Microsoft Corporation v. Hai Chen / Cixi
Claim Number: FA1208001459312
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Hai Chen / Cixi (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-china.com>, registered with GoDaddy.com, LLC.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 22, 2012; the National Arbitration Forum received payment on August 22, 2012.
On August 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <microsoft-china.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 17, 2012 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-china.com. Also on August 27, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail 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 September 20, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has rights in the MICROSOFT mark. The mark is used in connection with software and related goods and services. Complainant is the owner of United States Patent and Trademark Office (“USPTO”) trademark registrations for the MICROSOFT mark (e.g., Reg. No. 1,200,236 registered July 6, 1982). Complainant also owns Chinese’s State Administration for Industry and Commerce (“SAIC”) trademark registrations for the MICROSOFT mark (e.g., Reg. No. 621,767 registered December 10, 1992).
The <microsoft-china.com> domain name is confusingly similar to the MICROSOFT mark.
The disputed domain name is merely Complainant’s mark, a hyphen, the geographic term “china,” and the generic top-level domain (“gTLD”) “.com.”
Respondent does not have rights or legitimate interests in the <microsoft-china.com> domain name.
Respondent is not commonly known by the disputed domain name.
The disputed domain name resolves to a parked website that displays links to third-party websites.
Respondent registered and is using the <microsoft-china.com> domain name in bad faith.
The disputed domain name is disruptive to Complainant’s business.
Respondent registered and uses the disputed domain name with the intention to create an association with Complainant and its products and services.
Respondent registered the disputed domain name with knowledge of Complainant’s rights.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complaint owns registered trademarks for MICROSOFT in the United States, China, and elsewhere throughout the world.
MICROSOFT is a famous trademark.
Respondent is not affiliated with Complainant and had not been authorized to use the MICROSOFT mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in MICROSOFT.
The <microsoft‑china.com> domain name resolves to a parked website that displays links to third-party websites.
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."
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant uses the MICROSOFT mark in connection with software and related goods and services. Complainant owns trademark registrations for MICROSOFT with the USPTO, SAIC, as well as with numerous other registries worldwide. Complainant’s trademark registration with one or more recognized trademark authorities conclusively demonstrates Complainant’s rights in the MICROSOFT mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”).
Respondent’s domain name is confusingly similar to Complainant’s MICROSOFT trademark. Respondent’s additions of a hyphen, the geographic term “china,” and the generic top-level domain “.com” to form <microsoft-china.com> fail to create any substantial difference between Complainant’s mark and the at‑issue domain name. See Hewlett-Packard Dev. Co. L.P. v. Reza Rasti, FA 1293423 (Nat. Arb. Forum Dec. 28, 2009) (finding <hp‑iran.com> and <compaq‑iran.com> confusingly similar to the HP and COMPAQ marks, noting that “the addition of a hyphen and a geographic term renders the disputed domain name confusingly similar to the mark”); see also, Dell, Inc. v. Mahmoud Dehghan, FA 870419 (Nat. Arb. Forum, Feb. 2, 2007) (finding the domain names <dell-iran.com> and <dell-iran.net> confusingly similar to the DELL trademark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Respondent lacks both rights and legitimate interests in respect of the at‑issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in the at‑issue domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
The WHOIS information regarding the domain name’s registration lists the registrant as ““Hai Chen / Cixi” and thus does not support a finding that Respondent is commonly known by the at-issue domain name. Additionally, there is no evidence before the Panel tending to prove that Respondent is commonly known by the <microsoft-china.com> domain name. Therefore, the Panel concludes that Respondent is not commonly known by the at-issue domain name and that rights or interests in the domain name cannot be demonstrated under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
The disputed domain is parked with Godaddy.com’s parking service which displays links to third party websites and presumably provides click-through revenue to Respondent. Respondent’s use of the at-issue domain name in this manner leads the Panel to conclude that Respondent’s use of the <microsoft-china.com> domain name 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)).
In light of the uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent appears to have inquired as to whether Complainant would be interested in buying the disputed domain name. Such willingness to sell an at-issue domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(i). See Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
The <microsoft-china.com> domain name is disruptive to Complainant’s business as it resolves to a parked website where links to third parties are displayed. See Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007), (holding that the display of competing links via disputed domain name demonstrates bad faith). Therefore, Respondent registered and uses the <microsoft-china.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iii).
Furthermore, the at-issue domain name was registered and used in order to create an association with Complainant and its products and services. As mentioned above, the <microsoft-china.com> domain name resolves to a page that displays links to third-party websites. Respondent’s purposeful registration of the at-issue domain name incorporating the MICROSOFT mark and use in connection with a revenue-generating website shows Respondent’s intent to mislead or confuse consumers as to the source or affiliation of the website. The foregoing indicates that Respondent registered and uses the <microsoft-china.com> domain name in bad faith under Policy ¶ 4(b)(iv). See Univ. 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).”); see also Microsoft Corp. v. Jean Pierre Lafont a/k/a Yasir Yasir, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶ 4(b)(iv)”).
Finally, Respondent’s bad faith registration and use of the at‑issue domain name is also demonstrated by the fact that Respondent had knowledge of Complainant’s rights in the MICROSOFT mark before it registered the <microsoft‑china.com> domain name. The famous MICROSOFT mark is well-known to countless consumers worldwide. Moreover and as discussed above, Respondent uses the confusingly similar at-issue domain name to front a pay-per-click parking page and thereby impermissibly benefit from the domain name’s inclusion of the MICROSOFT mark. These circumstances make it clear that Respondent registered the <microsoft-china.com> domain name because of the MICROSOFT trademark and thus had actual knowledge of Complainant and its trademark when it did so. See Microsoft Corporation v. Lang Qing, FA1447828 (Nat Arb Forum July 8, 2012) (finding that the MICROSOFT mark is so renowned that “it is near impossible to imagine anyone using the Internet, such as Respondent, being unaware of Complainant and its famous trademark.”).
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-china.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 24, 2012
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