Microsoft Corporation v. jatin patel c/o network info
Claim Number: FA1107001398287
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington D.C., USA. Respondent is jatin patel c/o network info (“Respondent”), South Carolina, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftskype.co>, 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 12, 2011; the National Arbitration Forum received payment on July 12, 2011.
On July 13, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftskype.co> 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 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 3, 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.co. Also on July 14, 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 8, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.co> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftskype.co> domain name.
3. Respondent registered and used the <microsoftskype.co> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, owns the MICROSOFT mark. The MICROSOFT mark is registered multiple times with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 registered July 6, 1982). The mark is used in connection with the manufacture, marketing, and sale of computer software goods and services. Complainant, on May 10th, announced its acquisition of SKYPE. The Panel infers that Complainant has also acquired the SKYPE registered trademarks. The SKYPE mark also has multiple registrations with the USPTO (e.g., Reg. No. 3,005,039 registered April 10, 2005). The SKYPE mark is used in connection with the development and distribution of technology to engage in real-time communications over the Internet.
Respondent, jatin patel c/o network info, registered the <microsoftskype.co> domain name on May 11, 2011. The disputed domain name resolves to a website which operates pay-per-click links to advertisements for goods and services provided by Complainant and its competitors.
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 contends it has rights in the MICROSOFT and SKYPE marks. Complainant has provided evidence of its registration of the MICROSOFT mark with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982). Additionally, Complainant has provided evidence of the SKYPE mark’s registration with the USPTO that it has acquired (e.g., Reg. No. 3,005,039 registered April 10, 2005). The Panel finds that Complainant has established rights in its marks under Policy ¶ 4(a)(i). 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 Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant also contends that Respondent’s <microsoftskype.co> domain name is confusingly similar to its MICROSOFT mark. Respondent’s addition of the country-code top-level domain (“ccTLD”) “.co” is insufficient to distinguish the disputed domain name from the mark. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); 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).
Often a complainant has more than one trademark. The combination of two marks to make up a disputed domain name also fails to distinguish the domain name from the mark. 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); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”). Respondent added the SKYPE mark to the MICROSOFT mark in the <microsoftskype.co> domain name. Therefore, the Panel finds that the <microsoftskype.co> domain name is confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Once a complainant has made a prima facie case in support of its allegations, the burden shifts to the respondent to prove the allegations are untrue. See Starwood Hotels & Resorts Worldwide, Inc. v. Samjo CellTech.Ltd, FA 406512 (Nat. Arb. Forum Mar. 9, 2005) (“Complainant has made a prima facie showing that Respondent lacks rights to the Domain Name. The threshold for making such a showing is quite low, since it is difficult to produce evidence to support a negative statement.”); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”). Complainant has asserted that Respondent does not have rights or legitimate interests in the disputed domain name. The Panel finds that Complainant has made a prima facie case is support of this. Respondent now has the responsibility to contradict these claims if they are untrue. As Respondent failed to submit a Response, the Panel infers that the assertions are correct. See CMGI, Inc. v. Reyes, D2000-0572 (WIPO Aug. 8, 2000) (finding that the respondent’s failure to produce requested documentation supports a finding for the complainant); see also 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.”). The Panel will, however, review the record to consider any evidence suggesting that Respondent has rights or legitimate interests in the <microsoftskype.co> domain name under Policy ¶ 4(c).
Complainant argues that Respondent is not commonly known by the disputed domain name. Guided by Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) and Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006), the Panel will look to the WHOIS listing for the <microsoftskype.co> domain name as well as Complainant’s assertions to determine if Respondent is commonly known by the disputed domain name. Complainant claims that Respondent is not licensed to use either the MICROSOFT or SKYPE marks. The WHOIS information for the disputed domain name lists “jatin patel c/o network info” as the domain name registrant. Therefore, the Panel finds that Respondent is not commonly known by the <microsoftskype.co> domain name under Policy ¶ 4(c)(ii).
Complainant argues that Respondent’s use of the disputed domain name is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s <microsoftskype.co> domain name resolves to a website which operates pay-per-click links to advertisements for goods and services provided by Complainant and Complainant’s competitors. The Panel finds that this use is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use. See Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) (holding that the operation of a pay-per-click website at a confusingly similar domain name 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)).
The Panel finds that Policy ¶ 4(a)(ii) is met.
A respondent may not register and use a domain name which is disruptive to the complainant’s business. A domain name’s registration and use has been found to be disruptive where the website features links or advertisements to the complainant and the complainant’s competitors. See American Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iii) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names). Complainant contends that Respondent’s domain name resolves to a website which advertises products Complainant and Complainant’s competitors provide. Thus, the Panel finds that Respondent’s registration and use of the disputed domain name is disruptive, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iii).
Often, respondents register and use disputed domain names so as to confuse Internet users and take advantage of that confusion for commercial gain. This demonstrates bad faith on the part of the respondent. This is frequently the case when a disputed domain name resolves to a website which displays advertisements or links to the complainant’s products or products of the complainant’s competitors, just as the <microsoftskype.co> domain name does. See Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names); see also University of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”). The Panel thus finds that Respondent registered and used the domain name in bad faith due to the likelihood of confusion and potential for commercial gain pursuant to Policy ¶ 4(b)(iv).
Finally, Complainant contends that the Respondent registered and used the disputed domain as a result of opportunistic bad faith. Registering and using a disputed domain name following the announcement of an event occurring, that the disputed domain name reflects, demonstrates bad faith. See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that the “domain names are so obviously connected with the Complainants that the use or registration by anyone other than Complainants suggests ‘opportunistic bad faith’”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”). Complainant announced its acquisition of SKYPE on May 10, 2011. On May 11, 2011, Respondent registered the disputed domain name which is a combination of Complainant’s MICROSOFT mark and its newly acquire SKYPE mark. The Panel thus finds that Respondent’s registration and use of the disputed domain name was done opportunistically and in bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is met.
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.co> domain name be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
Dated: August 9, 2011
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