Microsoft Corporation v. steven arruda c/o JSIMPORTS
Claim Number: FA1107001396768
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington, D.C. Respondent is steven arruda c/o JSIMPORTS (“Respondent”), Massachusetts, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftskype.biz>, 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.
Honorable Paul A. Dorf (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 1, 2011; the National Arbitration Forum received payment on July 1, 2011.
On July 6, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftskype.biz> 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 disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On July 6, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 26, 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@microsoftskype.biz. Also on July 6, 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 August 2, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsoftskype.biz> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftskype.biz> domain name.
3. Respondent registered and used the <microsoftskype.biz> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant has operated in the computer software and related products and services industry since 1975. Complainant holds hundreds of registrations around the world for its MICROSOFT mark, including with the United States Patent and Trademark Office (“USPTO”), the Canadian Intellectual Property Office (“CIPO”), and the European Union Office for Harmonization in the Internal Market (“OHIM”):
USPTO
Reg. No. 1,685,083 registered May 5, 1992;
Reg. No. 2,285,870 registered October 12, 1999;
Reg. No. 2,872,708 registered August 10, 2004;
CIPO
Reg. No. TMA309,288 registered December 12, 1985;
Reg. No. KH1,843 registered March 21, 2003;
OHIM
Reg. No. 479,956 registered March 23, 1999; &
Reg. No. 330,910 registered May 7, 1999.
Complainant has also recently acquired the company holding various trademark registrations for the SKYPE mark, thus conferring on Complainant rights to defend this mark, as well:
USPTO
Reg. No. 3,005,039 registered October 4, 2005 &
OHIM
Reg. No. 5,903,786 registered November 4, 2008.
Respondent, steven arruda c/o JSIMPORTS, registered the <microsoftskype.biz> domain name on May 11, 2011. The disputed domain name resolves to a website containing links for goods and services that compete with those offered by Complainant, and even an offer to sell the domain name through GoDaddy auctions.
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.
Complainant holds registrations with trademark agencies around the world for its MICROSOFT marks:
USPTO
Reg. No. 1,685,083 registered May 5, 1992;
Reg. No. 2,285,870 registered October 12, 1999;
Reg. No. 2,872,708 registered August 10, 2004;
CIPO
Reg. No. TMA309,288 registered December 12, 1985;
Reg. No. KH1,843 registered March 21, 2003;
OHIM
Reg. No. 479,956 registered March 23, 1999; &
Reg. No. 330,910 registered May 7, 1999.
Complainant has also recently acquired the company holding various trademark registrations for the SKYPE mark, thus conferring on Complainant rights to defend this mark, as well:
USPTO
Reg. No. 3,005,039 registered October 4, 2005 &
OHIM
Reg. No. 5,903,786 registered November 4, 2008.
Registration with numerous international trademark agencies and registration with the USPTO are each sufficient to establish Complainant’s rights in the mark in their own right. Since Complainant has demonstrated both, the Panel concludes that Complainant has established rights in the MICROSOFT and SKYPE marks pursuant to Policy ¶ 4(a)(i). See Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world); see also 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.”).
Complainant contends that Respondent’s <microsoftskype.biz> domain name is confusingly similar to its MICROSOFT mark. The disputed domain name is a combination of Complainant’s MICROSOFT and SKYPE marks. The Panel holds that by merely combining two of Complainant’s marks, Respondent does not create a unique domain name pursuant to Policy ¶ 4(a)(i). See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name). Furthermore, Respondent’s addition of the generic top-level domain (“gTLD”) “.biz” is insufficient to distinguish the domain name from Complainant’s marks. See 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 concludes that Respondent’s <microsoftskype.biz> is confusingly similar to Complainant’s MICROSOFT mark for the purposes of Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) has been established.
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain name. Initially, Complainant carries the burden of presenting a prima facie case by submitting an adequate Complaint. Once this has been done, as is the case here, the burden shifts to Respondent to refute Complainant’s claims. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”); see also Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name).While some past panels have construed Respondent’s failure to respond to the Complainant as strong evidence that Respondent lacks rights and legitimate interests in the disputed domain name, the Panel will still examine the record to determine if such rights or legitimate interests exist for the purposes of Policy ¶ 4(a)(ii).
