Microsoft Corporation v. WICKY BLOWN / WB
Claim Number: FA1503001610585
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is WICKY BLOWN / WB (“Respondent”), Liverpool, United Kingdom.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, <windows10keys.com>, <windows10productkeys.com>, and <windows81key.com>, registered with Enom, Inc.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 20, 2015; the Forum received payment on March 25, 2015.
On March 25, 2015, Enom, Inc. confirmed by e-mail to the Forum that the <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, <windows10keys.com>, <windows10productkeys.com>, and <windows81key.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. 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 March 27, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 2015 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@windowsonlinestore.com, postmaster@win7codes.com, postmaster@win8key.com, postmaster@windows10keys.com, postmaster@windows10productkeys.com, postmaster@windows81key.com. Also on March 27, 2015, 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 April 23, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Microsoft uses and has registered various well-known marks in conjunction with its business, including WINDOWS®.
Microsoft began using the WINDOWS trademark at least as early as 1983, and has used the trademark continuously since then. For more than 30 years, Microsoft has invested substantial time, effort and money in advertising and promoting its WINDOWS products and services throughout the United States and the world. As a result, WINDOWS has become the world’s most popular computer operating platform for desktop and laptop computers. Microsoft has used numerals after its WINDOWS mark to designate the version of the WINDOWS product, such as WINDOWS 8. Microsoft owns the domain name <windows.com> and uses this domain name to provide consumers with information and resources regarding its Windows operating platform and to promote various products.
The WINDOWS mark is well-known to the general public and particularly to computer users around the globe who identify the WINDOWS mark with Microsoft. The WINDOWS mark has been found to be famous around the world. See Microsoft Corp. v. Lee, D2004-0991 (WIPO Jan. 26, 2005)(“The panel finds that this trademark has so extensive a common law reputation that it qualifies as a famous mark.”); Microsoft Corp. v. Methods for Mastery, Inc., FA 1489730 (Nat. Arb. Forum, April 25, 2013)(“There is no question that WINDOWS is a well-known trademark not only to consumers but to the general public. For this reason, the trademark WINDOWS is in fact a famous trademark”).
Microsoft has registered the WINDOWS trademark with the United States Patent and Trademark Office, and throughout the world, including in the United Kingdom where the Respondent resides. Microsoft used and internationally registered the WINDOWS trademark long prior to the registration of each of the disputed domain names.
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAMES (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain names are confusingly similar to Complainant’s WINDOWS trademark.
Respondent’s domain names incorporate Complainant’s famous WINDOWS mark in its entirety (or the most common abbreviation “Win” for Complainant’s Windows product), adding only the generic or descriptive terms “online store,” “7 codes,” “8 key,” “10 keys,” “10 product keys,” and “81 key.” These differences are not sufficient to distinguish the disputed domain from Complainant’s famous and distinctive mark, especially where the added terms relate to the Complainant’s product. In this case, the numerals relate to various versions of the WINDOWS product and the terms “code,” “key” and “product key” are commonly used in connection with licensing for software products. See Microsoft Corp. v. Admin, FA 1504015 (Nat. Arb, Forum, July 29, 2013)(finding <windowazure.com> confusingly similar to the WINDOWS AZURE mark even with the removal of the “s” from the domain name); Microsoft Corp. v. Domain Privacy Group, FA 1507433 (Nat. Arb. Forum, July 31, 2013)(finding <windows8appstore.com> confusingly similar to the WINDOWS trademark); Microsoft Corp. v. Methods for Mastery, Inc., FA 1489730 (Nat. Arb. Forum, April 25, 2013)(finding <windowsrtapps.com> confusingly similar to the WINDOWS trademark); Microsoft Corporation v. Eva Korodi, FA 1414272 (Nat. Arb. Forum, December 10, 2011) (finding <windows7-microsoft.info> confusingly similar to Complainant’s trademarks); Microsoft Corp. v. Haiyue Tang, FA 1446970 (Nat. Arb. Forum, July 19, 2012 (finding <windowsphonebar.com> confusingly similar to the WINDOWS trademark); Guess? IP Holder, LP and Guess? v. PrivacyProtect.org, FA 1516362 (Nat. Arb. Forum, Sept. 30, 2013)(finding <guessonlinestore.com> confusingly similar to the GUESS trademark); and Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
For the above reasons, each of the disputed domain names is confusingly similar to Complainant’s WINDOWS trademark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAMES (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s WINDOWS Mark nor has Respondent used the disputed domain names in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as Wicky Blown/WB. Respondent is not commonly known by Complainant’s WINDOWS trademark or affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s WINDOWS mark or an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The landing page for the disputed domain <windowsonlinestore.com> prominently displays the name WINDOWS ONLINE STORE along with the Windows flag logo at the top, depicting a variety of Microsoft products for which Respondent purportedly sells product license keys. Respondent also uses the Microsoft Certified Partner logo prominently on its site, but Respondent is not a Microsoft Certified Partner. Additionally, Complainant believes that the product keys being sold by Respondent are, in fact, counterfeit. Respondent is also using the disputed domain name to advertise and sell products that are unrelated to Complainant, such as Adobe software and Rosetta Stone software. There is nothing on the site that advises the consumer who Respondent is, other than the copyright notice which reads “© 2010-2013 Windows Online Store.”
