Microsoft Corporation v. N/A / Bellamy Charles
Claim Number: FA1206001448349
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is N/A / Bellamy Charles (“Respondent”), New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftsafetyscanner.com>, registered with eNom, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 12, 2012; the National Arbitration Forum received payment on June 12, 2012.
On June 14, 2012, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftsafetyscanner.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 June 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 5, 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@microsoftsafetyscanner.com. Also on June 14, 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 July 11, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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
a) Complainant has rights in the MICROSOFT mark, which it uses in connection with computer software and related goods and services, such as Microsoft Safety Scanner;
b) Complainant owns trademark registrations for the MICROSOFT mark (e.g., Reg. No. 1,256,083 registered November 1, 1983) with the United States Patent and Trademark Office (“USPTO”);
c) Complainant owns trademark registrations for the MICROSOFT mark (e.g., Reg. No. 1,121,920 registered October 8, 1979) with the United Kingdom Intellectual Property Office (“UKIPO”);
d) The <microsoftsafetyscanner.com> domain name is confusingly similar to the MICROSOFT mark;
a. Respondent is not commonly known by the <microsoftsafetyscanner.com> domain name;
b. The <microsoftsafetyscanner.com> domain name resolves to a website nearly identical to Complainant’s website where Respondent offers a competing product;
c. The <microsoftsafetyscanner.com> domain name is disruptive to Complainant’s business;
d. Respondent intentionally attempted to attract, for commercial gain, Internet users to the <microsoftsafetyscanner.com> domain name by creating a likelihood of confusion as to the source of the disputed domain name;
e. The <microsoftsafetyscanner.com> domain name was registered and is used in opportunistic bad faith;
e) Respondent registered the <microsoftsafetyscanner.com> domain name with constructive and/or actual knowledge of Complainant’s rights in the MICROSOFT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds registered trademarks for the MICROSOFT mark.. Respondent did not submit a Response in this proceeding
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."
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.
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.”).
Complainant contends that it has rights in the MICROSOFT mark. Complainant uses this mark in connection with computer software and related goods and services, including the MICROSOFT Safety Scanner. Complainant provides evidence of its trademark registrations with the USPTO for the MICROSOFT mark (e.g., Reg. No. 1,256,083 registered November 1, 1983). Additionally, Complainant presents the Panel with evidence of its UKIPO trademark registrations for the MICROSOFT mark (e.g., Reg. No. 1,121,920 registered October 8, 1979). Therefore, the Panel finds that Complainant has rights in the MICROSOFT mark pursuant to Policy ¶ 4(a)(i). 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).
Complainant also argues that Respondent’s <microsoftsafetyscanner.com> domain name is confusingly similar to the MICROSOFT mark. Complainant contends that Respondent has simply taken the MICROSOFT mark, added the descriptive phrase “safetyscanner,” and added the generic top-level domain (“gTLD”) “.com” to create the disputed domain name. The addition of terms that describe a complainant’s business serves to increase confusion rather than eliminate it. See 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). Furthermore, the addition of a gTLD does not negate 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). Therefore, the Panel finds that Respondent’s <microsoftsafetyscanner.com> domain name is confusingly similar to the MICROSOFT mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain name. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant contends that Respondent is not commonly known by the <microsoftsafetyscanner.com> domain name. Complainant argues that Respondent is not licensed to use the MICROSOFT mark and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Complainant provides the Panel with the WHOIS record for the <microsoftsafetyscanner.com> domain name, which lists “N/A / Bellamy Charles” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <microsoftsafetyscanner.com> domain name under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Complainant asserts that Respondent’s use of the <microsoftsafetyscanner.com> domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. Complainant contends that on the <microsoftsafetyscanner.com> domain name’s resolving website Respondent offers a competing product called “Hit Malware.” The use of a disputed domain name to market competitive products does not give the respondent rights or legitimate interests in the domain name. See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name).
Complainant also argues that Respondent’s display of a nearly identical replica of Complainant’s site on the <microsoftsafetyscanner.com> domain name is evidence of a lack of rights and legitimate interests. Complainant asserts that the <microsoftsafetyscanner.com> domain name’s resolving website mirrors Complainant’s website except for the inclusion of the link for the purchase of a competing product. An attempt to pass off a resolving website as that of a complaining party does not fall within the bounds of Policy ¶¶ 4(c)(i) and 4(c)(iii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). Therefore, the Panel finds that the <microsoftsafetyscanner.com> domain name is being used for neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <microsoftsafetyscanner.com> domain name in bad faith. Complainant asserts that the <microsoftsafetyscanner.com> domain name is disruptive to Complainant’s business. Complainant claims that the disputed domain name is used to offer the download of competing computer safety software. The panel in Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001), found that a domain name is disruptive when registered and used to market competing products. Therefore, the Panel finds that Respondent registered and is using the <microsoftsafetyscanner.com> domain name in bad faith as it is disruptive to Complainant’s business under Policy ¶ 4(b)(iii).
Complainant further alleges that Respondent registered and is using the <microsoftsafetyscanner.com> domain name to attract, for commercial gain, Internet users to the <microsoftsafetyscanner.com> domain name by creating a likelihood of confusion as to the source of the disputed domain name. Complainant argues that Respondent has attempted to commercially benefit from this likelihood of confusion by creating an association with Complainant’s mark and taking advantage of the goodwill established in the mark. The Panel agrees and finds that Respondent registered and is using the <microsoftsafetyscanner.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant also argues that Respondent registered and is using the <microsoftsafetyscanner.com> domain name in opportunistic bad faith. Complainant notes that the <microsoftsafetyscanner.com> domain name was registered on May 11, 2011. Complainant provides evidence of press releases regarding its new Microsoft Safety Scanner product from May 11, 2011, which state that the product had just recently been announced. Given Respondent’s registration and use of the <microsoftsafetyscanner.com> domain name on the same day of announcements of the products, the Panel finds that Respondent opportunistically registered the disputed domain name, which is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See 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 asserts that, due to its extensive list of trademark registrations, Respondent must have had actual knowledge of Complainant's rights in the MICROSOFT mark when Respondent registered the disputed domain name. The Panel agrees with Complainant regarding Respondent's actual knowledge and concludes that Respondent registered the <microsoftsafetyscanner.com> domain name in bad faith according to Policy ¶ 4(a)(iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftsafetyscanner.com> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: July 23, 2012
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