Microsoft Corporation v. Vivek J. Agarwal
Claim Number: FA1111001415800
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.
Respondent is Vivek J. Agarwal (“Respondent”), represented by Stephen R. Barrese of Dilworth & Barrese, LLP, New York, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are: <microsoftclouddrive.com>, <microsoftmusiccloud.com>, <microsoftmusicdrive.com>, <microsoftvideoplayer.com>, <office365force.com>, <skypeclouddrive.com>, and <skypemusicplayer.com>, (the “Domain Names”) registered with GoDaddy.com, 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.
Clive Lincoln Elliott as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 16, 2011; the National Arbitration Forum received payment on November 16, 2011.
On November 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that Respondent is the current registrant of the Domain Names, all of which are registered with GoDaddy.com, Inc, as follows:
Domain Name Date Registered
(a) <office365force.com> April 10, 2011;
(b) <microsoftclouddrive.com> May 10, 2011;
(c) <microsoftmusicdrive.com> May 10, 2011;
(d) <skypeclouddrive.com> May 10, 2011;
(e) <skypemusicplayer.com> May 11, 2011;
(f) <microsoftmusiccloud.com> May 11, 2011; &
(g) <microsoftvideoplayer.com> May 12, 2011.
GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. 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 November 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 7, 2011 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@microsoftclouddrive.com, postmaster@microsoftmusiccloud.com, postmaster@microsoftmusicdrive.com, postmaster@microsoftvideoplayer.com, postmaster@office365force.com, postmaster@skypeclouddrive.com, and postmaster@skypemusicplayer.com. Also on November 17, 2011, 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 December 7, 2011.
Complainant submitted a timely Additional Submission on December 8, 2011.
Respondent submitted a timely Additional Submission on December 12, 2011.
On December 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Clive Elliott as Panelist.
Complainant requests that the Domain Names be transferred from Respondent to Complainant.
A. Complainant
Complainant states that it was founded in 1975, and it is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. It is also the owner of numerous proprietary trademarks for its goods and services, including the world famous trademark MICROSOFT (the “MICROSOFT Mark”).
Complainant contends that, according to surveys carried out by Interbrand Corp., the MICROSOFT Mark was the third most valuable brand in the world in 2009 and 2010. The MICROSOFT Mark has also been found by panelists of the National Arbitration Forum and WIPO to be an internationally famous and distinctive mark. Complainant asserts that it owns more than 25 United States registrations for the MICROSOFT Mark, and more than 600 trademark and service mark applications and registrations for the MICROSOFT Mark throughout the world. These registrations were applied for and issued prior to the registration of four of the Domain Names that include the MICROSOFT Mark which were all registered in May of 2011.
Complainant advises that it began using MICROSOFT OFFICE (the “OFFICE Mark”) as a trademark as early as 1989 and has used it continuously since then. It sells its MICROSOFT OFFICE software for word processing, information management, presentations and other tasks.
In October of 2010, several months prior to the registration of the Domain Name <office365force.com>, Microsoft publically announced its newest OFFICE product, OFFICE 365. When that announcement was made, the OFFICE 365 product was available for testing by several thousand organizations in 13 countries and regions around the world. The OFFICE 365 product provides for subscription based collaboration and productivity tools to be delivered to professionals and businesses through the cloud and is particularly useful for businesses that do not have IT staff or expertise in house. Complainant advises that it is also the owner of the domain name <office365.com> where it advertises its OFFICE 365 product throughout the world.
Complainant accepts that it did not have a registered trademark for the mark OFFICE 365 prior to the registration of the Domain Name <office365force.com>. It submits that it is not required to have a registration to establish prior trademark rights under the Policy as it can rely on its common law rights. Complainant states that it publically announced its new OFFICE 365 product and was actively beta testing it in thousands of businesses around the world months prior to the registration of the Domain Name <office365force.com> and as such, it contends that it has established prior common law rights in OFFICE 365.
Complainant asserts that in 2003, Skype Global S.a.r.l. began use of the trademark SKYPE in connection with real time instant messaging and voice communication technology over the Internet. The SKYPE trademark is registered in the United States and around the world. In 2010, Skype had 170 million connected users of its services, and it is the leading Internet telecommunications company. Complainant asserts that on May 10, 2011, Microsoft and Skype Global announced that Microsoft had officially acquired Skype for $8.5 billion dollars. Complainant submits that on that same day, Respondent registered the Domain Names <skypeclouddrive.com> and <skypemusicplayer.com>. Complainant contends that it had established rights in the SKYPE trademarks due to its acquisition of Skype.