The landing page for the disputed domain <win7codes.com> prominently displays the name WINDOWS 7 CODES, also depicting a variety of Microsoft products for which Respondent purportedly sells product codes or keys. Complainant believes that the product codes or keys sold by Respondent are, in fact, counterfeit. Additionally, Respondent is using the disputed domain name to advertise and sell products that are unrelated to Complainant, such as Adobe software and Rosetta Stone software. There is nothing on the site that advises the consumer who Respondent is, other than the copyright notice which reads “© 2010-2013 Windows 7 Codes.”
The landing page for the disputed domain <win8key.com> prominently displays the registered WINDOWS trademark with the flag logo, depicting a variety of Microsoft products for which Respondent purportedly sells product codes or keys. Complainant believes that the product codes or keys sold by Respondent are, in fact, counterfeit. Additionally, Respondent is using the disputed domain name to advertise and sell products that are unrelated to Complainant, such as Adobe software and Rosetta Stone software. There is nothing on the site that advises the consumer who Respondent is, other than the copyright notice which reads “© 2014 Win 8 Key.”
The landing page for the disputed domain <windows81key.com> prominently displays the name WINDOWS 8.1 KEYS, also depicting a variety of Microsoft products for which Respondent purportedly sells product codes or keys. Complainant believes that the product codes or keys sold by Respondent are, in fact, counterfeit. Additionally, Respondent is using the disputed domain name to advertise and sell products that are unrelated to Complainant, such as Adobe software and Rosetta Stone software. There is nothing on the site that advises the consumer who Respondent is, other than the copyright notice which reads “© 2010-2013 Windows 8.1 Keys.”
The use of domain names that are confusingly similar to Complainant’s WINDOWS trademark to attract computer users to Respondent’s own site is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶4(c)(iii). Microsoft Corporation v. OzGrid Business Applications, FA 314308 (Nat. Arb. Forum, October 6, 2004); see also U.S. Franchise Sys. Inc. v. Howell, FA 152457 (Nat. Arb. Forum, May 6, 2003) (holding that Respondent’s use of Complainant’s mark and the goodwill surrounding the mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services); Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website). Seeking to attract traffic and revenue using Complainant’s famous trademarks does not reflect 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). See Fossil, Inc. v. Fong, FA 1116234 (Nat. Arb. Forum, January 10, 2007) (finding no legitimate interest where the domain name resolved to a website featuring links to third party websites); TM Acquisition Corp. v. Sign Guards, FA132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); WeddingChannel.com Inc. v. Vasiliev, FA156716 (Nat. Arb. Forum June 12, 2003) (finding that the respondent’s use of the disputed domain name to redirect Internet users to websites unrelated to the complainant’s mark, where the respondent presumably received a referral fee for each misdirected Internet user, was not a bona fide offering of goods or services as contemplated by the Policy); and Vance International, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (finding that the operation of a pay-per-click website at a confusingly similar domain name does not represent a bona fide offering of goods or services or a legitimate noncommercial or fair use, regardless of whether or not the links resolve to competing or unrelated websites or if the respondent is itself profiting commercially from the click-through fees).
It should also be noted that the use of the famous WINDOWS mark to lure consumers to sites that sell counterfeit products also clearly violates the Policy. Respondent’s use of names such as WINDOWS ONLINE STORE, WINDOWS 7 CODES, WINDOWS, and WINDOWS 8.1 KEYS with depictions of what appear to be genuine Microsoft products and in the case of <windowsonlinestore.com>, the use of the prominent Microsoft Certified Partner name and logo, are designed to make consumers comfortable that the goods that they are ordering are genuine Microsoft products when in fact, it appears that they are counterfeit. See Fossil, Inc. v. Zhang qianqian, FA 1462058 (Nat. Arb. Forum, Oct. 26, 2012)(finding the use of the <fossilbagsale.com> domain name to pass itself off as Complainant’s website in order to post counterfeit goods for sale is 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). See Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of 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 of the disputed domain name pursuant to Policy ¶4(c) (iii)); see also eLuxury.com Inc. v. WangJunJie, FA 1075554 (Nat. Arb. Forum Nov. 30, 2007) (concluding that the sale of counterfeit products is evidence that the respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name).
