Microsoft Corporation v. null / Sanchez, Oscar / Rydal Penrhos School
Claim Number: FA1212001473913
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is null / Sanchez, Oscar / Rydal Penrhos School (“Respondent”), United Kingdom.
REGISTRARS AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftapproval.com> and <xboxsafety.com>, registered with Tucows.com Co., and <xboxaccount.com>, registered with Network Solutions, LLC.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 3, 2012; the National Arbitration Forum received payment on December 3, 2012.
On December 3, 2012 Tucows.com Co. confirmed by e-mail to the National Arbitration Forum that the <microsoftapproval.com> and <xboxsafety.com> domain names are registered with Tucows.com Co. and that Respondent is the current registrant of the names. Tucows.com Co. has verified that Respondent is bound by the Tucows.com Co. registration agreement for the disputed domain name there registered, and that Respondent has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
Also on December 3, 2012, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <xboxaccount.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC registration agreement for the disputed domain name there registered, and that Respondent 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 December 3, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 24, 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@microsoftapproval.com, postmaster@xboxsafety.com, and postmaster@xboxaccount.com. Also on December 3, 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 January 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (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
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has used the MICROSOFT mark since 1975 for the provision of software and services. Complainant has used the XBOX mark in connection with video game entertainment systems, software, and accessories since 2001.
Complainant has registered the MICROSOFT mark with the United Kingdom Intellectual Property Office (“UKIPO”) (e.g., Reg. No. 1,580,042 registered July 28, 1994). Complainant has registered the XBOX mark with the European Union’s Office for Harmonization in the Internal Market (“OHIM”) (e.g., Reg. No. 1,611,235 registered August 6, 2001).
The <xboxsafety.com> and <microsoftapproval.com> domain names were registered on November 1, 2012. The <xboxsafety.com> and<microsoftapproval.com> domain names redirect to Complainant’s own website.
The <xboxaccount.com> domain name was registered on November 19, 2012. The <xboxaccount.com> domain name resolves to a blank landing page.
Respondent is offering e-mail addresses at these domains for sale on a gaming-focused forum. Respondent initially attempted to sell e-mail addresses corresponding to the disputed domains, but later elected to give them away.
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.”).
Preliminary Issue: Multiple Respondents
Complainant has alleged that the entities which control the domain names at issue are effectively controlled by the same person and/or entity, which is operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.”
Complainant makes the following contentions:
1. that a single individual claims ownership of all 3 domains,
2. the <microsoftapproval.com> and <xboxsafety.com> are both owned by “null,”
3. the <microsoftapproval.com> and <xboxsafety.com> were registered on the same day, with the same registrar and the same technical contacts, and both point to the same page using the same host,
4. the admin for <microsoftapproval.com> is falsely identified as “Microsoft Corp,”
5. the admin for both <xboxsafety.com> and <xboxaccount.com> is Oscar Sanchez, the phone number for the admin contacts for <microsoftapproval.com> and <xboxaccount.com> are the same,
6. and the admin e-mail for both <xboxsafety.com> and <xboxaccount.com> begins with “owhs.”
The Panel finds that Complainant has presented sufficient evidence that the disputed domain names are controlled by the same entity and thus chooses to proceed with the instant proceedings.
Complainant owns rights in the MICROSOFT mark for the purposes of Policy ¶ 4(a)(i). The Panel concludes that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with a national trademark authority. See The Royal Bank of Scot. Group plc, Direct Line Ins. plc, & Privilege Ins. Co. Ltd. v. Demand Domains, c/o C.S.C., FA 714952 (Nat. Arb. Forum August 2, 2006) (holding that registration of the PRIVILEGE mark with the United Kingdom trademark authority sufficiently established the complainant’s rights in the mark under the Policy).
Complainant also owns rights in the XBOX mark for the purposes of Policy ¶ 4(a)(i). The Panel concludes that Complainant has established rights in the mark for the purposes of Policy ¶ 4(a)(i) through its registration of the mark with OHIM. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the complainants had established rights in marks where the marks were registered with a trademark authority).
Complainant contends that Respondent’s <microsoftapproval.com> domain name is confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i). This disputed domain incorporates Complainant’s MICROSOFT mark in its entirety, adding only the generic term “approval” and the generic top-level domain (“gTLD”) “.com.” The Panel concludes that neither addition is sufficient to distinguish the disputed domain from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See 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 Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Accordingly, the Panel finds that Respondent’s <microsoftapproval.com> domain name is confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s <xboxsafety.com> and <xboxaccount.com> domain names are confusingly similar to Complainant’s XBOX mark pursuant to Policy ¶ 4(a)(i). These disputed domains incorporate Complainant’s XBOX mark in its entirety, adding only the generic terms “safety” or “account” and the “.com” gTLD. These additions are insufficient to distinguish the disputed domains from Complainant’s mark for the purposes of Policy ¶ 4(a)(i). See Pfizer, Inc. v. Suger, D2002-0187 (WIPO Apr. 24, 2002) (finding that because the subject domain name incorporates the VIAGRA mark in its entirety, and deviates only by the addition of the word “bomb,” the domain name is rendered confusingly similar to the complainant’s mark); 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). Accordingly, the Panel finds that Respondent’s <xboxsafety.com> and <xboxaccount.com> domain names are confusingly similar to Complainant’s XBOX mark pursuant to Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Complainant alleges that Respondent is not commonly known by the MICROSOFT or XBOX marks within the meaning of Policy ¶ 4(c)(ii). Complainant also alleges that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services, and is not affiliated with Complainant in any way. Complainant notes that the WHOIS information currently identifies the registrant for the disputed domains as “Null a/k/a Oscar Sanchez/Rydal Penrhos School.” The Panel finds that Respondent is not commonly known by the disputed domain names within the meaning of 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).
