Microsoft Corporation v. Ofis 365
Claim Number: FA1704001729209
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Ofis 365 (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <ofis-365.com> and <ofis-365.org>, registered with Nics Telekomünikasyon Tic Ltd. Sti.
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.
Kenneth L. Port as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 27, 2017; the Forum received payment on April 27, 2017.
On May 2, 2017, Nics Telekomünikasyon Tic Ltd. Sti. confirmed by e-mail to the Forum that the <ofis-365.com> and <ofis-365.org> domain names are registered with Nics Telekomünikasyon Tic Ltd. Sti. and that Respondent is the current registrant of the name. Nics Telekomünikasyon Tic Ltd. Sti. has verified that Respondent is bound by the Nics Telekomünikasyon Tic Ltd. Sti. 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 May 5, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 25, 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@ofis-365.com, postmaster@ofis-365.org. Also on May 5, 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 May 30, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Kenneth L. Port 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide leader in software, services and solutions that distributes its products to businesses and individuals. Complainant has operated under the OFFICE 365 mark since April, 2011. Complainant registered the OFFICE 365 mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 4,185,310, registered Aug. 7, 2012). See Compl., at Attached Ex. D. Respondent’s <ofis-365.com> and <ofis-365.org> domain names are confusingly similar as they incorporate the Turkish equivalent of the OFFICE portion of the mark, add a hyphen between that word and 365, and append the generic top-level domain (“gTLD”) “.com” or “.org.”
Respondent has no rights or legitimate interests in the <ofis-365.com> and <ofis-365.org> domain names. Respondent is not commonly known by the OFFICE 365 mark, nor does Complainant sponsor Respondent. Respondent is not legitimately affiliated with Complainant in any way, nor has Complainant given Respondent permission to use the mark for any purpose. Respondent also does not use the disputed domain names for any bona fide offering of goods or services. Rather, Respondent only uses Complainant’s mark in the domain names to take advantage of Complainant’s fame and notoriety to attract users to its own webpages. Further, Respondent passes off as Complainant by prominently displaying Complainant’s marks on the resolving webpage for the <ofis-365.com> domain name. See Compl., at Attached Ex. E.
Respondent registered and uses the <ofis-365.com> and <ofis-365.org> domain names in bad faith. Respondent, by incorporating Complainant’s OFFICE 365 mark into the disputed domain names and using Complainant’s trademarks and product names at the <ofis-365.com> domain name, creates the false impression of a site that is sponsored by or otherwise endorsed by Complainant. See Compl., at Attached Ex. E. Further, Respondent fails to make an active use of the <ofis-365.org> domain name. See Compl., at Attached Ex. F. Finally, Respondent must have had actual or constructive knowledge of Complainant’s OFFICE 365 mark because of the use of Complainant’s marks and designs on the resolving page for the <ofis-365.com> domain name. See Compl., at Attached Ex. E.
B. Respondent
Respondent failed to submit a Response in this proceeding. Respondent registered both of the <ofis-365.com> and <ofis-365.org> domain names on March 12, 2013.
The Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark; that Respondent has no rights or legitimate interests in or to the disputed domain names; and that Respondent has engaged in bad faith use and registration of the disputed domain names.
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 Panel finds that the disputed domain names are confusingly similar to Complainant’s valid and subsisting trademark. Complainant adequately pled its rights and interests to the OFFICE 365 trademark. Respondent arrives at the disputed domain names by merely using the apparent Turkish word for “office,” adding the generic term “365” and g TLDs “.com” and “.org.” This is insufficient to distinguish the disputed domain names from Complainant’s trademark.
As such, the Panel finds that the disputed domain names are confusingly similar to Complainant’s trademark.
The Panel further finds that Respondent has no rights or legitimate interests in or to the disputed domain names. Respondent has no license or permission to register the disputed domain names. Respondent is not commonly known by the disputed domain names. The WHOIS identifies “Ofis 365” as the registrant. See Compl., at Attached Ex. A. If that were true and a person named “ofis 365” was actually the registrant of the disputed domain names, there may be an argument that Respondent is commonly known by the disputed domain names. However, given that there is no other information in the record indicating Respondent is commonly known by the disputed domain names, the Panel refuses to make this presumption. As such, the Panel finds it is reasonable to conclude that Respondent is not commonly known by the disputed domain names.
The Panel further finds that Respondent does not use the disputed domain for any bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass itself off as Complainant, presumably for its own commercial gain. Passing off as a complainant can evince a failure to make a bona fide offering of goods or services or a legitimate noncommercial or fair use. Complainant provides a screenshot of the resolving webpage for the <ofis-365.com> domain name, which appears to prominently display Complainant’s marks and designs. See Compl., at Attached Ex. E. The Panel therefore finds that Respondent fails to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
The Panel also finds that Respondent uses the OFFICE 365 mark in its <ofis-365.com> and <ofis-365.org> domain names to benefit from Complainant’s famous marks to attract Internet users to its webpage. Respondent apparently uses Complainant’s mark in the resolved pages of the disputed domain names to take advantage of Complainant’s fame and notoriety to attract users to its own webpages accessed through the confusingly similar domain names. The Panel finds that Respondent fails to provide a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Accordingly, the Panel finds that the Respondent has no rights or legitimate interests in or to the disputed domain names.
The Panel further finds that Respondent registered and is using the <ofis-365.com> and <ofis-365.org> domain names in bad faith by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain names to commercially benefit by offering competing goods or services. Commercially benefiting from this type of confusion can evince bad faith registration and use under Policy ¶ 4(b)(iv). Complainant claims that Respondent, by incorporating Complainant’s OFFICE 365 mark into the disputed domain names and using Complainant’s trademarks and product names at the <ofis-365.com> domain name, creates the false impression of a site that is sponsored by or otherwise endorsed by Complainant. See Compl., at Attached Ex. E. This confusion disrupts Complainant’s business by diverting potential consumers to Respondent’s webpages instead of Complainant’s. The Panel, therefore, finds that Respondent attempts to commercially benefit from Complainant’s mark in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that Respondent must have had actual knowledge of the OFFICE 365 mark because Respondent displays Complainant’s marks and designs on the resolving page for the <ofis-365.com> domain name. See Compl., at Attached Ex. E. Given the fame of Complainant’s mark and the totality of the circumstances, the Panel finds that Respondent had actual notice of Complainant’s prior rights and interests in and to the trademark OFFICE 365, demonstrating bad faith under Policy ¶ 4(a)(iii).
Finally, Complainant asserts that Respondent fails to use the <ofis-365.org> domain name for any purpose whatsoever. Inactive holding of a confusingly similar domain name can evince bad faith registration and use under Policy ¶ 4(a)(iii). See VideoLink, Inc. v. Xantech Corporation, FA1503001608735 (Forum May 12, 2015) (“Failure to actively use a domain name is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).”). On the screenshot provided by Complainant, it appears as though the <ofis-365.org> domain name resolves in a Google search, not its own distinct webpage. See Compl., at Attached Ex. F. Therefore, the Panel finds that Respondent registered and uses the <ofis-365.org> domain name in bad faith by failing to make an active use of the domain name.
The Panel, therefore, finds that Respondent has engaged in bad faith use and registration of the disputed domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be granted.
Accordingly, it is Ordered that the <ofis-365.com> and <ofis-365.org> domain names transferred from Respondent to Complainant.
Kenneth L. Port, Panelist
Dated: May 31, 2017
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page