DECISION

 

Microsoft Corporation v. WICKY BLOWN / WB

Claim Number: FA1610001698485

 

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is WICKY BLOWN / WB (“Respondent”), United Kingdom.

 

REGISTRAR AND DISPUTED DOMAIN NAMES

The domain names at issue are <microsoftproductkeys.com>, <win81key.com>, <windows81keys.com>, <windows8onlineshop.com>, and <windowspremiumkey.com>, registered with eNom, Inc.

 

PANEL

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.

 

John J. Upchurch as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on October 17, 2016; the Forum received payment on October 18, 2016.

 

On October 19, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <microsoftproductkeys.com>, <win81key.com>, <windows81keys.com>, <windows8onlineshop.com>, and <windowspremiumkey.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 October 20, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 9, 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@microsoftproductkeys.com, postmaster@win81key.com, postmaster@windows81keys.com, postmaster@windows8onlineshop.com, and postmaster@windowspremiumkey.com.  Also on October 20, 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 November 14, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.

 

RELIEF SOUGHT

Complainant requests that the domain names be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.   Complainant

1.    Complainant, Microsoft Corporation, is a producer of software and provider of services and solutions that are used around the world. Complainant uses the MICROSOFT and WINDOWS marks in connection with its many software and service offerings, including the WINDOWS operating system. Complainant has registered the MICROSOFT and WINDOWS marks with the United States Patent and Trademark Office

(“USPTO”) as well as other trademark agencies throughout the world. (e.g., MICROSOFT—Reg. No. 1,200,236, registered July 6, 1982; WINDOWS—Reg. No. 1,872,264, registered Jan. 10, 1995). See Compl., at Attached Exs. D, G. Respondent’s <microsoftproductkeys.com> is confusingly similar as it incorporates the MICROSOFT mark in its entirety, adding only the descriptive or generic term “product keys” and the most common gTLD “.com.” In addition, Respondent’s <win81key.com>, <windows81keys.com>, <windows8onlineshop.com>, and <windowspremiumkey.com> are confusingly similar as they incorporate Complainant’s WINDOWS mark in its entirety (or the most common abbreviation for the mark: “Win”), adding only the generic or descriptive terms “81 key,” “81 keys,” “8 online shop,” and “premium key.”

2.    Respondent has no rights or legitimate interests in the domain name. Respondent is not commonly known by Complainant’s MICROSOFT or WINDOWS marks, nor has Respondent used the disputed domain names in connection with a bona fide offering of goods or services or for a legitimate noncommercial or fair use. The disputed domain names resolve or redirect to sites which prominently display WINDOWS marks and depict Complainant’s products for which Respondent purportedly sells product codes or keys. See Compl., at Attached Exs. I–L. Respondent’s use of Complainant’s marks to lure consumers to sites that appear to sell counterfeit products clearly violates the Policy.

3.    Respondent’s registration and use of the disputed domain names shows bad faith because Respondent incorporates Complainant’s famous MICROSOFT and WINDOWS marks into the disputed domains and uses Complainants marks and products at the corresponding websites to create the false impression of sites that are sponsored by or otherwise endorsed by Complainant. By cultivating this confusion, Respondent presumably profits from the sale of counterfeit products which is proscribed conduct under Policy ¶ 4(b)(iv). Additionally, it is clear from the domain names and their use that Respondent had actual or constructive knowledge of Complainant’s rights in the WINDOWS and MICROSOFT marks.

 

B.   Respondent:

1.    Respondent failed to submit a Response in this proceeding.

 

FINDINGS

1.    Respondent’s <microsoftproductkeys.com>, <win81key.com>, <windows81keys.com>, <windows8onlineshop.com>, <windowspremiumkey.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.

2.    Respondent does not have any rights or legitimate interests in the <microsoftproductkeys.com>, <win81key.com>, <windows81keys.com>, <windows8onlineshop.com>, <windowspremiumkey.com> domain names.

3.    Respondent registered or used the <microsoftproductkeys.com>, <win81key.com>, <windows81keys.com>, <windows8onlineshop.com>, <windowspremiumkey.com> domain names in bad faith.

 

DISCUSSION

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.”).

 

Identical and/or Confusingly Similar

Complainant claims rights in the MICROSOFT and WINDOWS marks based on registration with the USPTO (e.g., Reg. Nos. 1,200,236 and 1,872,264, respectively). See Compl., at Attached Exs. D, G. Registration of a mark with the USPTO establishes rights in a mark. 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). The Panel therefore holds that registration of the MICROSOFT and WINDOWS marks with the USPTO is sufficient to establish Complainant’s rights in the mark.

 

Complainant claims <microsoftproductkeys.com> is confusingly similar to the MICROSOFT mark, as it incorporates the mark in its entirety, adding only the descriptive or generic term “product keys” and the most common gTLD “.com.” Next, Complainant alleges that <win81key.com> contains the most common abbreviation “Win” for Complainant’s WINDOWS product, and likewise adds only the descriptive or generic term “81 key” and a gTLD. The remaining <windows81keys.com>, <windows8onlineshop.com>, and <windowspremiumkey.com> incorporate Complainant’s WINDOWS mark in its entirety, adding only the generic or descriptive terms “81keys,” “8 online shop,” or “premium key” in addition to the “.com” gTLD. In an analogous case involving the same parties, the Panel held that domain names involving the WINDOWS mark or its abbreviation “win,” and adding generic or descriptive terms and a gTLD were confusingly similar. 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). Accordingly, the Panel finds that the Respondent’s disputed domain names are confusingly similar to Complainant’s marks.