Complainant submits that the Domain Names <microsoftclouddrive.com>, <microsoftmusiccloud.com>, <microsoftmusicdrive.com>, <microsoftvideoplayer.com>, <skypeclouddrive.com> and <skypemusicplayer.com> are all confusingly similar to its MICROSOFT or SKYPE trademarks because they each incorporate Complainant's famous MICROSOFT or SKYPE marks in their entirety, adding only the generic terms "cloud", "drive", "music", "video player" and "musicplayer", all of which directly relate to Complainant's services, along with the generic top level domain, ".com."
Complainant contends that these elements are insufficient to negate the confusing similarity between Respondent's Domain Names and Complainant's marks, particularly where the added elements relate directly to Complainant's business.
Complainant contends that the Domain Name <office365force.com> is confusingly similar to Complainant's OFFICE 365 trademark because it incorporates Complainant's OFFICE 365 trademark in its entirety, adding only the generic term "force" along with the generic top level domain, ".com." Complainant submits that these elements are insufficient to negate the confusing similarity between Respondent's Domain Name and Complainant's mark.
Complainant states that Respondent has no rights or legitimate interests in the Domain Names, that it is not commonly known by Complainant's MICROSOFT, SKYPE or OFFICE 365 marks, nor has Respondent used the Domain Names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
Complainant asserts that each of the Domain Names are parked with Godaddy.com's parking services, which displays links to third party websites and provides click-through revenue to Respondent. Complainant submits that it is for these reasons that Respondent has no rights or legitimate interests in the Domain Names.
Complainant also asserts that Respondent has registered the Domain Names in bad faith. Complainant contends that because Complainant's MICROSOFT, SKYPE and OFFICE 365 marks were familiar to many consumers at the time Respondent registered the Domain Names, Respondent has registered the Domain Names with knowledge of Complainant's rights and intended to create an association with Complainant and its products and services, especially when one considers the Domains Names in combination.
Complainant submits that Respondent's purposeful selection of domain names incorporating the famous MICROSOFT mark, SKYPE mark and the OFFICE 365 mark, and use in connection with revenue-generating websites, shows intent to mislead or confuse consumers as to the source or affiliation of the websites. Further, Complainant submits that Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant's famous trademarks, and this conduct of diversion shows bad faith registration and use.
Complainant notes that Respondent has also registered domain names that incorporate other third party trademarks, including AMAZON, APPLE, BLACKBERRY, CISCO, DELL, GOOGLE, HP, NOKIA, SAMSUNG, SONY and YAHOO. This registration of multiple domain names that include third party trademarks, Complainant submits, is further evidence of Respondent’s bad faith registrations.
B. Respondent
Respondent states that it will voluntarily transfer the following Domain Names to Complainant: <microsoftclouddrive.com>; <microsoftmusiccloud.com>; <microsoftmusicdrive. com>; <microsoftvideoplayer.com>; <skypeclouddrive.com> and <skypemusicplayer.com>.
Respondent states that its response specifically responds to the statements and allegations contained in the Complaint regarding Respondent's Domain Name <office365force.com> and that Respondent wishes to retain registration and use of that Domain Name.
Respondent claims that while a trademark registration may not be necessary if a complainant can establish common law trademark rights in its mark, the timing related to the establishment of rights plays an important role in determining whether Policy 4(a)(i) has been satisfied.
Respondent states that it registered the Domain Name <office365force.com> on April 10, 2011. Respondent notes that while Complainant only filed its U.S. trademark application for OFFICE 365 on August 2, 2011, Complainant alleges that it established common law rights in the mark OFFICE 365 predating Respondent's registration of the Domain Name through an announcement on October 19, 2010 and claims of beta testing. Respondent argues that there was no evidence provided by Complainant to support this allegation, other than a copy of its website which clearly stated that "OFFICE 365 would be available next year". Respondent argues that to establish common law rights complainant must show that they have "used" the mark in commerce. Section 45 of the Trademark Act, 15 U.S.C. § 1127, defines "commerce" as "all commerce which may lawfully be regulated by Congress."
Respondent submits that Complainant did not make "use" of OFFICE 365 through the announcement on October 19, 2010 in accordance with U.S. law. Respondent contends that it has been decided that announcements of the release of goods/services on websites are insufficient on their own to establish common law rights prior to the date of the Domain Name registration.
Respondent denies that its Domain Name is identical or confusingly similar to the Complainant's mark "OFFICE 365" and asserts that <office365force.com> is sufficiently distinct in text and creates a different overall impression than OFFICE 365. Respondent points out that Complainant is citing cases in its defence which do not apply as the term "OFFICE" as applied to the goods/services in Complainant’s pending U.S. trademark application is a descriptive term in which no rights can be claimed apart from the mark. Respondent argues that the fact that the marks share common words like "office" and/or "365" does not in and of itself make them likely to cause confusion, which is true when marks share a descriptive word like "office". Respondent contends that its Domain Name is differentiated by the term "force" which is similar to how other registrants differentiate marks which incorporate the term "office" with similar goods and services.
