national arbitration forum

 

DECISION

 

Microsoft Corporation v. Microsoft Corporation

Claim Number: FA1105001390322

 

PARTIES

 Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA.  Respondent is Microsoft Corporation (“Respondent”), Washington, USA.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <microsoftetest.com>, registered with eNom.com.

 

PANEL

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.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum electronically on May 24, 2011; the National Arbitration Forum received payment on May 24, 2011.

 

On May 24, 2011, eNom.com confirmed by e-mail to the National Arbitration Forum that the <microsoftetest.com> domain name is registered with eNom.com and that Respondent is the current registrant of the names.  eNom.com has verified that Respondent is bound by the eNom.com 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 May 25, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 14, 2011 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@microsoftetest.com.  Also on May 25, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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 National Arbitration Forum transmitted to the parties a Notification of Respondent Default.

 

On June 16, 2011, 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" 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 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.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PARTIES' CONTENTIONS

A.  Complainant makes the following assertions:

 

1.    Respondent’s <microsoftetest.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.

 

2.    Respondent does not have any rights or legitimate interests in the <microsoftetest.com> domain name.

 

3.    Respondent registered and used the <microsoftetest.com> domain name in bad faith.

 

B.  Respondent failed to submit a Response in this proceeding.

 

FINDINGS

Complainant, Microsoft Corporation, is the owner of the MICROSOFT mark, which it uses to provide software and other goods and services. Complainant owns multiple trademark registrations with the United States Patent and Trademark Office (“USPTO”) for its MICROSOFT mark (e.g., Reg. No. 1,200,236 issued July 6, 1982).

 

Respondent, Microsoft Corporation, registered the disputed domain name on April 22, 2011. The disputed domain name resolves to a series of web pages that offer content that appears to come from Microsoft Corporation.

 

DISCUSSION

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.

 

Identical and/or Confusingly Similar

 

Complainant contends that it has established rights in the MICROSOFT mark. In the past, panels have identified registration with a federal trademark authority as a sufficient basis for establishing rights in a mark. 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 Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [complainant’s] mark is registered with the USPTO, [the] complainant has met the requirements of Policy ¶ 4(a)(i)”). Complainant has provided evidence of its registration of the MICROSOFT mark with the USPTO (e.g., Reg. No. 1,200,236 issued July 6, 1982). Therefore, the Panel holds that the Complainant has established rights in the MICROSOFT mark pursuant to Policy ¶ 4(a)(i).

 

Complainant alleges that the <microsoftetest.com> domain name is confusingly similar to Complainant’s MICROSOFT mark. Respondent’s addition of the generic top-level domain (“gTLD”) “.com” does not differentiate it from Complainant’s mark. Previous panels have determined that the addition of a gTLD is insufficient to differentiate a disputed domain name from a mark. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark”). Complainant further contents that Respondent’s full incorporation of the MICROSOFT mark with the addition of the generic term “etest,” an abbreviated form of “electronic test,” is an insignificant change which does not warrant a finding that the change distinguishes the MICROSOFT mark from the disputed domain name. Past panels have frequently agreed with this determination. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to 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). As such, the Panel concludes that Respondent’s <microsoftetest.com> domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).

 

The Panel finds that Complainant has satisfied the elements of Policy ¶ 4(a)(i).

 

Rights or Legitimate Interests

 

Complainant asserts that Respondent does not have rights or legitimate interests in the <microsoftetest.com> domain name. It is well-established that after Complainant has supported its allegations by making a prima facie case, the burden shifts to Respondent to provide evidence that is does have rights or legitimate interests in the disputed domain name. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names”); see also Swedish Match UK Ltd. V. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)). Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the <microsoftetest.com> domain name. Despite this allowance, the Panel will examine the record to determine if Respondent has rights or legitimate interests in the disputed domain name. See Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“Given Respondent’s failure to submit a substantive answer in a timely fashion, the Panel accepts as true all of the allegations of the complaint”); see also Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent’s failure to respond not only results in its failure to meet its burden, but also will be viewed as evidence itself that Respondent lacks rights and legitimate interests in the disputed domain name”).

