Microsoft Corporation v. Methods For Mastery, Inc.
Claim Number: FA1303001489730
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Methods For Mastery, Inc. (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windowsrtapps.com>, registered with GODADDY.COM, LLC.
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.
Luz Helena Villamil-Jiménez as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 13, 2013; the National Arbitration Forum received payment on March 13, 2013.
On March 14, 2013, GODADDY.COM, LLC confirmed by e-mail to the National Arbitration Forum that the <windowsrtapps.com> domain name is registered with GODADDY.COM, LLC and that Respondent is the current registrant of the name. 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 March 14, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 3, 2013 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@windowsrtapps.com. Also on March 14, 2013, 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.
A timely Response was received and determined to be complete on April 2, 2013.
A timely Additional Submission was received from Complainant and determined to be complete on April 5, 2013.
On April 11, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Luz Helena Villamil-Jiménez 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. The company uses and has registered various well-known marks in conjunction with its business, including the trademark WINDOWS® which has been used continuously since 1983. 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.
Particularly as regards the trademark WINDOWS, Complainant highlights that this is a well-known trademark to the general public and particularly to computer users who identify the WINDOWS mark with Microsoft. Moreover, the Complainant contends that Microsoft has registered the WINDOWS trademark with the United States Patent and Trademark Office, and also around the world. It adds that Microsoft used and internationally registered the trademark WINDOWS long prior to the registration date for the disputed domain name.
Further, Complainant contends that the Windows operating platform for mobile devices, including the new SURFACE device, is known as Windows RT. The official name of WINDOWS RT was published on April 16, 2012, only three (3) days before the disputed domain name was registered.
Lastly, Complainant contends that the <windowsrtapps.com> domain name is confusingly similar to Complainant’s WINDOWS trademark. Respondent’s domain name incorporates Complainant’s WINDOWS mark in its entirety, adding only “RT” and the term “apps” (both of which clearly relate to Complainant’s products), and the most common generic top-level domain (“gTLD”) “.com.”
B. Respondent
Respondent contends that the <windowsrtapps.com> domain name is not confusingly similar to Complainant’s WINDOWS mark. It adds that the use of the words “WINDOWS” and “rt” in Respondent’s domain name serves to clarify the specific operating system the applications (“apps”) available on the domain name are intended to run on.
Respondent also contends that the use of the WINDOWS operating system terminology is common place in the market to advise the consumer of what operating platform products are intended to be used on, which is important because there are multiple operating systems for different phones, computers, and tablets that will only run on one specific operating system.
Lastly, Respondent explains that its intent in registering the disputed domain name was to provide a description of the products and information that are available at the domain name, which in this case advises the consumer that Respondent has apps for Complainant’s WINDOWS RT devices.
C. Additional Submissions
Complainant made an additional submission directed to the issues raised in the Response submitted on April 2, 2013. In the additional submission Complainant contends:
1. Respondent argues that the use of WINDOWS and RT in the disputed domain name is merely to indicate the operating system “that the apps available on this domain name are intended to run on.” This argument does not address the fact that the disputed domain name incorporates the WINDOWS mark in its entirety and incorporates “RT” which Respondent acknowledges is one of Microsoft’s operating systems, along with the generic term “app.”
2. It is evident that the disputed domain name is confusingly similar to the WINDOWS trademark and Respondent has failed to provide any evidence or meaningful arguments that it is not. Accordingly, the evidence is undisputed that the domain name <windowsrtapps.com> is confusingly similar to Complainant’s WINDOWS trademark.
3. The disputed domain name was registered on April 19, 2012, that is, only three (3) days after Microsoft announced its new Windows RT operating system. Respondent argues that when it registered this domain name it was in the process of designing a website and developing apps to run on the Windows RT operating system.
4. Even if Respondent were legitimately designing a website and developing apps to run on Complainant’s Windows RT operating system, this fact does not allow Respondent to register and use a domain name that incorporated the WINDOWS RT mark in its entirety. The fact remains that Respondent never used the disputed domain name for developing or selling software applications that run on Complainant’s Windows RT operating system but rather used the disputed domain name for another one of Respondent’s apparent “get rich quick” schemes.
Complainant had, and has rights in the trademark WINDOWS, the basis of this proceeding. The trademark WINDOWS is widely protected in the United States and also around the world, and there is no question that WINDOWS is a well-known trademark not only to consumers but to the general public. For this reason, the trademark WINDOWS is in fact a famous trademark.
WINDOWS RT is the operating platform for mobile devices, including the new SURFACE device.
Respondent’s <windowsrtapps> domain name is confusingly similar to Complainant’s trademark.
Respondent registered the <windowsrtapps> domain name on April 19, 2012.
Respondent had knowledge of Complainant’s WINDOWS trademark at the time it registered the disputed domain name. Indeed, by acknowledging that he registered the <windowsrtapps.com> domain name because he was planning to offer apps for Complainant’s WINDOWS RT operating system at the resolving site, Respondent admitted that it was aware of Complainant and its rights in the WINDOWS mark prior to Respondent’s registration of the domain.
Respondent had, and has, no authority to use Complainant’s trademarks in any manner whatsoever.
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.
Complainant argues that it has rights in the WINDOWS mark through its trademark registration with the USPTO (e.g., Reg. No. 1,872,264 registered January 10, 1995). The Panel finds that Complainant’s trademark registrations in the U.S. and also around the world provide it with protectable rights under Policy ¶ 4(a)(i). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i).”).
