Microsoft Corporation v. Domain Admin / Registration Suspended - Trademark
Claim Number: FA1206001449122
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Domain Admin / Registration Suspended - Trademark (“Respondent”), Colorado, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-windows.com>, registered with DropLabel.com, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2012; the National Arbitration Forum received payment on June 18, 2012.
After numerous requests, the Registrar, DropLabel.com, has not confirmed to the National Arbitration that the <microsoft-windows.com> domain name is registered with DropLabel.com or that the Respondent is the current registrant of the name. Registrar’s non-compliance has been reported to ICANN. The FORUM’s standing instructions are to proceed with this dispute.
On July 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 23, 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-windows.com. Also on July 3, 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 30, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Microsoft uses and has registered various famous marks in conjunction with its business, including MICROSOFT® and WINDOWS®.
MICROSOFT®
The MICROSOFT mark was first used by Complainant at least as early as 1975, was continuously used thereafter, and is still in use in connection with software and other goods and services. According to surveys by Interbrand Corp., MICROSOFT was the third most valuable brand in the world in 2009, 2010 and 2011. In addition, the MICROSOFT trademark has been found by panelists of the National Arbitration Forum and WIPO to be an internationally famous and distinctive mark. See Microsoft Corp. v. Ahmed, D2000-0548 (WIPO July 21, 2000)(finding that Complainant’s MICROSOFT mark is “well known throughout the world”); Microsoft Corp. v. Thompson, D2004-1097 (WIPO April 14, 2005)(noting that several previous panels have concluded that Complainant’s MICROSOFT trademark is internationally famous and “readily” subscribing to these findings)(citations omitted); Microsoft Corp. v. Lybrand, D2005-0020 (WIPO March 18, 2005)(noting that the “uncontested evidence indicates plainly that MICROSOFT is a famous mark, and indeed, several previous WIPO panels have recognized it as such”)(citations omitted); and Microsoft Corp. v. OzGrid Business Applications, FA314308 (Nat. Arb. Forum Oct. 6, 2004)(noting that Complainant’s MICROSOFT mark “has become distinctive, well-known and has developed considerable goodwill”).
Microsoft owns more than 25 United States registrations for the MICROSOFT trademark, and hundreds more registrations for the mark throughout the world. These registrations were applied for and issued well prior to the registration of the disputed domain in June, 2012.
WINDOWS®
Microsoft began using the WINDOWS trademark at least as early as 1983, and has used the trademark continuously since then. For nearly 30 years, Microsoft has invested substantial time, effort and money in advertising and promoting its WINDOWS products and services throughout the United States and the world. As a result, WINDOWS has become the world’s most popular computer operating platform for desktop and laptop computers. Microsoft owns the domain name <windows.com> (registered in 1995) and uses this domain name to provide consumers with information and resources regarding its Windows operating platform.
The WINDOWS mark is well-known to the general public and particularly to computer users around the globe who identify the WINDOWS mark with Microsoft. At least one WIPO panel has found the WINDOWS mark to be a famous mark. Microsoft Corp. v. Lee, D2004-0991 (WIPO Jan. 26, 2005) (“The panel finds that this trademark has so extensive a common law reputation that it qualifies as a famous mark.”). Microsoft has registered the WINDOWS trademark with the United States Patent and Trademark Office, and throughout the world. Microsoft used and internationally registered the trademark WINDOWS long prior to the registration date for the disputed domain name.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s MICROSOFT and WINDOWS trademarks.
The disputed domain name incorporates the MICROSOFT and WINDOWS marks in their entireties, adding only a hyphen and the generic TLD .com. This is not sufficient to negate confusing similarity between Respondent’s domain name and Complainant’s trademarks, and in fact the combination of MICROSOFT and another product name famously associated with Complainant makes confusion even more likely. See Microsoft Corp. v. Naseeir, FA1203001434828 (Nat. Arb. Forum April 26, 2012)(finding <microsoftwindows-microsoft.info> confusingly similar to MICROSOFT and awarding transfer); Microsoft Corp. v. a zhong GG Ltd, FA0912001297546 (Nat. Arb. Forum Jan 20, 2010)(finding that combining MICROSOFT with the Microsoft product name ONEAPP did not distinguish the disputed domain name from MICROSOFT or ONEAPP); Microsoft Corp. v. Duan Xiang Wang, FA0906001269201 (Nat. Arb. Forum August 11, 2009)(finding <microsoftranslator.com> confusingly similar to MICROSOFT and awarding transfer, where Complainant also offered a service under the name “Microsoft Translator”); Microsoft Corp. v. Lafont, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010)(finding that “neither an added hyphen nor an attached gTLD modify the disputed domain name enough to distinguish it from Complainant’s mark”); and Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the above reasons, the disputed domain name is confusingly similar to Complainant’s MICROSOFT and WINDOWS trademarks.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s MICROSOFT or WINDOWS trademarks, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS currently identifies Respondent as Domain Admin/Registration Suspended-Trademark. At the time of the filing of the Complaint, WHOIS identified Respondent as Domain Admin/Intrust Domain Names. Respondent is not commonly known by Complainant’s MICROSOFT or WINDOWS trademarks. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s MICROSOFT or WINDOWS trademarks. