Microsoft Corporation v. Asiamuyeok
Claim Number: FA1812001819804
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Asiamuyeok (“Respondent”), Korea.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <window10.asia>, registered with Koreacenter co., Ltd..
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.
David A. Einhorn appointed as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 6, 2018; the Forum received payment on December 6, 2018.
On January 7, 2019, Korea center co., Ltd. confirmed by e-mail to the Forum that the <window10.asia> domain name is registered with Koreacenter co., Ltd. and that Respondent is the current registrant of the name. Koreacenter co., Ltd. has verified that Respondent is bound by the Koreacenter co., Ltd. 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 January 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 29, 2019 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@window10.asia. Also on January 9, 2019, 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 February 4, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed David Einhorn 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, Microsoft Corporation, is a global leader in the computer software industry. Complainant has rights in the WINDOWS mark based upon the registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,264, registered Jan. 10, 1995). The most recent version of Microsoft’s software is Windows 10. Respondent’s <window10.asia> is confusingly similar to Complainant’s mark as Respondent merely removes the letter “s” and adds the number “10” along with the “.asia” generic top-level domain (“gTLD”) to Complainant’s WINDOWS mark.
Respondent does not have any rights or legitimate interests in the <window10.asia> domain name. Respondent is not permitted or licensed to use Complainant’s WINDOWS mark and is not commonly known by the disputed domain name. Respondent does not use the disputed domain name for any bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <window10.asia> domain name to pass off as Complainant in order to sell Complainant’s counterfeit products or other third party products that compete directly with Complainant.
Respondent has registered and uses the domain name in bad faith. Respondent attempts to disrupt Complainant’s business and attract, for commercial gain, Internet users by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Further, Respondent must have had knowledge of Complainant’s WINDOWS mark prior to registering the <window10.asia> domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding. The Panel notes that the <window10.asia> domain name was registered on August 24, 2018.
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 claims rights in the WINDOWS mark based upon its registration with the USPTO. Registration with the USPTO is sufficient to establish rights in a mark pursuant to Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i). Complainant provides copies of its’ USPTO registrations for the WINDOWS mark (e.g., Reg. No. 1,872,264, registered Jan. 10, 1995). Therefore, the Panel finds that Complainant has rights in the WINDOWS mark per Policy ¶ 4(a)(i).
Next, Complainant asserts that the <window10.asia> domain name is confusingly similar to the WINDOWS mark as it contains the mark in its entirety, merely removing the letter “s,” adding the number “10,” and adding the “.asia” gTLD. Complainant indicates that the most recent revision of its Window software is Windows 10. Therefore, the inclusion of the number “10” in the domain name further increases the confusing similarity, See Microsoft Corporation v. Yunteug Con/Individual, FA 1687600 (Forum Sept. 14, 2016) (finding <window10appstore.net> confusingly similar to the Windows trademark.
The Panel therefore finds that the <window10.asia> domain name is confusingly similar to Complainant’s WINDOWS mark per Policy ¶ 4(a)(i).
Complainant argues that Respondent has no rights or legitimate interests in <window10.asia> domain name. Specifically Complainant argues that Respondent is not licensed or authorized to use the WINDOWS mark and is not commonly known by the disputed domain name. Where a response is lacking, WHOIS information can support a finding that a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.). Additionally, lack of authorization to use a complainant’s mark may demonstrate that the respondent is not commonly known by the disputed domain name. See Navistar International Corporation v. N Rahmany, FA1620789 (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 WHOIS information of record identifies Respondent as “Asiamuyeok,” and there is no other evidence to suggest Respondent was authorized to use the WINDOWS mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent fails to make a bona fide offering or goods or services or legitimate noncommercial or fair use. Specifically, Complainant argues that Respondent uses the <window10.asia> domain name to sell counterfeit products. Sale of counterfeit products may be evidence that a respondent does not make a bona fide offering of goods or services or a legitimate noncommercial or fair use of a disputed domain name under Policy ¶¶ 4(c)(i) or (iii). See Watts Water Technologies Inc. v. wo ci fa men zhi zao (kun shan) you xian gong si, FA 1740269 (Forum Aug. 11, 2017) (“Respondent has used the domain name to resolve to a website that mimics the color scheme associated with Complainant’s WATTS brand and displays counterfeit versions of Complainant’s products for purchase in an attempt to pass itself off as Complainant… [therefore], the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name.”). Here, Complainant contends Respondent's website prominently displays images of Complainant’s software products as well as unrelated third party computer products for which Respondent purportedly sells Certificates of Authenticity. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Finally, Complainant contends that its trademarks are the most prominent source indicators at Respondent’s website. This is likely to confuse and mislead consumers as to Respondent’s affiliation with Complainant and constitutes passing off. Using a complainant’s mark to pass off as a complainant may be evidence of a lack of a bona fide offering of goods or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corp. v. lijiuliang, FA1300266 (Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … 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)”). Here, Complainant provides screenshots of Respondent’s website which displays Complainant’s mark and its products. The Panel agrees with Complainant that this use does not amount to a bona fide offering or good or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Thus, Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent registered and is using the <window10.asia> domain name in bad faith by disrupting Complainant’s business and diverting users to the disputed domain name which sells counterfeit products. Disrupting a complainant’s business and diverting users to a disputed domain name which sells counterfeit goods may evince bad faith per Policy ¶¶ 4(b)(iii) and (iv). See Ontel Products Corporation v. waweru njoroge, FA1762229 (Forum Dec. 22, 2017) (“Respondent’s primary offering seem to be counterfeits of Complainant’s toy car products. Respondent’s use of the <magictrackscars.com> domain name is thus disruptive to Complainant’s business per Policy ¶ 4(b)(iii)”). As previously mentioned, Respondent's website prominently displays images of Complainant’s software products as well as unrelated third party computer products Respondent purportedly sells counterfeit Certificates of Authenticity.. Furthermore, by using the <window10.asia> domain along with photographs of Complainant’s counterfeit products, Respondent attempts to profit by creating a likelihood of confusion with Complainant’s WINDOWS mark as to the source, sponsorship, affiliation, or endorsement of Respondent's web site and products offered through the disputed domain name’s resolving website. Therefore, the Panel finds that Respondent attempts to disrupt Complainant’s business and commercially benefit off Complainant’s mark in bad faith under Policy ¶¶ 4(b)(iii) and/or (iv).
Finally, Complainant argues that Respondent registered the disputed domain name with actual knowledge of Complainant’s mark. Where a mark is famous, respondent may be presumed to have actual knowledge of complainant’s rights in the mark. See Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration). Complainant asserts, given the global reach of the Internet, and the fact that Respondent's website displays the WINDOWS mark alongside counterfeit software products, that Respondent must have been aware of Complainant and its WINDOWS mark prior to registering the disputed domain name. The Panel infers that Respondent had actual knowledge of Complainant’s rights in the WINDOWS mark prior to registering the <window10.asia> domain name, thereby supporting a finding of bad faith under Policy ¶ 4(a)(iii).
Thus, Complainant has also satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <window10.asia> domain name be TRANSFERRED from Respondent to Complainant.
David A. Einhorn, Panelist
Dated: February 14, 2019
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