Microsoft Corporation v. August Communication c/o August Communications
Claim Number: FA1106001394983
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is August Communication c/o August Communications (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net>, registered with Register.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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2011; the National Arbitration Forum received payment on June 22, 2011.
On June 23, 2011, Register.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names are registered with Register.com, Inc. and that Respondent is the current registrant of the names. Register.com, Inc. has verified that Respondent is bound by the Register.com, 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 June 23, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 13, 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@microsoft-computer-sale.com, postmaster@microsoft-computer-sale.net, postmaster@microsoft-sale.com, postmaster@microsoft-sale.net, postmaster@microsoftcomputersale.com, postmaster@microsoftcomputersale.net, postmaster@microsoftsale.biz, and postmaster@microsoftsale.net. Also on June 23, 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 July 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Paul A. Dorf (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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names.
3. Respondent registered and used the <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a worldwide provider of computers, computer software, services and solutions that it offers under the MICROSOFT mark. Complainant owns numerous trademark registrations with the United States Patent and Trademark Office ("USPTO") for its MICROSOFT mark (e.g., Reg. No. 1,200,236 registered July 6, 1982).
Respondent, August Communication c/o August Communications, registered the <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names on September 12, 2010. Respondent’s disputed domain names resolve to a website that appears to be that of Complainant’s online store while also containing links to unrelated businesses.
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.
The Panel finds that Complainant has presented sufficient evidence to establish rights in the mark under Policy ¶ 4(a)(i) through its trademark registrations with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982). 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
Complainant argues that Respondent’s <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names are confusingly similar to its MICROSOFT mark. Complainant notes that the domain names all contain its MICROSOFT mark entirely while some add hyphens and all add descriptive or generic terms. Further, the domain names all add a generic top-level domain (“gTLD”) such as “.com,” “.net,” or “.biz.” The Panel agrees with Complainant and finds that the domain names at issue are confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i). See Chernow Commc’ns, Inc. v. Kimball, D2000-0119 (WIPO May 18, 2000) (holding “that the use or absence of punctuation marks, such as hyphens, does not alter the fact that a name is identical to a mark"); see also Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights or legitimate interests in the <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See 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)); see also Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertions in this regard.”). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
The WHOIS information supplied by Complainant identifies Respondent as “August Communication c/o August Communications.” Complainant argues that Respondent is not commonly known as the disputed domain name under Policy ¶ 4(c)(ii), based upon the WHOIS information and Complainant’s arguments that it has not authorized Respondent to use its marks. The Panel agrees and finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum Dec. 7, 2006) (finding that the respondent failed to establish rights and legitimate interests in the <emitmortgage.com> domain name as the respondent was not authorized to register domain names featuring the complainant’s mark and failed to submit evidence of that it is commonly known by the disputed domain name); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Complainant argues that Respondent is using the disputed domain name to resolve to a website that is nearly identical to Complainant’s online store while using Complainant’s logos and marks. Further, Complainant contends that Respondent’s websites contain links to unrelated websites and businesses. Complainant does not contend that Respondent actually attempts to sell counterfeit or unauthorized goods, but that the appearance of the websites make it feel like they are official websites from Complainant. Complainant argues that Respondent’s attempt to pass itself of as Complainant is evidence that Respondent does not have rights or legitimate interests in the domain names. The Panel agrees and finds that Respondent is not using the disputed domain names for 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 Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005) (finding the respondent’s attempt to pass itself off as the complainant by implementing a color scheme identical to the complainant’s was evidence that respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii)); see also Kmart of Mich., Inc. v. Cone, FA 655014 (Nat. Arb. Forum April 25, 2006) (The panel found the respondent’s attempt to pass itself of as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent registered the <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names on September 12, 2010. The Panel finds that prior UDRP cases have been clear that when a respondent registers multiple infringing domain names within a short period of time, that such registrations are evidence of bad faith registration and use under Policy ¶ 4(b)(ii). See Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶ 4(b)(ii)); see also EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)). Therefore, the Panel finds that Respondent has registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(ii).
Complainant contends that Respondent is using the disputed domain names to attempt to pass itself off as Complainant in order to profit commercially. Complainant has offered evidence to show that Respondent’s websites contain third-party links to unrelated companies, for which Respondent receives click-through or affiliate fees. Complainant argues that Respondent’s use of Complainant’s marks and logos on its websites in order to commercially profit is evidence of bad faith registration and use. The Panel agrees and finds that Respondent registered and is using the disputed domain names in bad faith under Policy ¶ 4(b)(iv). See also 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 <microsoft-computer-sale.com>, <microsoft-computer-sale.net>, <microsoft-sale.com>, <microsoft-sale.net>, <microsoftcomputersale.com>, <microsoftcomputersale.net>, <microsoftsale.biz>, and <microsoftsale.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: July 22, 2011
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