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for the disputed domain offers the domain name for sale for $397, an amount well in excess of reasonable registration fees. Acquiring a domain name in order to sell it is not a legitimate interest or bona fide use. See Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests pursuant to Policy ¶¶4(c)(i) or (iii) where the respondent registered the domain name with the intention of selling its rights); Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the respondent’s willingness to sell a contested domain name for more than its out-of-pocket costs provided additional evidence that Respondent had no rights or legitimate interests in the contested domain name); 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); Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the respondent’s conduct purporting to sell the domain name suggests it has no legitimate use); and Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Furthermore, Respondent’s domain name <microsoft-windows.com> is being used in an e-mail scam, in which message recipients are presented with a “View Invitation” button purportedly sent from “Windows Live <microsoft-windows.com>.” The button leads to a web site in Turkey. Id. Impersonating Complainant in order to deceive e-mail recipients and draw them to a site of unknown purpose and origin is not a legitimate or bona fide use of this domain. See Charles Komar & Sons, Inc. v. Bates, FA1108001405374 (Nat Arb. Forum Oct. 12, 2011)(finding that use of the disputed domain name in connection with a phishing scam does not coincide with a bona fide offering of goods or services or a legitimate noncommercial or fair use); Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use); and Allianz of Am. Corp. v. Bond, FA 690796 (Nat. Arb. Forum June 12, 2006) (holding that using a disputed domain to fraudulently acquire the personal and financial information of Internet users seeking Complainant’s financial services is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶4(c)(iii)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time Respondent registered the disputed domain name, MICROSOFT and WINDOWS were famous and familiar to countless consumers worldwide. That Respondent has combined these famous marks shows without question that Respondent was not only familiar with Complainant’s MICROSOFT and WINDOWS trademarks at the time of registration, but intentionally adopted a name incorporating these marks in order to create an association with Complainant and its products and services.
Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corp. v. Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Furthermore, it is well-established that circumstances indicating that a Respondent has registered or acquired a domain name primarily for the purpose of selling the name to the corresponding trademark holder support a finding of bad faith. See ICANN Rule 4(b)(i). See also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith under Policy ¶4(b)(i)”)(emphasis added); and Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web Serv., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no certain price is demanded, are evidence of bad faith”)(emphasis added).
Furthermore, InTrust Domain Names, the party that Complainant believes to be the actual owner of this domain name has been found to have acted in bad faith in at least two previous adverse UDRP decisions: The Royal Bank of Scotland Group plc v. Domain Admin c/o InTrust Domain Names, FA1009001347010 (Nat. Arb. Forum Nov. 1, 2010) and Baylor University v. Domain Admin / InTrust Domain Names, FA1101001366744 (Nat. Arb. Forum Feb. 4, 2011). This establishes a pattern of conduct and is further evidence of bad faith. See Nat’l Abortion Fed’n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cyber-squatting); and Arai Helmet Americas, Inc. v. Goldmark, D2004-1028 (WIPO Jan. 22, 2005 (finding that “Respondent has registered the disputed domain name, <aria.com>, to prevent Complainant from registering it” and taking notice of another Policy proceeding against the respondent to find that “this is part of a pattern of such registrations”).
As noted above, Respondent’s <microsoft-windows.com> domain is being employed in an e-mail scam. In light of InTrust Domain Name’s documented history of bad faith, it is reasonable to conclude that Respondent is facilitating or otherwise involved in this scam, and this constitutes further evidence of bad faith. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (use of the disputed domain name for fraudulent purposes constituted bad faith); Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (finding that the respondent demonstrated bad faith registration and use where it fraudulently attempted to acquire the personal and financial information of Internet users through the use of a domain name confusingly similar to a competing mark); and G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶4(b)(iv) where the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). Furthermore, this scam disrupts Complainant’s business, since consumers may believe that Complainant is truly involved in these e-mails, and this is further evidence of bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove each of the following three elements to obtain an order cancelling or transferring a domain name:
(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 registered its MICROSOFT and WINDOWS marks with numerous trademark agencies in numerous countries. Complainant provided a list of these registrations for the Panel’s reference and a copy of the earliest United States Patent & Trademark Office (“USPTO”) trademark registrations for the MICROSOFT (e.g., Reg. No. 1,200,236 registered July 6, 1982) and WINDOWS marks (e.g., Reg. No. 1,872,264 registered January 10, 1995). Complainant’s trademark registrations are adequate evidence Complainant holds rights in the MICROSOFT and WINDOWS marks for the purposes of 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.”).
