Microsoft Corporation v. Anthony Abraham
Claim Number: FA0812001238826
Complainant is Microsoft
Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <zunedownloadspro.com>, registered with Godaddy.com, Inc.
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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 15, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 16, 2008.
On December 19, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <zunedownloadspro.com> domain name is registered with Godaddy.com, Inc. and that Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On December 29, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 20, 2009 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@zunedownloadspro.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 27, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <zunedownloadspro.com> domain name is confusingly similar to Complainant’s ZUNE mark.
2. Respondent does not have any rights or legitimate interests in the <zunedownloadspro.com> domain name.
3. Respondent registered and used the <zunedownloadspro.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has been a leading seller in computer software and related products since 1975. In July of 2006, numerous media outlets began reporting that Complainant would be launching a new product called ZUNE that would give Internet users the ability to download music, videos, and software. Complainant subsequently applied for two trademark registrations for the ZUNE mark with the United States Patent and Trademark Office (“USPTO”), both of which were filed on August 16, 2006. These trademark registrations were approved by the USPTO on September 17, 2007 (Reg. No. 3,294,152) and August 19, 2008 (Reg. No. 3,490,714). Complainant also operates the <zune.com> and <zune.net> domain names to promote its products.
Respondent registered the disputed <zunedownloadspro.com> domain name on January 17, 2007, and is using it to operate a website that allows Internet users to download movies and music.
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."
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.”).
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.
To satisfy Policy ¶ 4(a)(i), Complainant must first establish rights in a mark. Complainant asserts such rights in the ZUNE mark by evidencing its two corresponding trademark registrations with the USPTO. In accordance with extensive precedent on this issue, the Panel finds that these trademark registrations adequately confer rights in the ZUNE mark to Complainant for the purpose of this proceeding. The Panel further finds, pursuant to Policy ¶ 4(a)(i), that Complainant’s rights in the mark date back to the filing date on Complainant’s trademark applications, which in this case is August 16, 2006. See Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel also concludes that Complainant’s trademark registration of its mark provides ample basis to conclude that it has rights in the mark.”); see also Thompson v. Zimmer, FA 190625 (Nat. Arb. Forum Oct. 27, 2003) (“As Complainant’s trademark application was subsequently approved by the U.S. Patent and Trademark Office, the relevant date for showing ‘rights’ in the mark for the purposes of Policy ¶ 4(a)(i) dates back to Complainant’s filing date.”).
Next, Complainant must prove that the disputed domain name
is confusingly similar to Complainant’s mark.
Complainant alleges that the <zunedownloadspro.com> domain
name contains its ZUNE mark in its entirety and merely adds the generic or
descriptive terms “downloads” and “pro,” as well as the generic top-level
domain (“gTLD”) “.com.” The Panel
perceives the term “downloads” to be descriptive of Complainant’s music,
movies, and software downloading program, while the term “pro” is generic. However, the Panel believes that this
distinction is inconsequential since Complainant’s ZUNE mark remains the
dominant portion of the disputed domain name, and the additions of these words
do not detract from the confusing similarity.
The Panel also notes that the gTLD “.com” is irrelevant to this analysis
since all domain names require top-level domains. Therefore, the Panel concludes that
Respondent’s <zunedownloadspro.com> domain name is confusingly
similar to Complainant’s ZUNE mark pursuant to Policy ¶ 4(a)(i). See Whitney
Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The
additions of generic words with an obvious relationship to Complainant’s
business and a gTLD renders the disputed domain name confusingly similar to
Complainant’s mark pursuant to Policy ¶ 4(a)(i).”); see also State Farm Mut. Auto. Ins. Co. v.
The Panel finds that Complainant has satisfied the
requirements of Policy ¶ 4(a)(i).
In its analysis of Policy ¶ 4(a)(ii), Complainant in its Complaint begins by asserting that “Respondent has no rights or legitimate interests in the domain name at issue.” The Policy, and specifically Policy ¶ 4(a)(ii), requires that Complainant establish a prima facie case supporting this assertion. Based upon the allegations in the Complaint, which will be examined in greater detail below, the Panel concludes that Respondent has established a prima facie case. Therefore, the burden shifts to Respondent to prove that it has rights or legitimate interests in the <zunedownloadspro.com> domain name. 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 Policy ¶ 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 make a prima facia (sic) 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 interest in the subject domain names.”).
However, Respondent has not responded to the Complaint. Therefore, the Panel presumes that Respondent lacks all rights and legitimate interests in the <zunedownloadspro.com> domain name. Nevertheless, the Panel will examine all information in the record pursuant to the factors outlined in Policy ¶ 4(c) before making a final determination as to Respondent’s rights and legitimate interests. Again, since Respondent has not responded to the Complaint, the Panel can rely only upon the evidence contained in the record that was produced by Complainant, and the Panel has the authority to accept all allegations as true unless clearly contradicted by other evidence. See Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”); see also Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (“Respondent’s failure to respond to the Complaint functions as an implicit admission that [Respondent] lacks rights and legitimate interests in the disputed domain name. It also allows the Panel to accept all reasonable allegations set forth…as true.”).
