Microsoft Corporation v. Omer Yurttas
Claim Number: FA1305001499149
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Omer Yurttas (“Respondent”), Netherlands.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <windows8apps.com> and <windows9games.com>, registered with REALTIME REGISTER BV, KEY-SYSTEMS GMBH.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 10, 2013; the National Arbitration Forum received payment on May 10, 2013. The Complaint was submitted in both English and Dutch.
On May 13, 2013, REALTIME REGISTER BV, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <windows8apps.com> domain name is registered with REALTIME REGISTER BV, KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. REALTIME REGISTER BV, KEY-SYSTEMS GMBH has verified that Respondent is bound by the REALTIME REGISTER BV, KEY-SYSTEMS GMBH 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 May 14, 2013, REALTIME REGISTER BV, KEY-SYSTEMS GMBH confirmed by e-mail to the National Arbitration Forum that the <windows9games.com> domain name is registered with REALTIME REGISTER BV, KEY-SYSTEMS GMBH and that Respondent is the current registrant of the name. REALTIME REGISTER BV, KEY-SYSTEMS GMBH has verified that Respondent is bound by the REALTIME REGISTER BV, KEY-SYSTEMS GMBH 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 May 22, 2013, the Forum served the Dutch language Complaint and all Annexes, including a Dutch Written Notice of the Complaint, setting a deadline of June 11, 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@windows8apps.com, postmaster@windows9games.com. Also on May 22, 2013, the Dutch language 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 June 18, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed John J. Upchurch 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 makes the following allegations:
a. Complainant’s mark:
i. Complainant owns the WINDOWS mark through its trademark registration with the Benelux Office for Intellectual Property (“BOIP”) (Reg. No. 495,863 registered on July 26, 1991).
ii. Complainant owns the WINDOWS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,872,264 registered on January 10, 1995).
iii. Complainant has used the WINDOWS mark since 1983.
iv. Complainant uses the mark to designate and promote its products and services throughout the world.
v. Complainant’s mark is well known and qualifies as a famous trademark.
b. Respondent’s Infringing Activities:
i. Policy ¶ 4(a)(i)
1. The <windows8apps.com> and <windows9games.com> domain names are confusingly similar to the WINDOWS mark.
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name. Complainant is not affiliated with Respondent and does not endorse the resolving websites.
2. Respondent does not use the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Respondent uses the <windows8apps.com> domain name to advertise Complainant’s products as well as products of Complainant’s competitors. The resolving page for the <windows9games.com> domain name advertises the web hosting services of a party located in the Netherlands that has no relationship with Complainant.
iii. Policy ¶ 4(a)(iii)
1. Respondent’s use of the disputed domain names for revenue-generating websites disrupts Complainant’s business.
2. Respondent’s use of the disputed domain names incorporating the WINDOWS mark for revenue-generating websites misleads consumers.
3. Respondent fails to make active use of the <windows9games.com> domain name and it is merely parked by the hosting company.
4. The notoriety of Complainant’s WINDOWS mark and Respondent’s reliance thereon reveals Respondent had actual knowledge of Complainant’s rights in the mark.
c. Respondent registered both domain names at issue on April 2, 2012.
B. Respondent did not submit a Response.
1. Respondent’s <windows8apps.com> and <windows9games.com> domain names are confusingly similar to Complainant’s WINDOWS mark.
2. Respondent does not have any rights or legitimate interests in the <windows8apps.com> and <windows9games.com> domain names.
3. Respondent registered or used the <windows8apps.com> and <windows9games.com> 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 claims to own the WINDOWS mark through its trademark registration with the BOIP (Reg. No. 495,863 registered on July 26, 1991). The BOIP covers registrations in the Netherlands. Complainant also claims to own the WINDOWS mark through its trademark registration with the USPTO (Reg. No. 1,872,264 registered on January 10, 1995). The Panel finds that Complainant’s BOIP and USPTO trademark registrations establish its right in the WINDOWS mark under Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also 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 contends the <windows8apps.com> and <windows9games.com> domain names are confusingly similar to the WINDOWS mark. Complainant alleges the disputed domain names consist of Complainant’s mark with the minor addition of the numeral “8” or “9,” the generic or descriptive terms “apps” or “games,” and gTLD “.com.” Complainant notes that the descriptive terms “apps” and “games” both relate to Complainant’s business and products. Complainant contends the additions do not sufficiently differentiate the disputed domain names from Complainant’s WINDOWS mark. The Panel determines that the disputed domain name is confusingly similar to the WINDOWS mark pursuant to Policy ¶ 4(a)(i), based on the addition of a numeral, generic or descriptive terms, and a gTLD. See Am. Online, Inc. v. garybush co uk, FA 360612 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s domain name is confusingly similar to Complainant’s AOL mark because the disputed domain name incorporates the mark with the mere addition of the nondistinctive number ‘0.’ The addition of the number ‘0’ is insufficient to distinguish the domain name from Complainant’s mark); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also 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).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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. 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 argues that Respondent is not commonly known by the <windows8apps.com> and <windows9games.com> domain names. Complainant contends it is not affiliated with Respondent, nor has Complainant endorsed or permitted Respondent’s use of the WINDOWS mark in any way. Further, Complainant asserts that nothing in Respondent’s WHOIS information suggests the Respondent is commonly known by the disputed domain name. Therefore, the Panel finds that Respondent is not commonly known by the domain names in dispute 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).