Complainant argues Respondent’s disputed domain name is confusingly similar to its MICROSOFT and WINDOWS marks. The disputed domain name incorporates the MICROSOFT and WINDOWS marks in their entirety, with the only changes being the insertion of a hyphen between the two marks and the addition of the generic top level domain (“gTLD”) “.com.” As numerous panels have noted, the existence of a gTLD is ignored in determining confusing similarity because domain names must have a gTLD (or ccTLD) and to hold otherwise would eviscerate the UDRP. Furthermore, the existence of the hyphen is not adequate to distinguish the two marks from the domain name, especially since a space is not a valid character for a domain name. Therefore, this Panel finds the <microsoft-windows.com> disputed domain name is confusingly similar to Complainant’s MICROSOFT and WINDOWS marks under Policy ¶4(a)(i). 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.”); Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶4(a)(i).”); and 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).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by the disputed domain name. The WHOIS database identifies the domain name registrant as “Domain Admin/Registration Suspended-Trademark,” who is not affiliated with Complainant in any way or licensed by Complainant to use Complaint’s MICROSOFT or WINDOWS marks. Based upon this information, the Panel must agree and finds Respondent is not commonly known by the <microsoft-windows.com> domain name pursuant to Policy ¶4(c)(ii) nor was Domain Admin/Intrust Domain Names (the registrant when this UDRP proceeding began). 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 G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(c)(ii). However, there is no evidence on record, and Respondent has not come forward with any proof to establish that it is commonly known as CELEBREXRX or <celebrexrx.com>.”).
Complainant argues Respondent is using the disputed domain name to pass itself off as Complainant to improperly “phish” for users’ personal information. Respondent apparently uses the disputed domain name in an e-mail address. Respondent e-mails messages containing a “View Invitation” button purportedly sent from “Windows Live” at <microsoft-windows.com>. When users click on this button, they are redirected to an unrelated and unknown website in Turkey. Complainant argues Respondent’s impersonation of Complainant to trick users into visiting a site with an unknown purpose demonstrates a lack of a legitimate or bona fide use of the disputed domain name. The Panel agrees based upon this evidence and finds Respondent’s use of the disputed domain name is not a bona fide offering of goods or services under Policy ¶4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶4(c)(iii). See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii).”).
The disputed domain name resolves to a landing page that displays an offer for sale in the amount of $397.00, an amount higher that any reasonable registration fees. Complainant believes Respondent has acquired the <microsoft-windows.com> disputed domain name with the purpose to sell, reflecting a lack of legitimate interests or bona fide use. The Panel agrees and finds Respondent has acquired the disputed domain name with the intention to sell for more than its out of pocket costs and consequently lacks rights or legitimate interests in the disputed domain name pursuant to Policy ¶4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (holding that where a respondent makes a “disproportionate” offer to sell its domain name registration to the complainant for more than its out-of-pocket registration costs, there is additional evidence that the respondent lacks rights and legitimate interests in the disputed domain name).
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant argues Respondent’s offer to sell the disputed domain name for $397.00 demonstrates bad faith registration and use. Since it appears to the Panel that Respondent primarily intended to resell the domain name for more than its out of pocket cots when it was registered, the Panel concludes Respondent registered and uses the <microsoft-windows.com> domain name in bad faith pursuant to Policy ¶4(b)(i). See Pocatello Idaho Auditorium Dist. v. CES Mktg. Group, Inc., FA 103186 (Nat. Arb. Forum Feb. 21, 2002) ("What makes an offer to sell a domain [name] bad faith is some accompanying evidence that the domain name was registered because of its value that is in some way dependent on the trademark of another, and then an offer to sell it to the trademark owner or a competitor of the trademark owner").
Complainant argues Respondent has registered and uses the disputed domain name in bad faith as evidenced by a pattern of bad faith registration and use. In two previous adverse UDRP decisions, Royal Bank of Scotland Group v. Domain Admin c/o InTrust Domain Names, FA 1347010 (Nat. Arb. Forum Nov. 1. 2010) and Baylor Univ. v. Domain Admin / InTrust Domain Names, FA 1366744 (Nat. Arb. Forum Feb. 4, 2011), Respondent was found to have registered and used the disputed domain names in bad faith under Policy ¶4(b)(ii). However, Respondent did not appear to register the domain name to prevent Complainant from reflecting its trademarks in a corresponding domain name and Complainant failed to make such a claim. Therefore, Complainant cannot prove bad faith registration and use in this manner.
However, there are additional issues that must be considered here. Respondent’s impersonation of Complaint to “phish” for users’ information is an e-mail scam which clearly demonstrates bad faith registration and use. See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers); see also Hess Corp. v. GR, FA 770909 (Nat. Arb. Forum Sept. 19, 2006) (determining that the respondent demonstrated bad faith registration and use because it was attempting to acquire the personal and financial information of Internet users through a confusingly similar domain name).
Complainant also claims it is inconceivable Respondent could have registered the <microsoft-windows.com> disputed domain name without actual knowledge of Complainant's rights in the mark in light of the fame and notoriety of Complainant's MICROSOFT and WINDOWS marks. This Panel agrees. 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 Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered the <microsoft-windows.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, July 31, 2012
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