, <microsoftshare.net>, <microsoftshareprice.com>, <microsoftshareprice.net>, <microsoftshares.net>, <microsoftstockprice.net>, and <microsoftstockquote.net>, registered with Godaddy.com, 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.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 9, 2012; the National Arbitration Forum received payment on February 9, 2012.
On February 9, 2012, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftquote.com>, <microsoftquote.net>, <microsoftshare.net>, <microsoftshareprice.com>, <microsoftshareprice.net>, <microsoftshares.net>, <microsoftstockprice.net>, and <microsoftstockquote.net> 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 February 10, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 1, 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@microsoftquote.com, postmaster@microsoftquote.net, postmaster@microsoftshare.net, postmaster@microsoftshareprice.com, postmaster@microsoftshareprice.net, postmaster@microsoftshares.net, postmaster@microsoftstockprice.net, and postmaster@microsoftstockquote.net. Also on February 10, 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 March 9, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsoftquote.com>, <microsoftquote.net>, <microsoftshare.net>, <microsoftshareprice.com>, <microsoftshareprice.net>, <microsoftshares.net>, <microsoftstockprice.net>, and <microsoftstockquote.net> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftquote.com>, <microsoftquote.net>, <microsoftshare.net>, <microsoftshareprice.com>, <microsoftshareprice.net>, <microsoftshares.net>, <microsoftstockprice.net>, and <microsoftstockquote.net> domain names.
3. Respondent registered and used the <microsoftquote.com>, <microsoftquote.net>, <microsoftshare.net>, <microsoftshareprice.com>, <microsoftshareprice.net>, <microsoftshares.net>, <microsoftstockprice.net>, and <microsoftstockquote.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a large global provider of software, hardware, mobile phones, and computer products and services. Complainant owns a large portfolio of federal trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the MICROSOFT mark (e.g., Reg. No. 1,200,236 registered July 6, 1982).
Respondent, Eric Cusimano, registered the disputed domain names on November 17, 2011. The disputed domain names resolve to parked pay-per-click websites offering links to third-party businesses unrelated to Complainant.
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.
Complainant contends that it has established its rights in the MICROSOFT mark by registering it with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982). Complainant has provided sufficient evidence in the form of registration certificates to verify that the mark is duly registered and that it is the owner of record. Based upon this evidence, the Panel concludes that Complainant has established its rights in the MICROSOFT mark under Policy ¶ 4(a)(i). 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 Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Complainant also contends that Respondent’s <microsoftquote.com>, <microsoftquote.net>, <microsoftshare.net>, <microsoftshareprice.com>, <microsoftshareprice.net>, <microsoftshares.net>, <microsoftstockprice.net>, and <microsoftstockquote.net> domain names are confusingly similar to its MICROSOFT mark. Each domain name includes the entire mark, while adding either the generic top-level domain (“gTLD”) “.com” or “.net.” Separately, the domains includes the terms “quote,” “share,” “price,” “stock,” and/or “shares.” The Panel finds that none of the changes made differentiate the disputed domain names from Complainant’s MICROSOFT mark in such a manner that a finding of confusing similarity can be mitigated under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also AOL LLC v. iTech Ent, LLC, FA 726227 (Nat. Arb. Forum July 21, 2006) (finding that the <theotheraol.com> and <theotheraol.net> domain names were confusingly similar to the AOL mark, as the addition of common terms to a mark does not distinguish the domain names from the mark).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant has shifted the burden of proof under this provision to Respondent by making what the Panel finds is a prima facie case indicating that Respondent lacks rights or legitimate interests in the disputed domains. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). However, Respondent has failed to file a response in this matter, which allows the Panel to assume it lacks rights or legitimate interests in the disputed domain name. See 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.”). Prior to making any such assumptions, the Panel will examine the entire record and examine the evidence fully to determine Respondent’s compliance with this provision.
Complainant asserts that Respondent is not commonly known by the disputed domain names. Respondent has failed to supply any evidence that may have contradicted Complainant’s assertion. Also, the WHOIS information identifies the registrant of the disputed domain names as “Eric Cusimano.” When viewed in tandem, those two factors lead the Panel to conclude that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name); see also 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).
Complainant also asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain names. All of the domains in this dispute resolve to parked websites offering links to unrelated third parties. The links provided appear to be primarily related to investment activity rather than any technology or computer products. It is likely that Respondent generates revenue from the domains by collecting a click-through fee for each Internet user diverted through the links offered. Thus, the Panel finds that Respondent is not engaging in a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names 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 Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
The Panel finds that Policy ¶ 4(a)(ii) has been established.
Complainant contends that Respondent registered the disputed domain names so it could commercially gain from the confusion created by including Complainant’s mark in the domains. Internet users may utilize Respondent’s domain names based upon the inclusion of the mark in the domain. After arriving at Respondent’s websites, they may then click through one of links to a third-party business’s website. Respondent presumably generates revenue by charging a fee for each Internet user diverted through the linked sites. The Panel finds that Respondent’s use of the disputed domain names demonstrates that its intent was to confuse Internet users and then capitalize commercially on that confusion. As a result, the Panel concludes that Respondent registered and is using the disputed domain names in bad faith under 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 T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)).
Complainant also contends that, in light of the fame and notoriety of Complainant's MICROSOFT mark, it is inconceivable that Respondent could have registered the disputed domain names without actual and/or constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, the Panel does agree with Complainant that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name)
The Panel finds that Policy ¶ 4(a)(iii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftquote.com>, <microsoftquote.net>, <microsoftshare.net>, <microsoftshareprice.com>, <microsoftshareprice.net>, <microsoftshares.net>, <microsoftstockprice.net>, and <microsoftstockquote.net> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: March 23, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page