Microsoft Corporation v. YUNFENG LAN / INDIVIDUAL
Claim Number: FA1611001702888
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is YUNFENG LAN / INDIVIDUAL (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <win10appstore.net>, registered with eNom, Inc.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 14, 2016; the Forum received payment on November 14, 2016.
On November 15, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <win10appstore.net> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 6, 2016 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@win10appstore.net. Also on November 16, 2016, 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 Forum transmitted to the parties a Notification of Respondent Default.
On December 13, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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
Complainant contends as follows:
Complainant, Microsoft Corporation, is a producer of software and provider of services and solutions that are used around the world. Complainant uses its WINDOWS mark in connection with its many software and service offerings, including the WINDOWS 10 operating system.
Complainant has registered the WINDOWS marks with the United States Patent and Trademark Office (“USPTO”) as well as other trademark agencies throughout the world. (e.g., Reg. No. 1,872,264, registered Jan. 10, 1995).
Respondent’s <win10appstore.net> is confusingly similar to Complainant’s trademark as it incorporates a common abbreviation for the WINDOWS mark and adds the descriptive or generic terms “10” and “App Store” as well as the generic top-level domain “.net.”
Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by Complainant’s WINDOWS mark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain name addresses a site that prominently displays Complainant’s marks and advertises applications (apps) for Complainant’s products as well as applications for third-party products. Respondent’s use of Complainant’s marks to lure and mislead consumers to Respondent’s site clearly violates the Policy.
Respondent’s registration and use of the disputed domain name shows bad faith because Respondent incorporates Complainant’s famous WINDOWS mark into the disputed domain and uses Complainants marks and products at the corresponding website to create the false impression of a website that is sponsored by or otherwise endorsed by Complainant. By cultivating this confusion, Respondent presumably profits from its diversionary scheme, a scheme proscribed by Policy ¶ 4(b)(iv). Additionally, it is clear from the domain name and its use that Respondent had actual knowledge of Complainant’s rights in the WINDOWS mark.
B. Respondent
Respondent failed to submit a formal Response in this proceeding. Instead Respondent responded by email to the Forum stating as follows.
Respondent’s <win10appstore.net> is not confusingly similar as it does not contain the WINDOWS mark. “Win” as used in the disputed domain name does refer to the WINDOWS product, but Complainant does not have rights in a WIN mark. Complainant also does not have rights to “App Store.”
Respondent’s domain name is not being used in bad faith, but rather addresses a website from which WINDOWS users can conveniently get apps. In this way it works for the WINDOWS product and its users, not against it.
Respondent requests that if <win10appstore.net> is found to be infringing, Respondent be given 1-3 months to migrate the site, at which point Respondent agrees to transfer the domain name to Complainant.
Complainant has rights in the WINDOWS mark through its registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in its relevant trademarks.
Respondent uses the at-issue domain name to address a website that prominently displays Complainant’s marks and advertises applications for Complainant’s products as well as applications for third-party products.
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 formal response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules and Respondent’s email to the Forum responding to the Complaint. 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 (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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of its WINDOWS mark with the USPTO is sufficient to allow the Panel to find that Complainant has rights in a mark under the Policy. See Paisley Park Enters. v. Lawson, FA 384834 (Forum Feb. 1, 2005) (concluding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Respondent’s domain name contains a common abbreviation of Complainant’s WINDOWS trademark -“win”, the numeral “10,” the generic term “appstore” and the top level domain name “.net”. Domain names incorporating “win” as an abbreviation for Complainant’s WINDOWS trademark have been found to be confusingly similar to the WINDOWS trademark notwithstanding the abbreviation was accompanied by generic terms and a necessary top-level domain name, as here. It is clear by Respondent’s inclusion of the number “10” –the most recent version of the WINDOWS operating system and the suggestive term “appstore” in its at-issue domain name, that “win” references the WINDOWS trademark. Moreover, Respondent admits in its email response that “win” references WINDOWS. Therefore, the Panel finds that Respondent’s <win10appstore.net> domain name is confusingly similar to Complainant’s WINDOWS trademark pursuant to Policy ¶ 4(a)(i). See Microsoft Corp. v. Wicky Blown/WB FA 1610585 (Forum, Apr. 24, 2015) (finding <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, <windows10keys.com>, <windows10productkeys.com> and <windows81key.com> confusingly similar to the WINDOWS trademark); see also Morgan Stanley v. Eugene Sykorsky / private person, FA 1651901 (Forum Jan. 19, 2016) (concluding that the addition of a generic term and top level domain to a trademark is inconsequential under a Policy ¶ 4(a)(i) analysis).
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Absent contrary evidence of Policy ¶4(c) circumstances, or other evidence supporting a finding of Respondent’s having rights or legitimate interests in the domain name, Complainant’s prima facie showing acts conclusively.
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the at-issue domain name.
WHOIS information for the at-issue domain name identifies the domain name’s registrant as “Yunfeng Lan.” Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services and there is nothing in the record which tends to otherwise show that Respondent may be known by the at-issue domain name. Therefore, the Panel concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (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 disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Furthermore, Respondent’s at-issue domain name addresses a website which prominently displays the name “Windows 10 App Store” along with Complainant’s mark, making it appear to be the official store for WINDOWS 10 applications when it is not. Respondent’s use of the at-issue domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corp. v. Yungfeng Lan, FA 1687600 (Forum, Sept. 14, 2016) (finding the use of <windows10appstore.net> to pass itself off as Microsoft was not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name).
The at-issue domain name was registered and used in bad faith. As discussed below, Policy ¶4(b) specific bad faith circumstances as well as other circumstances are present which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
As mentioned above regarding Policy ¶ 4(a)(ii), Respondent uses the <win10appstore.net> domain name to create the false impression that the domain name’s referenced website is sponsored or endorsed by Complainant. Such use of the domain name demonstrates Respondent’s bad faith registration and use of <win10appstore.net> under Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Additionally, Respondent registered the <win10appstore.net> domain name with actual knowledge of Complainant’s WINDOWS trademark. Respondent’s knowledge of Complainant’s mark is inferred from the notoriety of Complainant’s famous trademark, as well as from Respondent’s scheme to improperly exploit the mark as discussed above. What’s more, Respondent admits by email that the term “win” in the <win10appstore.net> domain name is a reference to WINDOWS. Under these circumstances it is inconceivable that Respondent was unaware of Complainant’s mark when it registered the at-issue domain name. Respondent’s actual knowledge of Complainant’s rights in the WINDOWS mark prior to its registering the at-issue domain name further urges that Respondent registered and used the at-issue domain name in bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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"); see also Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <win10appstore.net> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: December 14, 2016
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