Microsoft Corporation v. nonamo c/o nonamo nonamo
Claim Number: FA0912001297882
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA. Respondent is nonamo c/o nonamo nonamo (“Respondent”), Puerto Rico.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain name at issue are <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7hardware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7portable.com>, <windows7recover.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, <windowsforgamers.com>, <windowsforgames.com>, <windowsvistaplace.com>, <windowsvistavirus.com>, and <xbox362.com>, registered with Enom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 8, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 9, 2009.
On December 8, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7hardware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7portable.com>, <windows7recover.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, <windowsforgamers.com>, <windowsforgames.com>, <windowsvistaplace.com>, <windowsvistavirus.com>, and <xbox362.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 December 18, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 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@windows7addon.com, postmaster@windows7antivirus.com, postmaster@windows7compatible.com, postmaster@windows7features.com, postmaster@windows7firewall.com, postmaster@windows7freeware.com, postmaster@windows7hardware.com, postmaster@windows7patch.com, postmaster@windows7place.com, postmaster@windows7plus.com, postmaster@windows7portable.com, postmaster@windows7recover.com, postmaster@windows7reviews.com, postmaster@windows7screensaver.com, postmaster@windows7security.com, postmaster@windows7servicepack.com, postmaster@windows7stuff.com, postmaster@windows7virus.com, postmaster@windowsforgamers.com, postmaster@windowsforgames.com, postmaster@windowsvistaplace.com, and postmaster@windowsvistavirus.com, postmaster@xbox362.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 19, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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." 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 assertions:
1. Respondent’s <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7hardware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7portable.com>, <windows7recover.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, <windowsforgamers.com>, <windowsforgames.com>, <windowsvistaplace.com>, and <windowsvistavirus.com> domain names are confusingly similar to Complainant’s WINDOWS mark.
Respondent’s <xbox362.com> domain name is confusingly similar to Complainant’s XBOX mark.
2. Respondent does not have any rights or legitimate interests in the <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7hardware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7portable.com>, <windows7recover.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, <windowsforgamers.com>, <windowsforgames.com>, <windowsvistaplace.com>, <windowsvistavirus.com>, and <xbox362.com> domain names.
3. Respondent registered and used the <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7hardware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7portable.com>, <windows7recover.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, <windowsforgamers.com>, <windowsforgames.com>, <windowsvistaplace.com>, <windowsvistavirus.com>, and <xbox362.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corp., manufactures, markets, and sells computer software and related products and services. Complainant has offered these products and services since 1975. Complainant began using its WINDOWS mark in 1983 and has promoted it since that time. Complainant launched its video game entertainment system under its XBOX mark in 1998. Complainant holds numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its WINDOWS (e.g., Reg. No. 1,872,264 issued January 10, 1995) and XBOX marks (e.g., Reg. No. 2,646,465 issued November 5, 2002).
Respondent registered the disputed domain names no earlier
than August 9, 2007. The <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>,
<windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7patch.com>, <windows7place.com>,
<windows7plus.com>, <windows7reviews.com>, <windows7screensaver.com>,
<windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>,
<windows7virus.com>, and <windowsforgamers.com> domain
names resolve to parked websites containing hyperlinks and advertisements
unrelated to Complainant. The windows7hardware.com>, <windows7portable.com>, <windows7recover.com>,
<windowsforgames.com>, <windowsvistavirus.com>, and <xbox362.com>
domain names do not resolve to active websites. The <windowsvistaplace.com> domain
name resolves to a website purporting to be Complainant’s official website, and
offering downloadable software presumably for Respondent’s commercial benefit.
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."
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.”).
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.
The Panel finds that Complainant has established rights in the WINDOWS and XBOX marks pursuant to Policy ¶ 4(a)(i) through Complainant’s USPTO registrations of the mark. 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)); 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.”).
Respondent’s <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7hardware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7portable.com>, <windows7recover.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, <windowsforgamers.com>, <windowsforgames.com>, <windowsvistaplace.com>, and <windowsvistavirus.com> domain names are confusingly similar to Complainant’s WINDOWS mark. The disputed domain names include Complainant’s entire mark and simply add descriptive or generic terms or numbers such as “7,” which refers to Complainant’s new operating system product, and “vista,” which refers to Complainant’s past operating system product. The Panel finds the additions of descriptive or generic terms and numbers fail to adequately distinguish the disputed domain names from Complainant’s mark. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to the complainant’s MILLER mark, because “[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).”); see also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that the addition of the numeral 4 in the domain name <4icq.com> does nothing to deflect the impact on the viewer of the mark ICQ and is therefore confusingly similar); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
The disputed domain names also include a generic top-level domain (“gTLD”) “.com” with Complainant’s mark. However, the addition of a gTLD is irrelevant in conducting a Policy ¶ 4(a)(i) analysis. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Thus, the Panel finds these disputed domain names are confusingly similar to Complainant’s WINDOWS mark pursuant to Policy ¶ 4(a)(i).