Moreover, prior to the privacy shield being removed in response to this complaint, Respondent used a privacy service to register the domain name <windowsonlinestore.com>. Panels have found that “[t]his means Respondent acquired no rights by actually registering the disputed domain name because Respondent did not publicly associate itself with the domain name. Therefore, Respondent could not acquire any rights.” WordPress Foundation v. Pham Dinh Nhut, FA1502001603156 (Nat. Arb. Forum Mar. 12, 2015). See also Capital One Financial Corp. v PATRIC BAUER / VENTURE CAPITAL ONE GROUP, FA1501001599899 (Nat. Arb. Forum Feb 25, 2015) (finding that the use of a privacy service precluded respondent from acquiring rights in the domain name through registration); National Geographic Society v. Domain Admin / Private Registrations Aktien Gesellschaft, FA1412001596598 (Nat. Arb. Forum Feb 6, 2015)(finding that the use of a privacy service barred respondent from acquiring rights through registration).
The landing page for <windows10keys.com> goes to a parked page stating that the owner recently registered the domain name so there is no true active content. The landing page for <windows10productkeys.com> results in an internal error so there is no true active content. “One does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with 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).” Nike, Inc. v. Fang Wei et al., FA0907001272458 (Nat. Arb. Forum August 21, 2009)(citations omitted). In fact, failure to develop the site demonstrates a lack of genuine interest in the domain name. Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000). See also Sun Microsystems, Inc. v. Color Vivo Internet, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(noting that failure to make any active use of a domain name is not 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)); George Weston Bakeries Inc. v. McBroom, FA0703000933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); and Hewlett-Packard Co. v. Shemesh, FA0503000434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is 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)).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain names.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain names in bad faith.
At the time Respondent registered the disputed domain names, WINDOWS was famous and familiar to countless consumers worldwide. The content of the sites and the domains themselves show without question that Respondent was familiar with Complainant’s WINDOWS trademark at the time of registration and intentionally adopted domain names incorporating this mark.
Respondent’s registration of the disputed domain names with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002)(holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corp. v. Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Furthermore, by incorporating Complainant’s famous trademark into the disputed domains, and using Complainant’s trademarks and products at four of the corresponding web sites, as well as the Microsoft Certified Partner name and logo at one site, Respondent creates the false impression of sites that are sponsored by or otherwise endorsed by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS, Inc. v. Robertson, FA0609000809749 (Nat. Arb. Forum Nov. 13, 2006)(finding bad faith where the respondent’s web site offered high speed internet services while giving the false impression of being affiliated with the complainant). See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. 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); World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“the use of the logo on the web site to which wwfauction.com is redirected supports the conclusion that wwfauction.com is likely to confuse, and thus is being used in bad faith”); MidFirst Bank v. Smith, FA0907001274302 (Nat. Arb. Forum August 31, 2009)(use of the disputed domain name to pass oneself off as the Complainant constitutes bad faith registration and use of the domain name pursuant to Policy ¶4(b)(iv)); Monsanto Co. v. Decepticons, FA 101536 (Nat. Arb. Forum Dec. 18, 2001) (finding that respondent’s use of the disputed domain name misrepresent itself as a complainant supported a finding of bad faith); and Microsoft Corp. v. Pennisi, FA0908001280894 (Nat. Arb. Forum Sep. 29, 2009)(finding bad faith due in part to Respondent’s “repeated use of Complainant’s logo”).
Respondent is using four of the disputed domain names to also advertise and market goods of other software companies like Adobe and Rosetta Stone that are not affiliated with Microsoft. Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s WINDOWS trademark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). See V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004). See also Identigene, Inc. v. Genetest Lab., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that Complainant is the source of or is sponsoring the services offered at the site); Microsoft Corp. v. Jean Pierre Lafont a/k/a Yasir Yasir, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”); and MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
For the two sites that are not active, Respondent’s nonuse of the confusingly similar domain names suggests its bad faith under Policy ¶4(a)(iii). See Sun v. Color Vivo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(“in order to find bad faith registration and use pursuant to Policy ¶4(a)(iii) it is not necessary that Respondent have put the domain name to any active use … failure to make an active use of the disputed domain name can, in and of itself, be evidence of bad faith registration and use of the domain pursuant to Policy ¶4(a)(iii)”); Chrisma Productions, Inc. v. Quinn Jr., FA0905001263592 (Nat. Arb. Forum July 13, 2009)(finding that Respondent’s inactive use of the <harveykorman.com> domain name constituted bad faith registration and use under Policy ¶4(a)(iii)); Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007)(holding that non-use of a confusingly similar domain name for over seven months constituted bad faith registration and use); Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007)(concluding that a respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith); DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s failure to make an active use of the domain name satisfied the requirement of bad faith under Policy ¶4(a)(iii)); Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000)(finding that merely holding an infringing domain name without active use can constitute use in bad faith).
