Microsoft Corporation v. Online Shopper LLC
Claim Number: FA1207001453125
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Online Shopper LLC (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <surfacemicrosoft.com> and <surfacemicrosoft.net>, registered with GoDaddy.com, LLC.
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 July 12, 2012; the National Arbitration Forum received payment on July 12, 2012.
On July 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <surfacemicrosoft.com> and <surfacemicrosoft.net> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 July 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 7, 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@surfacemicrosoft.com and postmaster@surfacemicrosoft.net. Also on July 18, 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 August 8, 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 names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant owns trademark registrations for the MICROSOFT, SURFACE, and MICROSOFT SURFACE marks with the United States Patent and Trademark Office (“USPTO”):
MICROSOFT Reg. No. 1,200,236 registered July 6, 1982;
MICROSOFT Reg. No. 2,198,155 registered Oct. 20, 1998;
SURFACE Reg. No. 3,581,342 registered Feb. 24, 2009;
MICROSOFT SURFACE Reg. No. 3,561,874 registered Jan. 13, 2009.
2. Complainant’s disputed domain names are confusingly similar to Complainant’s MICROSOFT, SURFACE, and MICROSOFT SURFACE marks.
3. Respondent is not commonly known by the disputed domain names as the WHOIS information identifies the registrant as “Online Shopper LLC.”
4. Respondent is neither affiliated with nor licensed by Complainant and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services.
5. Respondent offered each domain name for sale on eBay for $100,000 within hours of registering the disputed domain names.
6. Respondent makes no bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain names as the <surfacemicrosoft.com> domain name resolves to a pay-per-click website filled with links to competitors and the <surfacemicrosoft.net> domain name resolves to a website purportedly offering a forum.
7. Respondent uses the forum website at the <surfacemicrosoft.net> domain name to attract registered participants and harvest their e-mail addresses by falsely promising pre-release access to Complainant’s SURFACE computers, which is a completely false allegation.
8. Respondent registered and uses the disputed domain names in bad faith by immediately offering the disputed domain names for sale for $100,000 each, an amount well in excess of Respondent’s acquisition costs.
9. Respondent registered the disputed domain names on the same day or the day after Complainant announced its intention to offer tablet computers under the MICROSOFT SURFACE mark, which indicates opportunistic bad faith.
10. Respondent’s use of the <surfacemicrosoft.com> domain name to promote competitors via third-party links indicates bad faith registration and use under Policy ¶ 4(b)(iv).
11. Respondent’s registration and use of the <surfacemicrosoft.net> domain name to attempt to attract Internet by misrepresenting Respondent’s ability to obtain pre-release access to Complainant’s products demonstrates bad faith as it is a fraudulent statement that disrupts Complainant’s business.
12. Respondent registered the disputed domain names with knowledge of Complainant’s marks as evidenced by the fame of Complainant’s marks and the face that Respondent refers to Complainant’s product in the eBay listing for the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the MICROSOFT, SURFACE, and MICROSOFT SURFACE marks. Respondent’s domain names are confusingly similar to Complainant’s marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the domain names <surfacemicrosoft.com> and <surfacemicrosoft.net> and that Respondent registered and uses the domain names 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 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 argues that it has rights in the MICROSOFT, SURFACE, and MICROSOFT SURFACE marks because it has registered the marks with the USPTO:
MICROSOFT Reg. No. 1,200,236 registered July 6, 1982;
MICROSOFT Reg. No. 2,198,155 registered Oct. 20, 1998;
SURFACE Reg. No. 3,581,342 registered Feb. 24, 2009;
MICROSOFT SURFACE Reg. No. 3,561,874 registered Jan. 13, 2009.
Trademark registrations with the USPTO sufficiently establish rights in the marks for the purposes of Policy ¶ 4(a)(i). See 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)).