Respondent asserts that before the notice of the dispute, Respondent's use of, or demonstrable preparations to use, the Domain Name or a name corresponding to the Domain Name was in connection with a bona fide offering of goods or services and advises that its registration of the Domain Name was in preparation for establishing use in connection with a bona fide offering of goods or services with a corresponding company name. In this regard Respondent states that it established a company, 365FORCE Inc. on May 20, 2011 adopting the Domain Name <office365force.com>. Respondent asserts that this company provides cloud technology and consulting, cloud infrastructure and CPO (Cloud Processed Outsourcing) services.
Respondent advises that as a part of its plan to establish the global platform, it filed trademark applications with the Office of the Trade Marks Registry in India on May 23, 2011 for registration of the marks "365force" and "365cloudforce", in association with providing various internet related services.
Respondent advises it also filed trademark applications with the USPTO for registration of the marks "365force" and "365cloudforce" with U.S. Patent and Trademark Office on November 14, 2011 in association with providing internet services.
Respondent argues that there was no way that it would have known of the mark "OFFICE 365" or Complainant's alleged rights thereof. Respondent contends that if it had registered the Domain Name in bad faith with the knowledge of the announcement, it would have not registered the Domain Name as late as April 2011. Respondent denies the allegation that it registered the Domain Name in bad faith.
Respondent asserts that it does not benefit commercially from the parked site and refutes Complainant's accusations. Respondent submits that this attempt by Complainant is another attempt by a large company (Microsoft) trying to bully Respondent and steal a Domain Name that is valuable and could also be considered as reverse bad faith.
C. Complainant’s Additional Submissions
Complainant refutes Respondent’s suggestion that Complainant provides no evidence of its use of OFFICE 365 prior to the registration of the domain name other than a copy of its own website. Complainant points out that the evidence it provided with its Complaint included a public announcement by Microsoft of OFFICE 365 which was made on October 19, 2010, some 6 months before the registration of <office365force.com>. This same press release noted that Microsoft was launching the <office365.com> domain name that same day and was beta testing the product in a few thousand organizations in 13 countries and regions around the world.
Complainant argues that Panelists have uniformly found that promotion of a product that is extensive and widespread is sufficient to establish secondary meaning in a mark.
Complainant contends that due to the extensive and widespread press relating to the OFFICE 365 product, the extensive beta testing worldwide, and the promotion through the <office365.com> domain name prior to April 10, 2011, it has established common law rights in the trademark OFFICE 365 prior to the registration date of the Domain Name.
Complainant refutes Respondent’s claims that it did not know of the mark OFFICE 365 prior to registering the domain name <office365force.com>. Complainant states that its OFFICE 365 product is related to the cloud and that Respondent has stated in its Response that 365Force, Inc. is a business that will be focusing on cloud technology and consulting. Complainant contends that the amount of publicity surrounding the announcement of Complainant's OFFICE 365 was substantial and would have been well known by persons interested in cloud computing.
D. Respondent’s Additional Submissions
Respondent points out that Complainant is still insisting that the thirty-minute press release that clearly states that the product "will be available next year" and beta testing is enough to establish common law rights. As explained in Respondent's first response, a press release of future use is not enough to establish common law rights.
Respondent further notes that Complainant has submitted no evidence of beta testing and sales required to establish common law rights. Complainant's Exhibit B says "a limited beta is available free from <office365.com>". This limited beta is promotional at best and cannot be used to establish rights.
Respondent asserts that <office365force.com> is not confusingly similar to OFFICE 365 because it is sufficiently distinct in text, sound and overall appearance. The fact that the terms "office" and "365" are descriptive or even generic are just additional factors to show how weak these terms are. When marks share weak words, even minor differences, such as stylization, design elements, or other words, tend to negate the likelihood of confusion. Respondent asserts that, even if Complainant had any prior rights in OFFICE 365, it should be accorded very limited protection.
Respondent contends that Complainant is implying that because Respondent is in the business of cloud technology that it should have known about the OFFICE 365 press release. Respondent points out that that fact that it did not know about OFFICE 365 is proof that Complainant has not "used" the mark sufficiently to establish common law trademark rights.