Complainant explicitly contends in its Complaint that “Respondent is not known by, and is not affiliated with, any business known by the name <zunedownloadspro.com>….” Complainant goes on to state that it has not licensed or otherwise authorized Respondent to use its ZUNE mark in the disputed domain name. Complainant correctly points out that the WHOIS domain name registration information identifies Respondent as “Anthony Abraham,” which does not correspond to the disputed domain name in any way. Therefore, the Panel concludes that Respondent is not commonly known by the <zunedownloadspro.com> domain name, and therefore cannot satisfy Policy ¶ 4(c)(ii). See O.F. Mossberg & Sons, Inc. v. Thompson Dev., FA 1223025 (Nat. Arb. Forum Oct. 22, 2008) (finding that the respondent was not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii) based on the WHOIS information, and since the complainant was not affiliated with the respondent and had not licensed or authorized the respondent to use the complainant’s trademark); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant provided a screen printout of the website resolving from the <zunedownloadspro.com> domain name as an Exhibit with the Complaint. This screen printout demonstrates that Respondent is using the <zunedownloadspro.com> domain name to operate a website that allows Internet users to download movies and music. This use of the disputed domain name is in direct competition with Complainant’s use of the ZUNE mark. Thus, Respondent’s attempt to profit off of the confusing similarity between the <zunedownloadspro.com> domain name and Complainant’s ZUNE mark is evidence of neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The Panel therefore concludes that Respondent lacks rights or legitimate interests in the <zunedownloadspro.com> domain name pursuant to Policy ¶¶ 4(c)(i) and (iii). See Am. Int’l Group, Inc. v. Benjamin, FA 944242 (Nat. Arb. Forum May 11, 2007) (finding that the respondent’s use of a confusingly similar domain name to advertise services that competed with the complainant’s business did not constitute 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)); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing services was 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) since the respondent was appropriating the complainant’s mark in order to profit from the mark).
The Panel has concluded that Complainant has made its prima facie case pursuant to Policy ¶ 4(a)(ii), and Respondent cannot establish rights or legitimate interests pursuant to any of the factors outlined in Policy ¶ 4(c). Therefore, the Panel concludes that Policy ¶ 4(a)(ii) has been satisfied in Complainant’s favor.
To satisfy Policy ¶ 4(a)(iii), a complainant may identify circumstances that demonstrate bad faith registration and use pursuant to the four instances explained in Policy ¶ 4(b). While Complainant has not examined the Policy ¶ 4(b) elements, the Panel finds that there is ample basis upon which to conclude that Respondent registered and used the disputed domain name in bad faith based on two of these elements, and this is sufficient to fulfill the requirements of Policy ¶ 4(a)(iii).
Policy ¶ 4(b)(iii) identifies when a respondent registers a domain name primarily for the purpose of disrupting the business of a competitor. The Panel finds that such a circumstance exists in this case. Respondent is using the <zunedownloadspro.com> domain name to directly compete with Complainant’s business by offering the exact same services. Without evidence to the contrary, this appears to be Respondent’s primary purpose for registering the <zunedownloadspro.com> domain name. Therefore, the Panel concludes that Respondent registered and is using the <zunedownloadspro.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii). See Spark Networks PLC v. Houlihan, FA 653476 (Nat. Arb. Forum Apr. 18, 2006) (holding that the respondent’s registration of a domain name substantially similar to the complainant’s mark in order to operate a competing website supported a finding that the respondent registered and used the domain name to disrupt the complainant’s business in bad faith under Policy ¶ 4(b)(iii)); see also Classic Metal Roofs, LLC v. Interlock Indus., Ltd., FA 724554 (Nat. Arb. Forum Aug. 1, 2006) (finding that the respondent registered and used the <classicmetalroofing.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii) by redirecting Internet users to the respondent’s competing website).
Policy ¶ 4(b)(iv) identifies a situation in which a respondent creates a likelihood of confusion for its own commercial gain. This element of the Policy is also applicable to this case. Complainant notes that Internet users are likely to believe that Complainant is the source or is somehow affiliated with the website resolving from the <zunedownloadspro.com> domain name because of the confusing similarity of the domain name with Complainant’s ZUNE mark. The Panel agrees, and believes that Respondent is attempting to profit off of the goodwill associated with Complainant’s mark. The Panel determines that Respondent has created this likelihood of confusion for its own commercial gain, so Respondent registered and is using the <zunedownloadspro.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was commercially gaining from the likelihood of confusion between the complainant’s mark and the competing products and services advertised on the respondent’s website that resolved from the disputed domain name); see also Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because Respondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Because the circumstances identified in Policy ¶¶ 4(b)(iii) and (iv) are present in this case, the Panel
concludes that Policy ¶ 4(a)(iii) has been satisfied in Complainant’s favor.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zunedownloadspro.com> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: February 9, 2009
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