Complainant argues that Respondent is not commonly known by the <microsoftskype.biz> domain name, as envisioned by Policy ¶ 4(c)(ii). Past panels have looked first to the relevant WHOIS information for evidence of whether the Respondent may be commonly known by a disputed domain name. See Wells Fargo & Co. v. Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003) (“Given the WHOIS contact information for the disputed domain [name], one can infer that Respondent, Onlyne Corporate Services11, is not commonly known by the name ‘welsfargo’ in any derivation.”). The relevant WHOIS information in this case identifies the Respondent as “steven arruda c/o JSIMPORTS”, which the Panel determines to be entirely distinct from the <microsoftskype.biz> domain name. Additionally, Complainant alleges that Respondent owns no rights in, and has no registrations for, the MICROSOFT or SKYPE marks and has not been licensed or otherwise authorized to use the marks. Since Respondent has failed to provide a Response, the Panel must accept these allegations as true, and subsequently concludes that Respondent is not commonly known by the <microsoftskype.biz> domain name as envisioned by Policy ¶ 4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Complainant further asserts that Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). Complainant has presented undisputed evidence that the <microsoftskype.biz> domain name resolves to a website containing links for goods and services that compete with those offered by Complainant, including links to various competing software providers. Consistent with the bulk of UDRP precedent, the Panel holds that this use of the disputed domain constitutes neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See Vapor Blast Mfg. Co. v. R & S Tech., Inc., FA 96577 (Nat. Arb. Forum Feb. 27, 2001) (finding that the respondent’s commercial use of a confusingly similar domain name suggests that the respondent lacks rights or legitimate interests in the disputed domain name); see also ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007) (rejecting the respondent’s contention of rights and legitimate interests in the <bravoclub.com> domain name because the respondent was merely using the domain name to operate a website containing links to various competing commercial websites, which the panel did not find to be a use in connection with 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 fact that Respondent’s website offers to sell the disputed domain name through GoDaddy auctions is also an indication that Respondent’s use of the disputed domain name does not represent a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use under Policy ¶ 4(c)(iii). See also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”). Moreover, record of communication between the parties strongly suggests the absence of a bona fide offering of goods or services or a legitimate noncommercial fair use. Respondent contacted Complainant’s counsel after being asked to cease its use of the disputed domain name and refused to transfer the domain name, instead stating that if Complainant wanted to use the disputed domain name it would have to purchase it. Respondent refused to specify a selling price. See Am. Nat’l Red Cross v. Domains, FA 143684 (Nat. Arb. Forum Mar. 4, 2003) (“Respondent’s lack of rights and legitimate interests in the domain name is further evidenced by Respondent’s attempt to sell its domain name registration to Complainant, the rightful holder of the RED CROSS mark.”). Again, the Panel holds that Respondent’s attempts to sell the disputed domain can constitute neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial fair use under Policy ¶ 4(c)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant alleges that Respondent’s public offer on the resolving website to sell the disputed domain name by auction is evidence of bad faith under Policy ¶ 4(b)(i). The issue here is not simply that the domain name is for sale, but rather that a confusingly similar domain name, which was likely created to usurp Complainant’s goodwill, is being offered for sale. Respondent’s inclusion of Complainant’s entire mark in the disputed domain name strongly implies that the domain name was registered with this intent. See CBS Broad. Inc. v. Worldwide Webs, Inc., D2000-0834 (WIPO Sept. 4, 2000) (“There is nothing inherently wrongful in the offer or sale of domain names, without more, such as to justify a finding of bad faith under the Policy. However, the fact that domain name registrants may legitimately and in good faith sell domain names does not imply a right in such registrants to sell domain names that are identical or confusingly similar to trademarks or service marks of others without their consent”); see also Wrenchead.com, Inc. v. Hammersla, D2000-1222 (WIPO Dec. 12, 2000) (finding that offering the domain name for sale at an auction site is evidence of bad faith registration and use).. Respondent’s refusal to cease use of the disputed domain name and subsequent offer to sell the disputed domain name to Complainant during later communications with Complainant further evidences an intent to sell and bad faith registration and use. See Little Six, Inc. v. Domain For Sale, FA 96967 (Nat. Arb. Forum Apr. 30, 2001) (finding the respondent's offer to sell the domain name at issue to the complainant was evidence of bad faith). The Panel thus concurs with Complainant, finding that Respondent’s offers to sell the confusingly similar disputed domain name evidence bad faith registration and use under Policy ¶ 4(b)(i).
The Panel also finds that Respondent’s purposeful selection of a domain name incorporating Complainant’s famous MICROSOFT and SKYPE marks in order to create a website containing links for goods and services that compete with those offered by Complainant constitutes disruption under Policy ¶ 4(b)(iii). Respondent’s selection of a confusingly similar domain name is evidence that Respondent intended to mislead or confuse users as to the source or affiliation of the website. This disrupts complainant’s business, because users who intended to purchase Complainant’s products or services may unwittingly end up purchasing those products or services from Complainant’s competitors after visiting the links posted on Respondent’s website. The Panel finds that this amounts to bad faith registration pursuant to Policy ¶ 4(b)(iii). See Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
The Panel finds the elements of Policy ¶ 4(a)(iii) have 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 <microsoftskype.biz> domain name be TRANSFERRED from Respondent to Complainant.
Honorable Paul A. Dorf (Ret.), Panelist
Dated: August 9, 2011
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