 

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 asserts that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by any of the disputed domain names, or by Complainant’s MICROSOFT or WINDOWS marks. Respondent is also not licensed by Complainant to use Complainant’s MICROSOFT or WINDOWS marks. The Panel notes that a privacy service was used by Respondent, but was lifted as a result of the commencement of this proceeding. See Compl., at Attached Ex. A1 (listing “WHOISGUARD PROTECTED” as registrant name). As a result, the Panel notes that the WHOIS information of record identifies Respondent as “Wicky Blown.” Panels have found that WHOIS information can support a finding that the respondent is not commonly known by the disputed domain name, especially where a privacy service has been engaged. See Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name); see also Kohler Co. v. Privacy Service, FA1505001621573 (Forum July 2, 2015) (holding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) where “Privacy Service” was listed as the registrant of the disputed domain name). Panels have also held that respondents are not commonly known by a disputed domain name when there is no evidence in the record to show that the respondent had been authorized to register a domain name using a

complainant’s mark. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.

 

Complainant argues that Respondent has not used the disputed domain names to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Respondent’s domain names <microsoftproductkeys.com>, <win81key.com>,  <windows81keys.com>, <windows8onlineshop.com>, and <windowspremiumkey.com> resolve to websites which prominently display the MICROSOFT and WINDOWS marks and associated logos, and depict a variety of Complainant’s products for which Respondent purportedly sells product codes or keys. See Compl., at Attached Ex. I–M. Complainant believes the keys and codes offered are counterfeit. The Panel in a previous, very similar dispute between these same parties held that like use of similar domain names to the disputed domain names at instant issue did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Microsoft Corp. v. Wicky Blown/WB FA 1610585 (Forum, Apr. 24, 2015) (finding the use of <win8key.com>, <windows10keys.com>, <windows10productkeys.com>, <windows81key.com>, <windowsonlinestore.com> and other domains in connection with sites that sold product keys for Complainant’s products as well as unrelated third party products 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 domain names pursuant to Policy ¶ 4(c)(iii)1); see also Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel draws comparisons to the previous case between the Parties and agrees that Respondent’s use of the disputed domain names does not constitute a bona fide offering of goods or services or legitimate noncommercial or fair use, and as such evinces a lack of rights or legitimate interests in the disputed domain names.

 

Registration and Use in Bad Faith

Although Complainant does not make the argument that Respondent shows a pattern of bad faith registration and use, the Panel notes that the instant case involves multiple domain names and Respondent has a prior UDRP proceeding in which it was found to be acting in bad faith. See Microsoft Corp. v. Wicky Blown/WB FA 1610585 (Forum, Apr. 24, 2015) (finding bad faith use and registration where the disputed domain names were used to also advertise goods of other companies that were not affiliated with Microsoft). Both findings have been independently used by past Panels to determine bad faith under Policy ¶ 4(b)(ii). See The Toronto-Dominion Bank v. Ryan G Foo / PPA Media Services / Jinesh Shah / Whois Privacy Corp. / Domain Administratory / Fundacion Private Whois / Domain Admin / Whois Privacy Corp, FA1408001576648 (Forum Jan. 12, 2015) (“The Panel determines that Respondent’s documented history of adverse UDRP rulings, as well as Respondent’s multiple registrations relating to Complainant’s marks, are independently sufficient to constitute a pattern as described by Policy ¶ 4(b)(ii).  Therefore the Panel finds bad faith under the provision.”). The Panel finds evidence of bad faith in the instant case due to Respondent’s pattern of bad faith registration under Policy ¶ 4(b)(ii)—even though Complainant has not specifically argued this point.

 

Complainant claims that Respondent’s registration and use of the disputed domain names is in bad faith because Respondent is using Complainant’s marks and products to attract Internet users for commercial gain. Complainant contends that Respondent’s intent is to create the false impression of sites that are sponsored by or otherwise endorsed by Complainant. Complainant also contends that the product keys and codes included on the resolving websites are counterfeit. See Compl., at Attached Exs. I–L.  Use of marks to confuse and attract for commercial gain through offering counterfeit products is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See H-D Michigan, LLC v. Ross, FA 1250712 (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). The Panel therefore finds that Respondent’s registration and use of the disputed domain names was in bad faith under Policy ¶ 4(b)(iv).

 

Complainant argues that Respondent had actual or constructive knowledge of Complainant's rights in the MICROSOFT and WINDOWS marks. Complainant argues that Respondent's offering of keys and codes for Complainant's own products and competing products at the resolving websites indicates that Respondent had knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <microsoftproductkeys.com>, <win81key.com>, <windows81keys.com>, <windows8onlineshop.com>, and <windowspremiumkey.com> domain names be TRANSFERRED from Respondent to Complainant.

 

John J. Upchurch, Panelist

Dated:  November 28, 2016

 

 

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