Finally, it should be noted that Respondent has been the subject of at least three prior UDRP cases where Respondent has been found to have violated the Policy. See Swarovski Aktiengesselschaft v. WhoisGuard/Wicky Blown, D 2012-2267 (WIPO, Dec. 21, 2012); Swarovski Aktiengesselschaft v. WhoisGuard/Wicky Blown, D 2012-2268 (WIPO, Jan 7, 2013); and Swarovski Aktiengesselschaft v. WhoisGuard/Wicky Blown, D 2012-2501 (WIPO, Feb. 20, 2013). This is further evidence of Respondent’s bad faith.
Based on the foregoing, Respondent has registered the disputed domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant prove the following three elements to obtain an order cancelling or transferring a domain name:
(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(e), 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 (Nat. Arb. 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.”).
Complainant uses the WINDOWS mark in connection with its various operating systems. Complainant registered the WINDOWS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,264, registered January 10, 1995). Complainant also registered its windows mark in the United Kingdom’s Intellectual Property Office (Reg. #1,512,098 on September 1, 2002). Such registrations sufficient evidence of rights under a Policy ¶4(a)(i) analysis, regardless of where a respondent is located. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶4(a)(i)] rights even when Respondent lives or operates in a different country.”). Not only did Complainant have rights to its mark in the United States (and a large number of other countries), it also has rights to its mark in Respondent’s home country (the United Kingdom). All Complainant must do is demonstrate some rights. Complainant is not required to demonstrate superior rights under Policy ¶4(a)(i).
Complainant claims Respondent’s <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, <windows10keys.com>, <windows10productkeys.com>, and <windows81key.com> domain names are confusingly similar to the WINDOWS mark because they incorporate the WINDOWS mark (or its common abbreviation “WIN”) and merely add generic or descriptive terms. Furthermore, the “.com” gTLD (as with any other TLD) must be disregarded when making a Policy ¶4(a)(i) analysis. See Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated); see also Yahoo! Inc. v. Zuccarini, D2000-0777 (WIPO Oct. 2, 2000) (finding the registration and use of multiple domain names incorporating the distinctive and famous YAHOO!, Yahooligans!, and GeoCities marks, together with generic words such as ‘chat’ and ‘financial’ to be confusingly similar to the complainant’s marks and likely to mislead Internet users into believing that products and services offered by the respondents are being sponsored or endorsed by YAHOO! or GeoCities, given the similarity of the names and products and services offered); see also Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶4(a)(i)). Therefore, Respondent’s <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, <windows10keys.com>, <windows10productkeys.com>, and <windows81key.com> domain names are confusingly similar to the WINDOWS mark under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant claims Respondent is not commonly known by Complainant’s WINDOWS mark nor has Respondent been authorized by Complainant to use the WINDOWS mark to register domain names. The relevant WHOIS information regarding all disputed domain names now merely lists “WICKY BLOWN / WB” as registrant of record. There is no obvious connection between Respondent’s name and the disputed domain names. Respondent has not submitted any evidence suggesting Respondent is commonly known by any of the disputed domain names. There is nothing in this record which would allow finding Respondent is commonly known by the disputed domain names under Policy ¶4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence that it is commonly known by the domain name). Therefore, this Panel finds Respondent is not commonly known by any of the disputed domain names.
Complainant claims Respondent is not making a bona fide offering of goods or services, or a legitimate noncommercial or fair use through the disputed domain names. Other than the two domain names which appear to be inactive, the following domain names appear to sell counterfeit products: <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, and <windows81key.com>. Selling counterfeit products does not constitute a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain names. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶4(c)(i).”). The <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, and <windows81key.com> domain names are neither bona fide offerings of goods or services under Policy ¶4(c)(i), nor legitimate noncommercial or fair use under Policy ¶4(c)(iii).
