Microsoft Corporation v. Kurma Group, Inc.
Claim Number: FA0812001238996
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 <zuneisbetter.com>, registered with Godaddy.com, Inc.
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.
James A Crary as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 16, 2008; the National Arbitration Forum received a hard copy of the Complaint on December 17, 2008.
On December 17, 2008, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <zuneisbetter.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 18, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of January 7, 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@zuneisbetter.com by e-mail.
On January 2, 2009, the National Arbitration Forum granted the parties’ December 30, 2008 Joint Request to Stay the Administrative Proceeding, thereby setting a deadline of February 13, 2009 by which either party could submit a request to continue the Administrative Proceeding.
On January 27, 2009, the National Arbitration Forum granted Complainant’s January 26, 2009 Request to Remove the Stay of the Administrative Proceeding, thereby setting a deadline of February 2, 2009 by which Respondent could file a response to the Complaint.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On February 7, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Crary 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 <zuneisbetter.com> domain name is confusingly similar to Complainant’s ZUNE mark.
2. Respondent does not have any rights or legitimate interests in the <zuneisbetter.com> domain name.
3. Respondent registered and used the <zuneisbetter.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured and sold computer software and related products and services since 1975. Complainant announced its new media player under the ZUNE trademark in September 2006. Prior to this announcement, Complainant already owned the <zune.net> domain name since June 2006, and applied for trademark registrations of the ZUNE mark on August 16, 2006. Complainant’s ZUNE mark was subsequently registered with the United States Patent and Trademark Office (“USPTO”) (i.e. Reg. No. 3,294,152 issued September 18, 2007). Complainant has also registered the mark with numerous other governmental trademark authorities worldwide.
Respondent registered the disputed <zuneisbetter.com> domain name on February 27, 2007. The disputed domain name resolves to a website that seeks to persuade Internet customers to purchase memberships that allow the downloading of 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.
Pursuant to Policy ¶ 4(a)(i), the Panel finds that: (1) Complainant’s registration of the
ZUNE mark with the USPTO confers sufficient rights in the mark; and (2)
Complainant’s rights in the mark for purposes of the Policy date back to the
date of the registered mark’s application.
See Microsoft Corp. v. Burkes, FA 652743 (Nat.
Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT
mark through registration of the mark with the USPTO.”); see also Hershey Co. v. Reaves,
FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights
in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the
trademark application and predate [the] respondent’s registration”).
Respondent’s <zuneisbetter.com> domain name contains Complainant’s ZUNE mark with the following changes: (1) the phrase “is better” has been added; and (2) the generic top-level domain “.com” has been included. The Panel aligns itself with the panel in Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002): “it is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.” Moreover, the addition of phrases—described as “laudatory” by Complainant—do not create a sufficient distinction in the eyes of this Panel. In Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004), the panel found that the addition of generic terms to the complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names. Much in the same way, the ZUNE mark is the dominant element in the disputed domain name. The words “is” and “better” are merely terms that denote existential expression or an elementary adjective, respectively. Therefore, the Panel finds that Respondent’s domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged that Respondent lacks rights and legitimate interests in the disputed domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may presume that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). However, the Panel in its discretion chooses to examine the record to determine whether Respondent has any rights or legitimate interests pursuant to the factors outlined in Policy ¶ 4(c). See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 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, then the burden shifts to Respondent to show that it does have rights or legitimate interest in the subject domain names.”); see also 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 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 specifically alleges that it does not permit unaffiliated entities to use its ZUNE mark, and that Respondent lacks such permission or authorization. Moreover, Complainant raises the correct inference that the WHOIS information’s listing of Respondent as “Kurma Group, Inc.” belies any notion that Respondent is commonly known by the disputed domain name. Simply put, there is no evidence within the record that the Panel could use to construct a finding that Respondent is commonly known by the disputed domain name. The Panel therefore finds that Respondent lacks rights and legitimate interests under Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Am. Online, Inc. v. World Photo Video & Imaging Corp., FA 109031 (Nat. Arb. Forum May 13, 2002) (finding that the respondent was not commonly known by <aolcamera.com> or <aolcameras.com> because the respondent was doing business as “Sunset Camera” and “World Photo Video & Imaging Corp.”).
Complainant alleges that Respondent is using the disputed
domain name to revert to a website that urges Internet users to obtain
downloading memberships with Respondent.
Complainant has submitted a screen printout documenting this usage. It would be preposterous to describe this use
as anything other than purely commercial: Respondent is advertising for-cost music
and movie downloading services. While it
is significant that Complainant’s ZUNE mark also corresponds with a multimedia
player, it does not necessarily matter for the Policy whether or not this use
is strictly competitive with Complainant or is merely aimed at indirectly
scrounging business from Complainant’s own operations. In either event, Respondent is clearly
seeking commercial gain by diverting Internet users with the confusingly
similar disputed domain name that incorporates Complainant’s ZUNE mark. The Panel therefore finds that Respondent has
not created 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 Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. 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).”); see also Am. Online, Inc. v.
Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept.
26, 2003) (“Respondent's registration and use of the <gayaol.com> domain
name with the intent to divert Internet users to Respondent's website suggests
that Respondent has no rights to or legitimate interests in the disputed domain
name pursuant to Policy Paragraph 4(a)(ii).”).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
For the purposes of Policy ¶ 4(b)(iii), the Panel chooses to follow the broad definition of disruptive competitor. See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). Respondent’s disputed domain name resolves to a website pushing downloading services with language that appears to indicate that Internet users should choose Respondent’s business over Complainant, or at least use Respondent as some type of middleman. The Panel finds that Respondent is likely seeking to disrupt Complainant’s business for its own commercial benefit. The Panel has no evidence in the record that counters this conclusion. Therefore, the Panel finds that Respondent has registered and continues to use the disputed domain name in bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Under Policy ¶ 4(b)(iv), the Panel’s analytical task is much
more straight-forward. Respondent is
clearly seeking to create a likelihood of confusion as to Complainant’s source
or affiliation with the disputed domain name and corresponding website for
commercial gain. Respondent is trading
off of Complainant’s goodwill in the mark, and thus has engaged in bad faith
registration and use under Policy ¶ 4(b)(iv).
See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad
faith registration and use under Policy ¶ 4(b)(iv) where the respondent was
diverting Internet users searching for the complainant to its own website and
likely profiting); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <zuneisbetter.com> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: February 23, 2009
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