 

Complainant next alleges that Respondent is not commonly known by the <microsoftetest.com> domain name. While the WHOIS information states that the domain name registrant is “Microsoft Corporation,” the Panel is not required to find that Respondent is commonly known by the domain name absent further supporting evidence.  See Yoga Works, Inc. v. Arpita, FA 155461 (Nat. Arb. Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that although the respondent listed itself as “AIM Profiles” in the WHOIS contact information, there was no other evidence in the record to suggest that the respondent was actually commonly known by that domain name).  The Panel has examined the record and can find no such additional evidence that Respondent is commonly known by the disputed domain name.  Additionally, Respondent is in no way affiliated with Complainant and has not received permission to use the MICROSOFT trademark.  As such, the Panel finds that Respondent is not commonly known by the <microsoftetest.com> domain name pursuant to Policy ¶ 4(c)(ii).

 

Respondent’s disputed domain name resolves to a webpage which attempts to replicate one of Complainant’s genuine websites. Respondent’s disputed domain name solicits contact and payment information from individuals who visit the website. The Panel infers Respondent profits from this phishing scheme.  Previous panels have held that operating a website which attempts to pass itself off as Complainant’s website for the purposes of a phishing scheme is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (finding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates fraudulently” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name to redirect “Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients,” is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use); see also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that the respondent attempts to pass itself off as the complainant online, which is blatant unauthorized use of the complainant’s mark and is evidence that the respondent has no rights or legitimate interests in the disputed domain name). As such, the Panel finds that Respondent’s use of the <microsoftetest.com> domain name 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).

 

The Panel finds that the elements of Policy ¶ 4(a)(ii) have been met.

 

Registration and Use in Bad Faith

 

It can be inferred from Respondent’s request for financial information that the disputed domain name provides Respondent with commercial gain as a result of the use of the confusingly similar <microsoftetest.com> domain name. The use of a confusingly similar domain name likely results in Internet users finding Respondent’s webpage instead of the intended Complainant’s webpage. Respondent seeks to profit from the resulting confusion as to affiliation with Complainant. Previous panels have identified this as bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See 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); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site). The Panel thus finds that Respondent’s utilization of the disputed domain name constitutes bad faith registration and use under Policy ¶ 4(b)(iv).

 

Complainant alleges that the disputed domain name resolves to a webpage which seeks to trick Internet users into divulging personal and financial information. Respondent’s webpage resolves to a series of pages which appear to be affiliated with Complainant and requests personal and financial data for services. Previous panels have found that bad faith registration and use under Policy ¶ 4(a)(iii) is evidenced by this use of a confusingly similar domain name. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients); see also Juno Online Servs., Inc. v. Iza, FA 245960 (Nat. Arb. Forum May 3, 2004) (finding that using a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s billing website, and is used to fraudulently acquire personal information from Complainant’s clients” is evidence of bad faith registration).  The Panel finds accordingly.

 

Complainant contends that Respondent displays the MICROSOFT mark clearly and in multiple places. The Panel infers that Respondent’s intent was to imply to Internet users that it was permissibly associated with or sponsored by Complainant. The Panel finds that Respondent’s intent was to pass off the disputed domain name as being affiliated with Complainant’s MICROSOFT mark. The Panel finds that Respondent’s actions constitute bad faith pursuant to Policy 4(a)(iii).  See DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that the respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the impression that the complainant endorsed and sponsored the respondent’s website); see also Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith because the respondent not only registered Complainant’s famous TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”).

 

The Panel finds that Complainant has satisfied Policy ¶ 4(a)(iii). 

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <microsoftetest.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

Honorable Karl V. Fink (Ret.), Panelist

Dated:  June 17, 2011

 

 

 

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