Microsoft Corporation v. Mobiletod / Uttam Nagar
Claim Number: FA1306001505771
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Mobiletod / Uttam Nagar (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windowsphonestore.com> 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 20, 2013; the National Arbitration Forum received payment on June 20, 2013.
On June 20, 2013, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <windowsphonestore.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 June 21, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@windowsphonestore.com. Also on June 21, 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, 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’s mark:
i. Complainant owns the WINDOWS mark through its trademark registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,264 registered January 10, 1995).
ii. Complainant owns the WINDOWS mark through its trademark registration with India’s Office of the Controller-General of Patents, Design and Trademark (e.g., Reg. No 261,972 registered May 30, 2003).
iii. Complainant has applied for the WINDOWS PHONE mark in a number of jurisdictions, including India and the United States.
iv. Complainant was founded in 1975 and is a worldwide leader in software and related services. Complainant first began using the WINDOWS mark in 1983 to promote software and related products and services, and has invested substantial time, effort, and money in advertising and promoting WINDOWS products and services, such that the WINDOWS mark is famous around the world.
b. Respondent’s infringing activities:
i. Policy ¶ 4(a)(i)
1. The domain <windowsphonestore.com> is confusingly similar to Complainant’s WINDOWS mark as the domain incorporates the mark in its entirety with the mere addition of the descriptive terms “phone” and “store” with the common generic top-level domain (“gTLD”) “.com.”
ii. Policy ¶ 4(a)(ii)
1. Respondent is not commonly known by the disputed domain name or the WINDOWS mark. Complainant has not licensed or otherwise authorized Respondent’s use in the mark.
2. Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
3. The resolving page appears very much like Complainant’s official site as it prominently displays the WINDOWS mark and offers free and paid apps at the site. The resolving page also includes a copyright notice saying “© 2012 WindowPhoneStore/WINDOWS PHONETM is a trademark of Microsoft Corporation.” Additionally, Respondent is selling advertising at the site for developers to advertise their own apps and the site contains ads with links to third-party websites, from which Respondent receives compensation.
iii. Policy ¶ 4(a)(iii)
1. Respondent disrupts Complainant’s business because the resolving site confuses potential customers, and advertises and offers products and services that are completely unrelated to Complainant.
2. Respondent attempts to confuse consumers as to the source or affiliation of the website and intends to commercially benefit from the resulting confusion through click-through fees, advertisement sales, and the sale of apps.
3. Similarly, Respondent attempts to pass itself off as Complainant to further confuse consumers as to the source or affiliation of the website.
4. Respondent had constructive and/or actual knowledge of Complainant’s rights in the mark at the time Respondent registered the disputed domain name, showing Respondent’s bad faith.
c. Respondent registered the disputed domain name on August 18, 2011.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant is Microsoft Corporation which list its address as Redmond, WA, USA. Microsoft is a worldwide leader in software, services, and solutions. Complainant was founded in 1975 and uses, and has registered, various well-known marks in conjunction with its business, including the mark WINDOWS. Complainant has used, and domestically as well as internationally, registered, the WINDOWS mark at least as early as 1995.
Respondent is Mobiletod/Uttam Nagar which list its address as Delhi, India. Respondent’s registrar’s address is listed as Scottsdale, AZ, USA. Respondent registered the disputed domain name on August 18, 2011.
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 USPTO (e.g., Reg. No. 1,872,264 registered January 10, 1995). Complainant further claims to own the WINDOWS mark through its trademark registration with India’s Office of the Controller-General of Patents, Design and Trademark (e.g., Reg. No 261,972 registered May 30, 2003). The Panel finds that Complainant’s trademark registrations with the USPTO and India’s Office of the Controller-General of Patents, Design and Trademark, establishes Complainant’s rights in the WINDOWS mark under Policy ¶ 4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant argues that the domain <windowsphonestore.com> is confusingly similar to Complainant’s WINDOWS mark. Complainant contends the disputed domain incorporates the WINDOWS mark in its entirety with the mere addition of the descriptive terms “phone” and “store” with the common generic top-level domain (“gTLD”) “.com.” Complainant urges that the terms “phone” and “store” are descriptive because the terms directly relate to Complainant’s business and products. Previous panels have found that the additions of descriptive terms and a gTLD to a complainant’s mark are insufficient to distinguish the disputed domain from the mark. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). The Panel finds that the additions of the descriptive terms “phone” and “store,” and the gTLD “.com” to Complainant’s mark in its entirety, are insufficient to differentiate the <windowsphonestore.com> domain from the WINDOWS mark for the purposes of Policy ¶ 4(a)(i) analysis.
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant contends that Respondent is not commonly known by the disputed domain name or the WINDOWS mark. Complainant notes that the WHOIS record, which is included in Exhibit A, identifies Respondent as “Mobiletod/Uttam Nagar.” Further, Complainant contends it has not licensed or otherwise authorized Respondent’s use of the mark. The Panel notes that Respondent did not submit a Response to refute Complainant’s contentions. The Panel finds that Respondent is not commonly known by the domain name 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 argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Complainant contends that the resolving page appears very much like Complainant’s official site as it prominently displays the WINDOWS mark and offers free and paid apps at the site. Complainant notes that the resolving page also includes a copyright notice saying “© 2012 WindowPhoneStore/WINDOWS PHONETM is a trademark of Microsoft Corporation.” Additionally, Complainant contends Respondent is selling advertising at the site for developers to advertise their own apps and the site contains ads with links to third-party websites, from which Respondent presumably receives compensation. The Panel finds Respondent’s use of the disputed domain name 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) because Respondent is attempting to pass itself off as Complainant and/or divert users for commercial gain. 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); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent disrupts Complainant’s business because the resolving site confuses potential customers, and advertises and offers products and services that are completely unrelated to Complainant. The Panel notes that previous 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”). The Panel finds that Respondents efforts to compete with and subsequently disrupt Complianant’s business through use of Complainant’s mark evidences bad faith pursuant to 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 argues that Respondent attempts to confuse consumers as to the source or affiliation of the website housed at the disputed domain name and intends to commercially benefit from the resulting confusion through click-through fees, advertisement sales, and app sales. Complainant contends that the use of the confusingly similar domain name, as well as the advertisements and offers on the resolving page, confuse potential customers. Previous panels have found evidence of bad faith where a respondent attempts to confuse consumers as to the source of the website for the purposes of commercial benefit. See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)). The Panel finds further evidence of bad faith under Policy ¶ 4(b)(iv) because Respondent attempts to confuse consumers as to the source or affiliation of the website with the hope of commercial benefit through click-through fees, as well as advertisement and app sales.
Similarly, Complainant argues that Respondent is attempting to pass itself off as Complainant to further confuse consumers as to the source or affiliation of the website. Complainant contends that the resolving page of the confusingly similar domain name appears very much like Complainant’s official site as it prominently displays the WINDOWS mark and offers free and paid apps at the site. Complainant also notes that the resolving page also includes a copyright notice saying “© 2012 WindowPhoneStore/WINDOWS PHONETM is a trademark of Microsoft Corporation.” Previous panels have found evidence of bad faith where respondents pass themselves off as the complainant in an effort to commercially benefit. See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”). The Panel finds evidence of Respondent’s bad faith under Policy ¶ 4(a)(iii) because Respondent is attempting to pass itself off as Complainant and intends to commercially benefit from the resulting confusion.
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that <windowsphonestore.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: July 31, 2013
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