Microsoft Corporation v. Salomon Perth / Licencias Microsoft Colombia
Claim Number: FA2112001978111
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Salomon Perth / Licencias Microsoft Colombia (“Respondent”), Colombia.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-colombia.com>, registered with Tucows Domains Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on December 22, 2021; the Forum received payment on December 22, 2021.
On December 23, 2021, Tucows Domains Inc. confirmed by e-mail to the Forum that the <microsoft-colombia.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 December 28, 2021, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 18, 2022, 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-colombia.com. Also on December 28, 2021, 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 January 24, 2022, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is a worldwide leader in the development and marketing of computer software and related services.
Complainant holds a registration for the MICROSOFT trademark and service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 1,200,236, registered July 6, 1982, renewed most recently as of April 13, 2012.
Respondent registered the domain name <microsoft-colombia.com> on January 9, 2019.
The domain name is confusingly similar to Complainant’s MICROSOFT mark.
Respondent has not been commonly known by the domain name.
Respondent is not affiliated with Complainant in any way.
Respondent is not licensed by Complainant to use its MICROSOFT mark.
Respondent is not an authorized vendor, supplier or distributor of Complainant’s goods and services.
Respondent fails to use the disputed domain name in connection with either a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Instead, Respondent, evidently for its financial gain, uses the domain name to pass itself off online as being affiliated with Complainant and serving the needs of Complainant’s customers in Columbia, including by displaying Complainant’s name and logo.
Respondent does not have rights to or legitimate interests in the domain name.
Respondent knew of Complainant and its rights in the MICROSOFT mark prior to registering the domain name.
Respondent both registered and now uses the <microsoft-colombia.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark and service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
ii. Respondent has no rights to or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
Complainant has rights in the MICROSOFT trademark and service mark sufficient for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum August 4, 2015) (finding that a UDRP complainant’s USPTO registration for its mark sufficiently demonstrated its rights in that mark under Policy ¶ 4(a)(i)).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Columbia). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he 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.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <microsoft-colombia.com> domain name is confusingly similar to Complainant’s MICROSOFT trademark and service mark. The domain name incorporates the mark in its entirety, with only the addition of a hyphen and the geographic reference “colombia,” plus the generic Top Level Domain (“gTLD”) “.com.”). These alterations of the mark, made in forming the domain name, do not save it from the realm of confusing similarity under the standards of the Policy.
Specifically as to Respondent’s inclusion of a hyphen in the contested domain name, that feature of the domain name is of no consequence to our analysis because a hyphen adds nothing to the meaning, nor does it change the phonetic character, of the result. See, for example, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum February 18, 2004) (finding that hyphens included in a domain name are irrelevant in an analysis of the question of confusing similarity Policy ¶ 4(a)(i)).
For its part, appending a geographic reference to the mark of another in creating a domain name is, as has been found frequently by UDRP panels, likewise of no moment in a review under Policy ¶ 4(a)(i). See, for example, Franklin Covey Co. v. franklincoveykorea, FA 1774660 (Forum April 11, 2018) (finding that the domain name <franklincoveykorea.com> was confusingly similar to the mark FRANKLIN COVEY, because:
[t]he addition of a geographic term … do[es] not negate confusing similarity between a domain name and a mark per Policy ¶ 4(a)(i).
Finally, under this head of the Policy, see, for example, Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Forum September 27, 2002):
[I]t is a well-established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.
This is because every domain name requires a gTLD or other TLD.
Under Policy ¶ 4(a)(ii), Complainant must make out a prima facie showing that Respondent has neither rights to nor legitimate interests in the <microsoft-colombia.com> domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless they are clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c)(i)-(iii), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain name that are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the challenged <microsoft-colombia.com> domain name, and that Complainant has not licensed Respondent to use the MICROSOFT mark. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Salomon Perth / Licencias Microsoft Columbia,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the ambit of Policy ¶ 4(c)(ii). See, for example, Google LLC v. Bhawana Chandel / Admission Virus, FA 1799694 (Forum September 4, 2018) (concluding that a respondent was not commonly known by a disputed domain name incorporating the GOOGLE mark where the relevant WHOIS record identified that respondent as “Bhawana Chandel,” and nothing in the record showed that that respondent was authorized to use a UDRP Complainant’s mark).
We next observe that Complainant asserts, without objection from Respondent,
that Respondent, evidently for its financial gain, uses the domain name to pass itself off online as being affiliated with Complainant and serving the needs of Complainant’s customers in Columbia, including by displaying Complainant’s name and logo. This employment is neither a bona fide offering of goods or services by means of the domain name under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of it under Policy ¶ 4(c)(iii) such as would confirm in Respondent rights to or legitimate interests in the domain name as provided in those subsections of the Policy. See, for example, Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent … is … attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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).
The Panel therefore finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s registration and use of the <microsoft-colombia.com> domain name, which we find to be confusingly similar to Complainant’s MICROSOFT trademark and service mark, as alleged in the Complaint, is an attempt by Respondent to profit illicitly from the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain name. Under Policy ¶ 4(b)(iv), this stands as proof of Respondent’s bad faith in registering and using the domain name. See, for example, Sandhills Publishing Company v. sudeep banerjee / b3net.com, Inc., FA 1674572 (Forum June 17, 2016) (finding that a respondent took commercial advantage of the confusing similarity between a UDRP complainant’s mark and that respondent’s domain name, which, under Policy ¶ 4(b)(iv), demonstrated that respondent’s bad faith in registering and using it). See also Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum December 27, 2017) (finding bad faith registration and use of a domain name under Policy ¶ 4(b)(iv) where “Respondent registered and uses the … domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”).
We are also convinced by the evidence that Respondent knew of Complainant and its rights in the MICROSOFT mark when it registered the <microsoft-colombia.com> domain name. This further illustrates Respondent’s bad faith in registering it. See, for example, Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Forum April 10, 2006) (finding that, where the circumstances presented by the evidence indicate that a respondent knew of a complainant's mark when it registered a confusingly similar domain name, UDRP panels can find bad faith in its registration).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <microsoft-colombia.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: January 26, 2022
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