Respondent’s <xbox362.com> domain name is confusingly similar to Complainant’s XBOX mark. The disputed domain name simply combines Complainant’s entire mark with a generic number “362” and a gTLD. The Panel finds the addition of a number fails to sufficiently distinguish the disputed domain name from Complainant’s mark, and the addition of a gTLD is irrelevant under Policy ¶ 4(a)(i). See supra Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark); see also supra Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003). Therefore, the Panel concludes Respondent’s <xbox362.com> domain name is confusingly similar to Complainant’s XBOX mark under Policy ¶ 4(a)(i).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has asserted that Respondent does not have any rights or legitimate interests in the disputed domain names. The burden shifts to the respondent to prove it does have rights or legitimate interests when a complainant makes a prima facie case in support of its allegations under Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Respondent’s failure to respond to the Complaint allows the Panel to infer that Respondent does not have rights or legitimate interests in the disputed domain names. However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence); see also Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000) (finding no rights or legitimate interests where the respondent fails to respond).
Respondent uses the <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, and <windowsforgamers.com> domain names to resolve to parked websites containing hyperlinks and advertisements unrelated to Complainant. Respondent likely receives click-through fees from these links and advertisements. The Panel finds this use of confusingly similar disputed domain names does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain name under 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)); see also Constellation Wines U.S., Inc. v. Tex. Int’l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant).
Respondent fails to make an active use of the <windows7hardware.com>, <windows7portable.com>, <windows7recover.com>,
<windowsforgames.com>, <windowsvistavirus.com>, and <xbox362.com>
domain names. The Panel finds
Respondent’s failure to make an active use of the disputed domain names is not
a bona fide offering of goods
or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of
the disputed domain name under Policy ¶ 4(c)(iii). See
Bloomberg L.P. v. SC Media Servs. &
Info. SRL, FA 296583
(Nat. Arb. Forum Sept. 2, 2004) (“Respondent is wholly appropriating Complainant’s
mark and is not using the <bloomberg.ro> domain name in connection with
an active website. The Panel finds that
the [failure to make an active use] of a domain name that is identical to
Complainant’s mark is not a bona fide
offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a
legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also George Weston
Bakeries Inc. v. McBroom, FA
933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no
rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i)
or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain
name).
Respondent’s <windowsvistaplace.com>
domain name resolves to a website purporting to be Complainant, and
offering downloadable software presumably for Respondent’s commercial
benefit. The Panel finds Respondent’s
attempt to pass itself off as Complainant for Respondent’s own commercial benefit
is not a bona fide offering of
goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair
use of the disputed domain name under Policy ¶ 4(c)(iii). 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 Mortgage
Research Center LLC v. Miranda, FA
993017 (Nat. Arb. Forum July 9, 2007) (“Because [the] respondent in this case
is also attempting to pass itself off as [the] complainant, presumably for
financial gain, the Panel finds the respondent is not using the
<mortgageresearchcenter.org> domain name for 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).”).
Therefore, the Panel concludes Panel ¶ 4(a)(ii) has been satisfied.
Respondent uses the <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, and <windowsforgamers.com> domain names to resolve to parked websites containing third-party hyperlinks and advertisements which are unrelated to Complainant. The Panel infers that Respondent receives click-through fees from the aforementioned hyperlinks and advertisements. Internet users, interested in Complainant and Complainant’s computer software and related products and services, may become confused as to Complainant’s affiliation with and sponsorship of the disputed domain name and resolving website. Respondent attempts to profit from this confusion. Therefore, the Panel finds Respondent’s use of the disputed domain names constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to unrelated third-party websites); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Respondent uses the <windowsvistaplace.com> domain name to resolves to a website in which Respondent purports to be Complainant’s official website. The Panel finds Respondent’s use of a confusingly similar disputed domain name, and its attempt to pass itself off as Complainant for commercial gain, constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109 (eResolution June 12, 2000) (finding that the respondent violated Policy ¶ 4(b)(iv) because the respondent admittedly used the complainant’s well-known mark to attract users to the respondent's website); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain).
The Panel finds that it may consider the totality of the
circumstances when conducting a Policy ¶ 4(a)(iii) analysis, and that it is not
limited to the enumerated factors in Policy ¶ 4(b). See Do The Hustle, LLC
v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of
bad faith] in Paragraph 4(b) are intended to be illustrative, rather than
exclusive.”). Respondent fails to make an active use
of the <windows7hardware.com>, <windows7portable.com>, <windows7recover.com>,
<windowsforgames.com>, <windowsvistavirus.com>, and <xbox362.com>
domain names. The Panel finds
Respondent’s failure to make an active use of the disputed domain names is
evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See
DCI S.A. v. Link Commercial Corp.,
D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to
make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii)
of the Policy); see also Clerical Med.
Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)
(finding that merely holding an infringing domain name without active use can
constitute use in bad faith).
The Panel finds Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windows7addon.com>, <windows7antivirus.com>, <windows7compatible.com>, <windows7features.com>, <windows7firewall.com>, <windows7freeware.com>, <windows7hardware.com>, <windows7patch.com>, <windows7place.com>, <windows7plus.com>, <windows7portable.com>, <windows7recover.com>, <windows7reviews.com>, <windows7screensaver.com>, <windows7security.com>, <windows7servicepack.com>, <windows7stuff.com>, <windows7virus.com>, <windowsforgamers.com>, <windowsforgames.com>, <windowsvistaplace.com>, <windowsvistavirus.com>, and <xbox362.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: February 2, 2010
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