Microsoft Corporation v. Mike Scott
Claim Number: FA1712001761558
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas. Respondent is Mike Scott (“Respondent”), France.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-365-support.com>, registered with Gandi SAS.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Hon. Karl v. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2017; the Forum received payment on December 6, 2017.
On December 7, 2017, Gandi SAS confirmed by e-mail to the Forum that the <microsoft-365-support.com> domain name is registered with Gandi SAS and that Respondent is the current registrant of the name. Gandi SAS has verified that Respondent is bound by the Gandi SAS 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 December 7, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 27, 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@microsoft-365-support.com. Also on December 7, 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 December 29, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 is a global provider of computer software, services, solutions, and associated products. Complainant uses the MICROSOFT mark in conjunction with its business practices. Complainant registered the MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236, registered July 6, 1982). Complainant also holds registrations for the MICROSOFT mark with government entities throughout North and South America, Asia, Europe, Africa, and Australia. Id. Respondent’s <microsoft-365-support.com> is confusingly similar to Complainant’s MICROSOFT mark because it incorporates the mark in its entirety, adding hyphens, the number “365,”—which is representative of one of Complainant’s new products—the generic term “support,” and the “.com” generic top level domain (“gTLD”).
Respondent does not have rights or legitimate interests in <microsoft-365-support.com>. Respondent is not commonly known by the disputed domain name. Complainant has not authorized or licensed Respondent to use the MICROSOFT mark in any regard, nor is Respondent affiliated with Complainant. Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. Respondent’s <microsoft-365-support.com> resolves to a website prominently displaying images and icons associated with Complainant, while purportedly providing technical support for Complainant’s Office 365 product for a fee.
Respondent registered and is using <microsoft-365-support.com> in bad faith. The disputed domain name attracts internet users to Respondent’s website to commercially benefit off of technical support services not affiliated with Complainant. Respondent registered <microsoft-365-support.com> with actual knowledge of Complainant and its rights to the MICROSOFT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <microsoft-365-support.com> domain name.
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.”).
Complainant is a global provider of computer software, services, solutions, and associated products. Complainant uses the MICROSOFT mark in conjunction with its business practices. Complainant registered the MICROSOFT mark with USPTO (e.g., Reg. No. 1,200,236, registered July 6, 1982). Complainant also holds registrations for the MICROSOFT mark with government entities throughout North and South America, Asia, Europe, Africa, and Australia. The consensus among panels is that registrations with government entities are sufficient to show rights in a mark. See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel finds Complainant’s registrations with multiple government entities are sufficient to show rights in the MICROSOFT mark.
Complainant asserts that Respondent’s <microsoft-365-support.com> is confusingly similar to Complainant’s MICROSOFT mark because it incorporates the mark in its entirety, adding hyphens, the number “365,”—which is representative of one of Complainant’s new products—the generic term “support,” and the “.com” gTLD. The addition of generic terms, numbers, and gTLDs do not adequately distinguish a domain name from the original mark. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exists 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); Bloomberg Finance L.P. v. network admin, FA 1622138 (Forum July 11, 2015) (“The addition, deletion, and switching of . . . numbers in domain names do not remove Respondent’s domain names from the realm of confusing similarity in relation to Complainant’s BLOOMBERG mark pursuant to Policy ¶ 4(a)(i).”). Likewise, the inclusion of hyphens fails to distinguish a disputed domain name from the original mark. See ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug, 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). The Panel finds Respondent’s <microsoft-365-support.com> is confusingly similar to Complainant’s MICROSOFT mark.
Complainant has proved this element.
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 does not have rights or legitimate interests in <microsoft-365-support.com>. To support its assertion, Complainant illustrates that Respondent is not commonly known by the disputed domain name. WHOIS information associated with this case identifies Respondent as “Mike Scott.” The respondent is not commonly known by the disputed domain name where there is no evidence in the record, including the WHOIS information, suggesting that the respondent is commonly known by that name. See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006). Therefore, “[g]iven the WHOIS contact information for the disputed domain [name],” the Panel may “infer that Respondent . . . is not commonly known by the [disputed domain name] in any derivation.” Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Forum Nov. 17, 2003).
Complainant argues it has not authorized or licensed Respondent to use the MICROSOFT mark in any regard, nor is Respondent affiliated with Complainant. Complainant argues that Respondent has not made a bona fide offering of goods and services, or a legitimate non-commercial or fair use of the domain. In support of its argument, Complainant demonstrates that Respondent’s <microsoft-365-support.com> resolves to a website prominently displaying images and icons associated with Complainant, while purportedly providing technical support for Complainant’s Office 365 product for a fee. The diversion of internet users to a respondent’s website by creating a false affiliation with the complainant is not a bona fide or legitimate use. See Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug.21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). The Panel finds that Respondent lacks rights and legitimate interests in <microsoft-365-support.com> pursuant to the Policy.
Complainant has proved this element.
Complainant maintains that Respondent registered and is using <microsoft-365-support.com> in bad faith. Complainant argues that the disputed domain name attracts internet users to Respondent’s website to commercially benefit off of technical support services not affiliated with Complainant. A disputed domain name is registered and used in bad faith where the respondent hosts a website that “duplicate[s c]omplainant’s mark and logo, giving every appearance of being associated or affiliated with [c]omplainant’s business,” to profit off of the goodwill of the complainant. Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Accordingly, the Panel finds Respondent registered and is using <microsoft-365-support.com> in bad faith pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends that Respondent registered <microsoft-365-support.com> with actual knowledge of Complainant and its rights to the MICROSOFT mark. “[A]lthough the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith,” panels have found “actual knowledge through the name used for the domain and the use made of it.” Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014). In light of the fame, notoriety, and long-standing use of Complainant's MICROSOFT mark, it is inconceivable that Respondent could have registered the disputed domain name without actual and/or constructive knowledge of Complainant's rights in the mark. See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Forum March 2, 2012) Since Respondent had actual knowledge of Complainant's mark when it registered <microsoft-365-support.com>, the Panel finds bad faith registration and use.
Complainant has proved this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <microsoft-365-support.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: January 3, 2018
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