Respondent claims that it is building a business in cloud technology and has the Domain Name parked while doing so. It also claims that it did not register the Domain Name for the purposes of resale and advises that Complainant approached Respondent and offered to buy the Domain Name from Respondent. Respondent contends that when Respondent refused to sell <office365force.com>, Complainant initiated this Complaint in an effort to bully Respondent into handing over the Domain Name.
For the reasons set out below the Panel is of the view that it is neither necessary nor appropriate to deal with the merits of the bulk of the complaint given Respondent’s agreement to transfer those Domain Names to Complainant. However, the <office365force.com> Domain Name remains in dispute. For the reasons set out below the Panel concludes that the Domain Name should be transferred to Complainant.
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/s registered by Respondent are 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/s; and
(3) the Domain Name/s have has been registered and are being used in bad faith.
Preliminary Procedural Issue: Consent to Transfer
Respondent consents to transfer the <microsoftclouddrive.com>, <microsoftmusiccloud.com>, <microsoftmusicdrive.com>, <microsoftvideoplayer.com>, <skypeclouddrive.com>, and <skypemusicplayer.com> Domain Names. However, after the initiation of this proceeding, GoDaddy.com placed a hold on Respondent’s account and therefore Respondent cannot transfer the Domain Names while this proceeding is still pending. As a result, the Panel may find that in a circumstance such as this, where Respondent has not contested the transfer of the Domain Names but instead agrees to transfer the Domain Names to Complainant, to forego the traditional UDRP analysis and order an immediate transfer of the <microsoftclouddrive.com>, <microsoftmusiccloud.com>, <microsoftmusicdrive.com>, <microsoftvideoplayer.com>, <skypeclouddrive.com>, and <skypemusicplayer.com> Domain Names. Alternatively, the Panel may decide that Complainant has not implicitly consented in its Complaint to the transfer of the Domain Names without a decision on the merits by the Panel. The Panel may find that the “consent-to-transfer” approach is but one way for cybersquatters to avoid adverse findings against them.
It should be noted of course that in this particular case Respondent has not consented to a transfer of the <office365force.com> Domain Name. Accordingly, this aspect of the complaint still needs to be addressed. In the circumstances, the Panel is of the view that it would be appropriate to accept the “consent to transfer” approach with regard to all but the <office365force.com> Domain Name and to deal with the merits in relation to that Domain Name alone.
Identical or Confusingly Similar: Policy ¶ 4(a)(i).
Complainant argues that it has rights in the MICROSOFT trademark (the " MICROSOFT Mark") because it has registered the mark with the United States Patent and Trademark Office (“USPTO”) and a range of other trademark authorities around the world. Complainant asserts that MICROSOFT is one of the best-known trademarks in the world. The Panel has no difficulty in concluding that Complainant has rights by way of both registration and at common law in the MICROSOFT Mark
Complainant also relies on rights in the SKYPE mark because of its various USPTO trademark registrations and through extensive use by its predecessor in business. Again the Panel has no difficulty in finding the existence of relevant rights in favour of Complainant.
Complainant then asserts that it has established common law rights in the OFFICE 365 mark. The situation here is less clear-cut. However, panels have held that a complainant need not present evidence of a trademark registration if it can demonstrate continuous use and the subsequent acquisition of secondary meaning sufficient to establish common law rights in the mark. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules do not require that the complainant's trademark or service mark be registered by a government authority or agency for such rights to exist). The Panel accepts that a trademark registration for the OFFICE 365 mark is not necessary.
Complainant contends and provides evidence that in October 2010, it publicly announced its newest product, identified under the OFFICE 365 mark. After the announcement, Complainant alleges that the product was available for testing by numerous organizations around the world and by virtue of such activities has established common law rights in the OFFICE 365 mark under Policy ¶ 4(a)(i).
In its Additional Submission, Complainant counters Respondent’s argument that Complainant could not have established common law rights prior to April 17, 2011 since that date is the date noted as “first use in commerce” on Complainant’s trademark application for the OFFICE 365 mark. Complainant contends that regardless of a stated first use in commerce date on a trademark application, a complainant is always allowed to establish an earlier date of first use, which Complainant does with the evidence of its announcement of the OFFICE 365 product on October 19, 2010. Complainant contends that this announcement was the result of a very public 30 minute press release that was covered by many parties that uniformly follow Microsoft products. See Complainant’s Additional Submission Annex A. Complainant also provides further evidence in its Additional Submission of news coverage and publicity relating to its OFFICE 365 mark and product prior to the disputed domain name’s registration. See Complainant’s Additional Submission Annex B.