Complainant argues that the <windowsrtapps.com> domain name is confusingly similar to Complainant’s WINDOWS mark within the meaning of Policy ¶ 4(a)(i). Complainant also notes that Respondent’s domain name incorporates Complainant’s WINDOWS mark in its entirety, adding only “RT” and the term “apps,” both of which clearly relate to Complainant’s products, plus the gTLD “.com.” The Panel finds that each of these changes is insufficient to distinguish the disputed domain under Policy ¶ 4(a)(i). See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied). The Panel therefore holds that the <windowsrtapps.com> domain name is confusingly similar to Complainant’s WINDOWS mark within the meaning of Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name and then the burden shifts to Respondent to show it does have 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.
Respondent is not commonly known by the <windowsrtapps.com> domain name. Complainant notes that the WHOIS information identifies Respondent as “Methods For Mastery, Inc.” Complainant claims that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services; Respondent is not licensed by Complainant to use Complainant’s WINDOWS trademark, nor Respondent is affiliated with Complainant in any way. In light of this evidence, the Panel determines that Respondent is not commonly known by the <windowsrtapps.com> domain name pursuant to Policy ¶ 4(c)(ii). See 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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent asserts that he had no desire to use the WINDOWS trademark or anything related to Windows or Microsoft to gather personal information as the Respondent had no use for it. The use was only for testing the future website design and functions and was never used for any benefit other than testing design and function. According to Respondent, the only intended use of the disputed domain name was for future bona fide offerings of goods and services. The Panel finds that incorporating a famous trademark within a domain name (a domain name that was registered only three (3) days after Complainant published the official name WINDOWS RT - the operating platform for mobile devices) shows a clear intention to benefit from the confusion that the general public could suffer when finding on any search engine a website whose name begins with the famous trademark WINDOWS, and which coincidentally turns to be one of the domain names owned by the Complainant (<windows.com>).
It is clear for the Panel, after a thorough review of the documentation and evidence submitted to the case, that the Complainant is the type of entity that due to the well-known condition of its trademarks, the efforts it makes to position and promote them and the recognition it has obtained in the market, frequently suffers the type of unfair competition that is made by third parties through the registration of domain names that are “designed” just to let registrants share the sales revenues obtained by the legitimate owners of the trademarks.
In light of the foregoing, the Panel establishes that the Policy requirement in Paragraph 4(a)(ii) is met inasmuch as the Respondent has no rights or legitimate interests in respect of the domain name <windowsrtapps.com>.
Complainant contends that Respondent’s use of the <windowsrtapps.com> domain name disrupts Complainant’s business, since consumers may believe that Respondent is providing information and applications for WINDOWS RT, which is not the case. In this concern, the panel notes that in its Response the Respondent contends that it placed ads at the same time as the domain name was registered soliciting programmers to build Windows RT apps and the responses received from those ads clearly illustrate the intended use was legitimate. Any bad faith claims made regarding registering the disputed domain name are opportunistic attempts by the Complainant to manipulate the disputed domain name away from the Respondent without just cause.
The Panel considers that if the Respondent himself acknowledges that it placed ads soliciting programmers to build Windows RT apps and it received numerous responses, this fact allows the inference that most probably the programmers who responded were mislead to believe that if they were contracted to build WINDOWS RT apps, in some manner they would, even if indirectly, work for Microsoft as owner of the WINDOWS trademark.
The Respondent also contends that he even tried to contact Microsoft to offer them an opportunity to be partners in the design and profits generated by Respondents apps, and that these are not the actions of someone trying to disrupt the Complainant’s business but rather to promote and support it. The Panel does not accept this argument as an evidence of good faith. On the contrary, to start, the Respondent did not have to register a domain name incorporating Microsoft’s trademark WINDOWS to “clarify the specific operating system the apps available on the domain name are intended to run on.” It is one thing to sell products under one’s own trademark, and another very different issueto register in one’s own name a domain name consisting of a third party’s well-known trademark arguing that the purpose is to provide information to consumers as to the products being offered. For this reason, the Panel does not accept either the Respondent’s argument according to which “the use of the WINDOWS operating system terminology is common place in the market to advise the consumer of what operating platform products are intended to be used on.” Third parties’ brands can indeed be used under certain conditions to provide some information to consumers, but this usage does not entail a right to incorporate said trademarks in one’s domain name. The sole fact of registering a domain name incorporating a famous trademark together with other words that also relate with such third party’s business denotes a calculated activity to unlawfully obtain a benefit, in this case from the confusion suffered by the general public due to the general knowledge of the trademark WINDOWS.
The panel restates the circumstance that Respondent registered the <windowsrtapps.com> domain name on April 19, 2012, just three days after Complainant announced its WINDOWS RT product on April 16, 2012. The Panel concurs with the Complainant that this reflects opportunistic bad faith.
The Panel therefore finds that Respondent’s registration of a domain name containing the name of one of Complainant’s products whose launch was announced less than a week prior to Respondent’s registration of the domain constitutes opportunistic bad faith under Policy ¶ 4(a)(iii). 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”).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windowsrtapps.com> domain name be TRANSFERRED from Respondent to Complainant.
Luz Helena Villamil-Jiménez, Panelist
Dated: April 25, 2013
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page