Complainant alleges that Respondent’s <surfacemicrosoft.com> and <surfacemicrosoft.net> domain names are confusingly similar to Complainant’s MICROSOFT SURFACE. Changing the order of the terms in a mark does not affect the essential character of the disputed domain name or prevent confusing similarity. See NCRAS Mgmt., LP v. Cupcake City, D2000-1803 (WIPO Feb. 26, 2001) (finding the domain name <nationalrentalcar.com> confusingly similar to the mark NATIONAL CAR RENTAL and holding that “merely inverting the terms of a mark . . . is quite insufficient to dispel consumer confusion; the mark and the resulting domain name are simply too similar to each other”). Furthermore, removing a space between terms and adding a gTLD are insufficient to distinguish a disputed domain name from a mark. See U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel therefore concludes that Respondent’s <surfacemicrosoft.com> and <surfacemicrosoft.net> domain names are confusingly similar to Complainant’s MICROSOFT SURFACE mark according to 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 names. 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 argues that Respondent has no rights and legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names. Complainant asserts that the WHOIS information for the disputed domain names identifies the registrant as “Online Shopper LLC.” Complainant also contends that Respondent is not licensed by, or affiliated with, Complainant and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Based on these facts, the Panel determines 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).
Complainant argues that the <surfacemicrosoft.com> domain name points to a pay-per-click website advertising links to third parties promoting goods and services sold by Complainant’s competitors, such as Sony and Google, and to third-party tablets. The Panel finds that this use of the disputed domain name is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii). See Meyerson v. Speedy Web, FA 960409 (Nat. Arb. Forum May 25, 2007) (finding that where a respondent has failed to offer any goods or services on its website other than links to a variety of third-party websites, it was not using a domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
Complainant also contends that the <surfacemicrosoft.net> domain name points to a purported forum website that attempts to attract registered participants and harvest their e-mail addresses by falsely promising pre-release access to Complainant’s SURFACE computers. Complainant argues that Respondent has not been, and will not be, provided with pre-release access to Complainant’s product. Complainant therefore argues that Respondent’s efforts to deliberately mislead the public in order to attract users and acquire their personal information does not satisfy Policy ¶¶ 4(c)(i) and 4(c)(iii). The Panel agrees with Complainant’s allegations. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (concluding that using a domain name to redirect Internet users to a website that imitated the complainant’s credit application website and attempted to fraudulently acquire personal information from the complainant’s clients was not a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Complainant alleges that, within hours of registering the disputed domain names, Respondent offered each disputed domain name for sale on eBay for $100,000, an amount well in excess of reasonable registration fees. Complainant asserts that Respondent’s registration of the disputed domain names with the intent to sell them indicates that it lacks rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii). The Panel agrees with Complainant. See Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006) (“Moreover, the Panel interprets Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant contends that, after registering the disputed domain names, Respondent immediately offered the disputed domain names for sale for $100,000 each on eBay. Complainant argues that it is well-established that circumstances indicating that a Respondent has registered the disputed domain names primarily for the purpose of selling the names support a finding of bad faith registration and use pursuant to Policy 4(b)(i). The Panel agrees with Complainant’s argument. See Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000) (finding bad faith where the respondent offered the domain name for sale for $150,000 the day after registration of the domain name). Therefore, the Panel concludes that Respondent registered and uses the disputed domain names in bad faith under Policy ¶ 4(b)(i).
Complainant asserts that Respondent’s <surfacemicrosoft.com> domain name promotes links to third parties not affiliated with Complainant, including links to Complainant’s competitors. Complainant contends that Respondent receives revenue from this scheme. The Panel accepts Complainant’s allegations and holds that Respondent has demonstrated bad faith registration and use according to Policy ¶ 4(b)(iv) by attempting to attract Internet users and create a likelihood of confusion for Respondent’s own commercial gain. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant).
Complainant also alleges that Respondent’s <surfacemicrosoft.net> domain name attempts to attract Internet users by misrepresenting Respondent’s ability to obtain pre-release access to Complainant’s products. Complainant argues Respondent’s assertions are false and give a misleading impression that Respondent is associated with Complainant, thereby disrupting business. Complainant contends that Respondent uses its false and fraudulent claims about access to Complainant’s products in order to attract Internet users and collect their e-mail addresses. The Panel finds that Respondent’s use of the <surfacemicrosoft.net> domain name to collect personal user information is fraudulent and constitutes phishing, which is evidence of bad faith registration and use according to Policy ¶ 4(a)(iii). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”).
Additionally, Complainant asserts that Respondent registered the disputed domain names on the same day and the day after Complainant announced its intention to offer tablet computers under the MICROSOFT SURFACE name and mark. Complainant contends that the timing of Respondent’s domain name registrations indicates opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). The Panel agrees with Complainant and finds bad faith registration. 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”).
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 <surfacemicrosoft.com> and <surfacemicrosoft.net> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 20, 2012
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