The Panel is satisfied that this evidence of widespread use and the demonstrated acquisition of secondary meaning is sufficient to hold that Complainant has common law rights in the OFFICE 365 mark pursuant to Policy ¶ 4(a)(i), dating back to October 19, 2010. See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that the complainant had common law rights in the McMULLEN COVE mark because the complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
Complainant alleges, both in its Complaint and its Additional Submission, that Respondent’s <office365force.com> Domain Name is confusingly similar to Complainant’s OFFICE 365 mark. The Panel accepts the submission that that the only difference between the Domain Name and the OFFICE 365 mark is the addition of the term “force,” which is not distinguishing under the Policy and finds that neither the presence of a generic term nor a gTLD can negate a finding of confusing similarity pursuant to Policy ¶ 4(a)(i).
The Panel thus concludes that Respondent’s <office365force.com> Domain Name is confusingly similar to Complainant’s OFFICE 365 mark, pursuant to Policy ¶ 4(a)(i).
Rights and Legitimate Interests: Policy ¶ 4(a)(ii).
The 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.
Complainant contends that Respondent is not commonly known by the OFFICE 365 mark or by the Domain Name corresponding thereto. Complainant alleges that the <office365force.com> Domain Name displays (like the other domain names Respondent has voluntarily agreed to transfer) a listing of pay-per-click links to third-party websites, some of which offer services or products competing with those of Complainant. In its Additional Submission, Complainant states that Respondent’s arguments concerning its 365Force Inc. company and related trademark applications do not establish Respondent’s rights and legitimate interests in the <office365force.com> Domain Name. Complainant asserts that using the Domain Name to host these links directories is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use according to Policy ¶ 4(c)(iii).
The Panel accepts this submission. See Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that the respondent’s diversionary use of the complainant’s mark to attract Internet users to its own website, which contained a series of hyperlinks to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the disputed domain names).
Accordingly, the Panel finds that this use of the Domain Name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Registration and Use in Bad Faith: Policy ¶ 4(a)(iii).
Complainant contends that Respondent has not only registered multiple domain names infringing on its mark but also has registered multiple domain names incorporating other third-party trademarks, such as AMAZON, APPLE, BLACKBERRY, CISCO, DELL, etc. The Panel is reluctant to rely on this submission given that Complainant provided no evidence of previous UDRP proceedings showing Respondent’s infringing use of these third-party trademarks.
Nevertheless, the Panel considers it appropriate to take into account evidence of Respondent’s bad faith pattern of domain name registration under Policy ¶ 4(b)(ii) in Respondent’s registration of the multiple Domain Names prima facie infringing on Complainant’s mark that are the subject of this proceeding, and notwithstanding the fact that the consent-to-transfer approach does not require a formal finding on the merits.
The Panel accepts that at least some of Respondent’s Domain Names resolve to pay-per-click link directories that divert consumers away from Complainant to third-party websites. Based on the screenshots submitted by Complainant, the Panel is satisfied that some of the third-party websites advertised are likely to be competitors of Complainant. It is now well-established that such activities may demonstrate an intent to disrupt Complainant’s business and bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)).
In its Additional Submission, Complainant argues that the <office365force.com> Domain Name’s current parking with GoDaddy.com is the same use as the other Domain Names in this proceedings and the other domain names Respondent owns that involve third-party trademarks. Complainant also asserts in its Additional Submission that even though Respondent argues that the <office365force.com> Domain Name is only parked while it is establishing its 365Force Inc. business, Respondent’s asserted intended use in connection with its cloud business would also be illegitimate under the Policy as Respondent would be profiting from the confusion and association with Complainant’s mark. There is merit in this submission.
In its Additional Submission, Complainant further contests Respondent’s assertion that it did not know of Complainant’s OFFICE 365 mark prior to registering the <office365force.com> Domain Name. Complainant argues that considering Respondent’s statements that it is involved in a business focusing on cloud technology and consulting, Respondent would surely have been aware of Complainant’s new OFFICE 365 product as the publicity was substantial and the product relates to the cloud. The Panel infers that Respondent was likely to have actual knowledge of Complainant's intentions around its new OFFICE 365 product. The Panel also infers that the fact that Respondent registered a large number of other MICROSOFT related domain names and made no effort to defend its actions suggests it is not innocent, and it is hard to accept that under such circumstances Respondent stumbled on the OFFICE 365 name not knowing of its obvious significance and value.
On this basis, the third element of the Policy is established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftclouddrive.com>, <microsoftmusiccloud.com>, <microsoftmusicdrive.com>, <microsoftvideoplayer.com>, <office365force.com>, <skypeclouddrive.com>, and <skypemusicplayer.com> Domain Names be TRANSFERRED from Respondent to Complainant.
Clive Elliott, Panelist
Dated: January 2, 2012
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