Microsoft Corporation v. Robert Altman
Claim Number: FA0906001266955
PARTIES
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <zunehd.net>,
registered with Godaddy.com, Inc.
PANEL
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.
Joel M.Grossman, Esq., as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on June 8, 2009; the National Arbitration Forum received a hard
copy of the Complaint on June 9, 2009.
On June 9, 2009, Godaddy.com, Inc. confirmed by e-mail to the National
Arbitration Forum that the <zunehd.net>
domain name is registered with Godaddy.com, Inc. and that the Respondent is the
current registrant of the name. Godaddy.com,
Inc. has verified that Respondent is bound by the Godaddy.com, Inc.
registration agreement and has thereby agreed to resolve domain-name disputes
brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute
Resolution Policy (the “Policy”).
On June 9, 2009, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of June 29, 2009 by which Respondent could file a Response to the Complaint,
was transmitted to Respondent via e-mail, post and fax, to all entities and
persons listed on Respondent’s registration as technical, administrative and
billing contacts, and to postmaster@zunehd.net by e-mail.
A Response was received in electronic copy on June 29, 2009 prior to the Response
deadline; however no hard copy was received. The National Arbitration Forum
therefore does not consider the Response to be in compliance with ICANN Rule 5.
Complainant submitted an Additional Submission to the National
Arbitration Forum on July 1, 2009, which was deemed timely in accordance with
the National Arbitration Forum’s Supplemental Rule 7.
Respondent submitted an Additional Submission to the National
Arbitration Forum on July 1, 2009, which was deemed timely in accordance with
the National Arbitration Forum’s Supplemental Rule 7.
On July 2, 2009, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Joel M. Grossman, Esq., as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
Complainant is the holder of several trademarks in the name Zune.
Complainant asserts that Respondent, with full knowledge of the trademarks,
registered the domain name in question. Complainant first asserts that the
domain name is identical to or substantially similar to the Mark. Complainant
notes that the mere addition of a common term such as “HD” or a gLTD such as
“.net” will not in any way negate similarity between the domain name and the mark.
Complainant cites several decisions under the UDRP in support of this.
Complainant further asserts that Respondent has no rights or legitimate
interests in the name. In this regard, Complainant states that Respondent is
not generally known by the name, and is not affiliated in any way with
Complainant. Complainant points out that on its website, Respondent actually
admits its knowledge of Complainant's trademark, and that Respondent is not
affiliated with Complainant. Additionally, Complainant states that Respondent
is not using the name in connection with a bona
fide offering of goods and services, as respondent is using Complainant’s
mark to provide advertising links and to earn pay-per-click fees when visitors
click on links to Complainant’s competitors.
Finally, Complainant states that the name was registered and is being
used in bad faith. Respondent clearly had knowledge of the mark the time that
it registered the domain name. Moreover, Respondent attempted to trade on
Complainant’s mark, using the mark to attract Internet users to its site, as
the users would assume that the site was affiliated with Complainant. In
addition, Respondent contacted Complainant and offered to sell the name to
Respondent.
B. Respondent
Respondent states that the name is not identical or confusingly similar
to Complainant’s mark, since the letters comprising the word “zune” are used in
a number of other domain names. Thus, Internet users would be familiar with
multiple uses of the letters and would not be confused about any potential connection
to Complainant. Moreover, Respondent implies that Complainant cannot go after
Respondent’s domain name while letting others use the mark with impunity.
Next, Respondent states that the domain name was in fact being used for
legitimate purposes, namely the bona fide
offering of goods and services. Respondent asserts that it is using the
name to sell hard drives that consumers would use in connection with
Complainant’s products. This explains
the letters “hd” in the domain name, which stands for hard drive and not for
high definition.
In connection with Complainant’s
assertion that the mark was registered and is being used in bad faith,
Respondent asserts that it was Complainant which approached Respondent with an
offer to purchase the name for $500. Further, it never intended to divert
traffic from Complainant’s site or to confuse Internet users searching for
Complainant’s site.
C. Additional Submissions
In Complainant’s Additional Submission it notes that it makes no
difference whether the “hd” part of the name stands for high definition or hard
drive. The name is still confusingly similar to the mark. Complainant also
asserts that Respondent’s website at first had Complainant’s unique logo
superimposed on the letters HD. This use of the logo, although later taken down
from Respondent’s site, is further evidence of bad faith, and undercuts any
argument that the use of the term “zune” was a coincidence. Complainant rebuts
Respondent’s “selective prosecution” argument, i.e. that Complainant may not take action against it while allowing
others to use the mark, noting that this is not a defense either under
trademark law or UDRP law. Complainant also rebuts Respondent’s claim that it
was engaged in the bona fide offering
of goods and services, supposedly selling hard drives to use with Complainant’s
products, noting that there was no way to actually purchase such products on
Respondent’s website. As to bad faith, Complainant asserts that it was
Respondent which initiated discussion of selling the name to Complainant,
attaching a letter from Respondent to Complainant’s counsel which
stated: “please advise what compensation will be offered for the transfer of
the domain.” It was only after that request was made by Respondent that
Complainant offered to buy the name for the sum of $500. Respondent’s response
to this offer was to demand compensation that included 5 Zune music players, an
Xbox, a Dell laptop computer, various accessories plus $5,000 in cash,
compensation, and an internship with Complainant, altogether far in excess of
Respondent’s out-of-pocket registration costs.
In Respondent’s Additional Submission it states that while over 3
million Zune music players have been sold by Complainant, the hit rate on
Respondent’s site was very low, only 400 visitors. Respondent asserts that
Complainant is a large corporation which is used to getting its way, but a
neutral view of the facts would show that Respondent did not register or use
the domain name in bad faith.
FINDINGS
The Panel finds (1) that the domain name is
identical to or confusingly similar to a mark in which
Complainant has rights, (2) that Respondent has no rights or legitimate
interests in the name, and (3) that the name was registered and is being used
in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent
is identical or confusingly similar to a trademark or service mark in which the
Complainant has rights;
(2) the 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.
The Panel finds that the name is very similar
to the mark. Neither the insertion of the common letters “hd,” nor the addition
of the gLTD “.net” adequately distinguish the name from the mark, and are
irrelevant for purposes of this analysis. See Jerry Damson, Inc. v.
Respondent is not commonly known by the
domain name, as it is identified in the WHOIS information as “Robert Altman.”
This is one indication that Respondent has no rights or legitimate interests in
the name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July
17, 2006). The Panel also finds that the name was not being used in connection
with a bona fide offering of goods
and services, as Respondent’s site provided no means for conducting sales of
its hard drives, or anything else. Rather the name was being used to earn
pay-per-click fees when visitors clicked on links to Complainant’s competitors.
See Disney Enters., Inc. v. Kamble, FA
918556 (Nat. Arb. Forum Mar. 27, 2007). These uses do not demonstrate any
rights or legitimate interests in the name.
Unlike some respondents, the Respondent in
this matter does not contend that it was unaware of Complainant’s mark at the
time of registration of the domain name. Respondent admits its knowledge of the
name, in its pleadings and on the website. This is clear evidence of
registration in bad faith. See Yahoo! Inc. v.
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zunehd.net>
domain name be TRANSFERRED from Respondent to Complainant.
Joel M. Grossman, Panelist
Dated: July 15, 2009
Click Here to return
to the main Domain Decisions Page.
Click
Here to return to our Home Page
National
Arbitration Forum