Microsoft Corporation v. Nicholas Rahn
Claim Number: FA1701001711098
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Nicholas Rahn (“Respondent”), Nevada, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftup.com>, registered with GoDaddy.com, LLC.
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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on January 5, 2017; the Forum received payment on January 5, 2017.
On January 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <microsoftup.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 January 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2017 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@microsoftup.com. Also on January 6, 2017, 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 February 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Richard Hill 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 states that it is a worldwide leader in software, services and solutions. It has rights in the MICROSOFT mark based upon numerous registrations in the United States and other trademark agencies throughout the world, with rights dating back to at least 1982. The mark is famous.
According to Complainant, the disputed domain name is confusingly similar to its mark, as it contains the mark in its entirety, merely differing through the addition of the term “up” and the generic top-level domain (“gTLD”) “.com.” Additionally, the disputed domain name constitutes a typosquatting of Complainant’s legitimate domain name <microsofthup.com>. Complainant cites UDRP precedents to support its position.
Complaint alleges that Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name, nor has Complainant granted Respondent any license or other permission to use the MICROSOFT mark in any form. Respondent’s use of the disputed domain does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain name resolves to a website that Respondent is using to pass off as Complainant and offer downloads of various third-party software products. In particular, Respondent uses the disputed domain name in connection with a site that, at first glance, appears to be the actual Microsoft HUP site, using the prominent MICROSOFT HUP name at the top of each page. In fact, the site merely advertises downloads of various third party software products such as ManageEngine Service Desk Plus IT Help Desk Software and a product called From DOC to PDF, none of which are related to Microsoft or its Home Use Program. It is clear that Respondent is receiving revenues from such downloads and using the famous MICROSOFT trademark to receive those revenues. Complainant cites UDRP precedents to support its position.
Further, says Complainant, Respondent registered and is using the disputed domain name in bad faith. Respondent is using the disputed domain name to create the false impression of a site that is sponsored or otherwise endorsed by Complainant, and commercially benefits by advertising and marketing downloads on the resolving website. Additionally, it is clear from both the disputed domain name itself and the content on the resolving site that Respondent had actual knowledge of Complainant’s rights in the MICROSOFT mark at the time it registered and subsequently used the disputed domain name. Complainant cites UDRP precedents to support its position.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns the mark MICROSOFT and uses it to market computer software products and services around the world. The mark is famous.
Complainant’s registration of its mark dates back to 1982.
The disputed domain name was registered in 2014.
Complainant has not licensed or otherwise authorized Respondent to use its marks.
Respondent is using the disputed domain name to point to a website that imitates one of Complainant’s legitimate web sites and that offers products not related 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 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(f), 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 (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 disputed domain name is confusingly similar to the MICROSOFT mark, as the domain name contains the mark in its entirety and merely differs through the addition of the term “up” and the gTLD “.com.” Addition of a descriptive term and a gTLD to a mark to form a domain name does not distinguish the domain name in a Policy ¶ 4(a)(i) analysis for confusing similarity. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Accordingly, the Panel finds the disputed domain name to be confusingly similar to the MICROSOFT mark pursuant to Policy ¶ 4(a)(i).
Complainant has not granted Respondent any license to use the MICROSOFT mark. Respondent is not commonly known by the disputed domain name: the WHOIS information of record identifies Respondent as “Nicholas Rahn.” Where a response is lacking, WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name. See Guardair Corporation v. Pablo Palermo, FA1407001571060 (Forum Aug. 28, 2014) (holding that the respondent was not commonly known by the <guardair.com> domain name according to Policy ¶ 4(c)(ii), as the WHOIS information lists “Pablo Palermo” as registrant of the disputed domain name). Additionally, lack of evidence in the record to indicate that the respondent had been authorized to register a domain name using a complainant’s mark supports a finding that Respondent is not commonly known by the disputed domain name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum September 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Further, Respondent’s lack of rights or legitimate interests in the disputed domain name is evinced by its failure to use the name for a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Respondent is attempting to use the disputed domain name and its resolving website to pass off as Complainant for commercial gain. Attempts to pass off as a complainant are not a use indicative of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) or (iii); and neither is the offering of unrelated third-party links. See Am. Int’l Group, Inc. v. Busby, FA 156251 (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 Priceline.com LLC v. levesque, bruno, FA1506001625137 (Forum July 29, 2015) (“The Panel finds that Respondent’s attempt to divert Internet users who are looking for products relating to Complainant’s famous mark to a website unrelated to the mark does not engage in a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The resolving website prominently displays the MICROSOFT HUP name and advertises downloads of various third-party software products, for which Respondent is presumed to receive commercial benefit. Consequently, the Panel finds that Respondent has failed to use the disputed domain name for a bona fide offering of goods or services or legitimate noncommercial or fair use, and thus lacks rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).
Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its use of Complainant’s famous mark. In accordance with paragraph 14(b) of the Rules, the Panel shall draw such inferences from Respondent’s failure to reply as it considers appropriate. Accordingly, the Panel finds that Respondent did not have a legitimate use in mind when registering the disputed domain name.
Indeed, as already noted, Respondent is using the disputed domain name to create the false impression of a site that is sponsored or otherwise endorsed by Complainant, and commercially benefits by advertising and marketing downloads on the resolving website: that web site features links to and advertisements for software downloads. Use of a mark in a domain name in order to confuse Internet users as to the source, sponsorship, or affiliation of the domain name for commercial gain is evidence of Policy ¶ 4(b)(iv) bad faith. See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”); see also Tumblr, Inc. v. Ailing Liu, FA1402001543807 (Forum March 24, 2014) (“Bad faith use and registration exists under Policy ¶ 4(b)(iv) where a respondent uses a confusingly similar domain name to resolve to a website featuring links and advertisements unrelated to complainant’s business and respondent is likely collecting fees.”); ShipCarsNow, Inc. v. Wet Web Design LLC, FA1501001601260 (Forum Feb. 26, 2015) (“Respondent’s use of the domain name to sell competing services shows that Respondent is attempting to commercially benefit from a likelihood of confusion. Therefore the Panel finds that a likelihood of confusion exists, that Respondent is attempting to commercially benefit from Complainant’s mark, and that Complainant has rights that predate any rights of the Respondent, all of which constitutes bad faith under Policy ¶ 4(b)(iv).”).
Further, panels have found bad faith under Policy ¶ 4(b)(iii) where a respondent used a confusingly similar domain name to resolve to a website displaying links that compete with a complainant. See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Forum Dec. 12, 2007) (“Respondent currently utilizes the disputed domain name, <usaa-insurance.net>, to resolve to a website featuring links to third-party competitors of Complainant. The Panel finds such use establishes Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii).”).
Consequently, the Panel finds that Respondent has acted in bad faith under Policy ¶ ¶ 4(b)(iii) and 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftup.com> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: February 6, 2017
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