Microsoft Corporation v. Story Remix / Inofficial
Claim Number: FA1706001734934
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Story Remix / Inofficial (“Respondent”), Kentucky, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <storyremix.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.
Richard Hill as Panelist.
Complainant submitted a Complaint to the Forum electronically on June 7, 2017; the Forum received payment on June 7, 2017.
On June 16, 2017, Nics Telekomünikasyon Tic Ltd. Sti. confirmed by e-mail to the Forum that the <storyremix.org> domain name is 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 June 13, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 3, 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@storyremix.org. Also on June 13, 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 July 10, 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 software company founded in 1975. Its products and services are famous around the world. Complainant announced the launch of its STORY REMIX product on May 11, 2017; this product allow users to create movies with soundtracks from the user’s photos and videos taken on their smartphone devices. Complainant has established common law rights in its STORY REMIX mark by way of the extensive public press about the STORY REMIX product: the mark instantly became well known through unprecedented global press coverage. Complainant cites UDRP precedents to support its position.
According to Complainant, the disputed domain name is identical its mark because it merely eliminates the space and appends the generic top-level domain (“gTLD”) “.org”. Complainant cites UDRP precedents to support its position.
Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise authorized Respondent to use its STORY REMIX mark in any fashion and Respondent is not commonly known by the disputed domain name. Even though the WHOIS information lists “Story Remix/Inofficial,” this information is false and Respondent cannot claim any rights in the mark. Furthermore, Respondent is using the resolving website to pass itself off as Complainant, as the resolving webpage contains the STORY REMIX mark, Complainant’s introductory video for the mark, and Complainant’s copyright notice. Such use is not construed as a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Further, says Complainant, Respondent has registered and is using the disputed domain name in bad faith. Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the STORY REMIX mark by creating confusion as to the source, sponsorship, affiliation, or endorsement of its website by using the marks of Complainant. Further, Respondent must have had actual knowledge of Complainant’s rights in the STORY REMIX mark as it had been widely publicized and was familiar to countless consumers around the world.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the mark STORY REMIX dating back to at May 11, 2017.
The disputed domain name was first registered on May 14, 2017.
Complainant has not licensed or otherwise authorized Respondent to use its mark.
The disputed domain name resolves to a web site that contains the STORY REMIX mark, Complainant’s introductory video, and Complainant’s copyright notice.
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.”).
Although Complainant does not have any registered trademarks for STORY REMIX, the extensive public press about the STORY REMIX product establishes Complainant’s common law rights in the STORY REMIX trademark. See Microsoft Corporation v. Latanskiy Sergey Nikolaevich/hololens.supply FA 1665619 (Forum Apr. 13, 2016) (finding common law rights in the HOLOLENS mark where there was significant press prior to the registration of the disputed domain name); see also Microsoft Corporation v. K E Henry FA 1364807 (Forum Jan 25, 2011) (finding common law rights in the KINECT mark where there was a formal announcement followed by global press coverage). The Policy does not require a complainant to own a registered trademark prior to a respondent’s registration if it can demonstrate established common law rights in the mark. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark). Thus the Panel finds that Complainant has rights in the mark STORY REMIX for the purposes of Policy ¶ 4(a)(i).
The disputed domain name is identical to Complainant’s mark because it merely eliminates the space and appends the gTLD “.org”. Eliminating spaces and appending a gTLD is not considered sufficiently distinguishing. See International Soap Box Derby, Inc. v. Domain Admin / Privacy Protection Service INC d/b/a PrivacyProtect.org, FA 1602433 (Forum Mar. 4, 2015) (“The domain name contains the mark in its entirety, merely eliminating the spaces between the terms of the mark and adding the generic Top Level Domain (“gTLD”) “.org.” These alterations of the mark, made in forming the domain name, do not save it from the realm of identity or confusing similarity under the standards of the Policy.”). Therefore, the Panel finds that the disputed domain name is identical, in the sense of the Policy, to Complainant’s STORY REMIX mark.
Complainant has not licensed or otherwise authorized Respondent to use its mark. Nothing in the record suggests Respondent is affiliated in any way with the STORY REMIX mark aside from the WHOIS registration information, which Complainant alleges is false. A lack of contradicting evidence in the record that a respondent is commonly known by the disputed domain name can be evidence of a lack of rights and legitimate interests. See Morgan Stanley v. Morgan Stanley, FA 1245123 (Forum Mar. 10, 2009) (“Despite Respondent’s listing in the WHOIS information as ‘Morgan Stanley,’ there is no corroborating evidence that would demonstrate that Respondent is indeed commonly known by the disputed domain name. More significantly, Complainant argues that Respondent lacks any license or permission to use Complainant’s mark.”), see also City News & Video v. Citynewsandvideo, FA 244789 (Forum May 5, 2004) (“Although Respondent’s WHOIS information lists its name as ‘citynewsandvideo’ there is no evidence before the panel to indicate that Respondent, is in fact, commonly known by the disputed domain name <citynewsandvideo.com> pursuant to Policy ¶4(c)(ii).”); see also, Action Educational Services d/b/a West Coast Univ. v. West Coast Univ. Int’l Inc., FA 1191541 (Forum July 2, 2008) (respondent was not commonly known by WESTCOASTUNIVERSITY.US domain name pursuant to Policy ¶4(c)(iii) even though WHOIS information identified respondent as “West Coast University International Inc.” because there was no affirmative evidence in the record proving respondent’s identity). Due to the lack of a response in this matter, all inferences drawn by the Complainant can be construed in its favor unless clearly contradicted by available evidence. See 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). Accordingly, the Panel finds that Respondent is not commonly known by the mark or disputed domain name for the purposes of Policy ¶ 4(c)(ii).
Respondent is using the disputed domain name to pass itself off, falsely, as Complainant. The resolving web site uses the mark STORY REMIX, along with Microsoft’s video for its STORY REMIX product. And the site uses a copyright notice that states “© 2017 Microsoft.” Attempting to impersonate Complainant is clearly against the Policy. Respondent’s prominent use of Complainant’s trademarks and logos is calculated and likely to lead visitors to believe that this site originates with or is endorsed by Complainant or may be the official site for Complainant’s new STORY REMIX product. Such use cannot be construed as bona fide offerings of goods or services or legitimate noncommercial or fair use of a domain name under the Policy. See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was not 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). Therefore, the Panel finds that Respondent has not made a bona fide offering of goods or services or legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
The Panel notes that Respondent registered and used the disputed domain name three days after Complainant announced and used the STORY REMIX mark. Respondent (who did not reply to Complainant’s contentions) has not presented any plausible explanation for its registration of Complainant’s 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 pass itself off as Complainant. Thus Respondent is attempting to attract Internet traffic and commercially benefit from the goodwill of the STORY REMIX name. Use of a disputed domain name to create confusion as to the source, sponsorship, affiliation or endorsement of the content therein constitutes bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). Accordingly, the Panel finds that Respondent registered and used the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Further, in light of the fame and notoriety of Complainant’s STORY REMIX mark, and Respondent’s use of Complainant’s introductory video and copyright notice on the resolving web site, it is inconceivable that Respondent could have registered the disputed domain name without actual knowledge of Complainant’s rights in the mark. Actual knowledge of a complainant's rights in the mark prior to registering the disputed domain name can evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name): see also Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”). Thus the Panel finds that Respondent had actual knowledge of Complainant’s rights when the disputed domain name was registered and subsequently used, and that this constitutes bad faith registration and use in the sense of the Policy.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <storyremix.org> domain name be TRANSFERRED from Respondent to Complainant.
Richard Hill, Panelist
Dated: July 10, 2017
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