Complainant contends Respondent’s use of the WINDOWS mark to attract traffic to Respondent’s own site and raise revenue does not constitute a bona fide offering of goods or services. Additionally, Complainant contends that Respondent’s use of the disputed domain names do not constitute a legitimate noncommercial fair use. Complainant claims the disputed domain name <windows8apps.com> resolves to a website that displays Complainant’s logos and trademarks and offers free and paid apps. Further, Complainant presumes Respondent receives some revenue when users click through links on the resolving webpage. The Panel concludes that Respondent’s efforts to attract traffic to Respondent’s own site does not constitute a bone fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) and (iii) respectively. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)).
With respect to the disputed domain name <windows9games.com>, Complainant claims the resolving site advertises the web hosting services of an unrelated party located in the Netherlands. Complainant asserts that the domain is being parked as Respondent is not actively using the domain name or, in the alternative, is deriving some revenue from users signing up for the hosting company’s services. The Panel finds Respondent is not actively using the domain name, and concludes that Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods and services nor a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii) respectively. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). Similarly, the Panel finds Respondent is using the WINDOWS mark to promote unrelated goods or services through the hosting company’s services and derive some revenue, and finds that Respondent’s use does not constitute a bona fide offering of goods and services or a legitimate noncommercial fair use under Policy ¶¶ 4(c)(i) and (iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) (holding that the respondent’s use of the complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services).
Complainant argues that Respondent’s use of the WINDOWS mark in connection with revenue-generating websites disrupts Complainant’s business. Complainant contends its business is disrupted because the resolving website advertises and offers products and services that are completely unrelated to Complainant as well as products that compete with Complainant’s WINDOWS operating system. The Panel notes that previous panels have required evidence that a Respondent is actually competing with the Complainant’s business in order to support a finding of bad faith disruption under Policy ¶ 4(a)(iii). The Panel additionally notes that some panels have interpreted the Policy ¶ 4(b)(iii) disruption provision broadly as the panel did in Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”), while other panels have interpreted the provision narrowly, as was the case in Tribeca Film Ctr., Inc. v. Brusasco-Mackenzie, D2000-1772 (WIPO Apr. 10, 2001) where the panel rejected the Mission KwaSizabantu approach and held that “a respondent can ‘disrupt the business of a competitor’ only if it offers goods or services that can compete with or rival the goods or services offered by the trademark owner.” The Panel determines Respondent to be competing with and subsequently disrupting Complianant’s business, and the finds evidence of bad faith under Policy ¶ 4(a)(iii). See David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant additionally argues that Respondent’s use of the WINDOWS mark in connection with revenue-generating websites misleads consumers by creating confusion with Complainant for commercial gain. The Panel notes that Respondent uses <windows8apps.com> in connection with a site containing advertisements for unrelated products and allows users to download free and paid apps, while Respondent uses <windows9games.com> to advertise the services of a web hosting company from which Respondent may be gaining revenue. The Panel finds that Respondent’s use of the WINDOWS mark in such ways does constitute bad faith pursuant to Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant further argues that Respondent fails to make active use of the <windows9games.com> domain name and that it is merely parked by the hosting company. The Panel finds Respondent’s use of advertising the services of a web hosting company as not constituting an active use, and the finds that Respondent’s inactivity is evidence of bad faith pursuant to Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Complainant argues that Respondent’s registration and use is in bad faith as the contents of the sites and the use of the additional numerals and terms show Respondent was familiar with Complainant’s rights in the WINDOWS mark and intentionally incorporated the mark in to the disputed domain names. Complainant contends that at the time Respondent registered the domains, Complainant’s WINDOWS mark was “famous and familiar to countless consumers worldwide.” The Panel finds that Respondent did have knowledge of Complainant’s rights in the WINDOWS mark upon registration of the <windows8apps.com> and <windows9games.com> domain names. The Panel so finds, and holds that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windows8apps.com> and <windows9games.com> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 28, 2013
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