Complainant claims Respondent’s <windows10keys.com> and <windows10productkeys.com> domain names resolve to inactively held pages which display the following messages, respectively: “This domain was recently registered at namecheap.com. The domain owner may currently be creating a great site for this domain. Please check back later!”; and “Internal Server Error.” Respondent does not acquire any rights by inactively holding a domain name. See Am. Home Prods. Corp. v. Malgioglio, D2000-1602 (WIPO Feb. 19, 2001) (finding no rights or legitimate interests in the domain name <solgarvitamins.com> where the respondent merely [inactively] held the domain name).
Respondent registered the <windowsonlinestore.com> domain name using a privacy service. This means title to the domain name was held by a nominee (and not the real owner in interest). The “real” owner was never publicly disclosed in the WHOIS. Since Respondent was not publicly associating itself with the <windowsonlinestore.com> domain name, Respondent acquired no rights by covertly owning the domain name.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has a history of bad faith in domain disputed cases under Policy ¶4(b(ii), and provides a list of prior UDRP cases in which Respondent was found to have violated the Policy. See Swarovski Aktiengesselschaft v. WhoisGuard/Wicky Blown, D 2012-2267 (WIPO, Dec. 21, 2012); Swarovski Aktiengesselschaft v. WhoisGuard/Wicky Blown, D 2012-2268 (WIPO, Jan 7, 2013); and Swarovski Aktiengesselschaft v. WhoisGuard/Wicky Blown, D 2012-2501 (WIPO, Feb. 20, 2013). This Panel is loathe to make such a sweeping conclusion. Each case must be defended (and judged) on its own merits. A party should not be discouraged from contesting a case because it might be construed against them in the future.
Policy ¶4(b)(ii) has two requirements: (i) respondent registered the domain name to prevent the owner of the trademark from reflecting the mark in a corresponding domain name and (ii) respondent has engaged in a pattern of such conduct. In this case, Complainant does not claim it has been prevented from putting its trademark into a domain name. Therefore, losing several cases under the UDRP should not be sufficient grounds to make a finding of bad faith registration and use. The Panel declines to find bad faith on these grounds.
Complainant claims Respondent has used bad faith attraction for commercial gain under Policy ¶4(b)(iv) while selling counterfeit products and advertising for the benefit of Complainant’s competitors. Selling counterfeit products and directing Internet users to a complainant’s competitors constitutes bad faith pursuant to Policy ¶4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (Nat. Arb. Forum Apr. 23, 2009) (determining that the respondent’s selling of counterfeit products creates the likelihood of confusion as to the complainant’s affiliation with the disputed domain name and allows the respondent to profit from that confusion); see also Asbury Auto. Group, Inc. v. Tex. Int’l Prop. Assocs., FA 958542 (Nat. Arb. Forum May 29, 2007) (finding that the respondent’s use of the disputed domain name to advertise car dealerships that competed with the complainant’s business would likely lead to confusion among Internet users as to the sponsorship or affiliation of those competing dealerships, and was therefore evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)). Respondent registered and used the <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, and <windows81key.com> domain names in violation of Policy ¶4(b)(iv).
Complainant claims the <windows10keys.com> and <windows10productkeys.com> domain names’ inactive use is evidence of Policy ¶4(a)(iii) bad faith. Other Panels have generally found bad faith under Policy ¶4(a)(iii) where a respondent inactively held confusingly similar domain names. See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Under the facts of this case, this Panel agrees. <windows10keys.com> was registered on October 1, 2014 and <windows10productkeys.com> was registered on October 1, 2014. They have never been used. In the absence of any contradictory evidence, Respondent registered and “used” these domain names in bad faith.
Respondent registered the disputed domain names with actual knowledge of Complainant’s WINDOWS mark and Complainant’s rights in the mark. There is no doubt Complainant’s marks are famous. In light of the use of some of the domain names, it is clear to this Panel Respondent actually knew about Complainant’s products (after all, Respondent is selling counterfeits of those products). That knowledge applies to Respondent regardless of what domain names are at issue. Actual knowledge is adequate evidence of bad faith under Policy ¶4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. 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).
Respondent registered the <windowsonlinestore.com> domain name using a privacy service. This means title to the domain name was held by a nominee (and not the real owner in interest). The “real” owner was never publicly disclosed. This raises a rebuttable presumption of bad faith registration and use in a commercial context. Respondent has done nothing to rebut that presumption. Therefore, this fact alone suffices to prove Respondent registered the <windowsonlinestore.com> domain name in bad faith.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, <windows10keys.com>, <windows10productkeys.com>, and <windows81key.com> domain names be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Friday, April 24, 2015
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