Complainant contends that the <microsoftapproval.com> and <xboxsafety.com> domain names redirect to Complainant’s own website, and that such use is neither legitimate nor fair. The Panel concludes that Respondent’s use of domains which contain Complainant’s mark is improper, even if those domains redirect to Complainant’s own site, because such use deprives Complainant of control of domains which contain Complainant’s registered mark. See Direct Line Ins. plc v. Low-cost-domain, FA 1337658 (Nat. Arb. Forum Sept. 8, 2010) (“The Panel finds that using Complainant’s mark in a domain name over which Complainant has no control, even if the domain name redirects to Complainant’s actual site, is not consistent with the requirements of Policy ¶ 4(c)(i) or ¶ 4(c)(iii) . . .”). The Panel finds that Respondent’s use of the <microsoftapproval.com> and <xboxsafety.com> domain names constitutes neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant contends that the <xboxaccount.com> domain name resolves to a blank landing page, and that such use is also neither legitimate nor fair. Respondent’s failure to develop the resolving website evidences a lack of rights and legitimate interests in the <xboxaccount.com> domain name under Policy ¶ 4(a)(ii). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name).
Complainant argues that Respondent’s redirection of the <microsoftapproval.com> and <xboxsafety.com> domain names to Complainant’s own website, as well as Complainant’s false identification of the admin for the <microsoftapproval.com> domain name as “Microsoft Corp.,” constitute passing off. Complainant asserts that Respondent’s redirection of the domains to Complainant’s own website was calculated to lend credibility to the scams for which Respondent uses the domains, as recipients of e-mails from addresses derivative of these domains may check to ensure that they point to Complainant before trusting them. Respondent’s use of the <microsoftapproval.com> and <xboxsafety.com> domain names suggests an attempt by Respondent to pass itself of as Complainant. Such use shows a lack of rights or legitimate interests in these domains pursuant to Policy ¶ 4(a)(ii). See 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).
Complainant contends that Respondent initially attempted to sell, but now gives away, e-mail addresses derivative of the <microsoftapproval.com>, <xboxsafety.com>, and <xboxaccount.com> domain names. Complainant claims that the acquisition of e-mail addresses containing Complainant’s marks was an attempt to impersonate Complainant in order to facilitate phishing or similar scams, and that such use is not legitimate. The Panel concludes that Respondent’s use of the disputed domain names falls outside of the parameters of Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii) on the basis of improper phishing activity. See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (finding that using a domain name in a fraudulent scheme to deceive Internet users into providing their credit card and personal information is not a bona fide offering of goods or services nor a legitimate noncommercial or fair use).
Complainant asserts that Respondent’s registration and use of the disputed domain names suggest an attempt by Respondent to pass itself of as Complainant, as Respondent is setting up email addresses that impersonate Complainant. Complainant argues that this is evidence of bad faith under Policy ¶ 4(b)(iv), because Respondent is attempting “to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s MICROSOFT and XBOX trademarks.” The Panel finds that Respondent’s registration and use of the <microsoftapproval.com>, <xboxsafety.com>, and <xboxaccount.com> domain names demonstrates bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant alleges that Respondent must have had knowledge of Complainant's rights in the MICROSOFT and XBOX marks prior to registration of the domain names because “Respondent’s domain names incorporate two of Complainant’s famous marks, and combine these marks with terms relevant to Complainant’s business, and the fact that Respondent is offering e-mail addresses at these domains for sale on a gaming focused forum.” While constructive notice is generally regarded as insufficient to support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant's mark and thus registered the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Sears Brands, LLC v. Airhart, FA 1350469 (Nat. Arb. Forum Dec. 2, 2010) (stating that constructive notice generally will not suffice for a finding of bad faith); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Complainant alleges that Respondent is “causing the public to receive e-mails that appear to originate with Complainant from unknown individuals and businesses, which may lead to malware, phishing, and other problems.” Complainant posits that consumers may be fooled into unwittingly disclosing personal financial information or authorizing malware downloads given “Respondent’s domain names’ strong association with Complainant’s famous trademarks, its redirect to Complainant’s support page, and its false identification of “Microsoft Corp.” as admin in WHOIS.” The Panel determines that Respondent’s registration and use of the disputed domain names constitutes phishing activity which supports a finding of bad faith under Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Maniac State, FA 608239 (Nat. Arb. Forum Jan. 19, 2006) (finding bad faith registration and use where the respondent was using the <wellsbankupdate.com> domain name in order to fraudulently acquire the personal and financial information of the complainant’s customers).
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftapproval.com>, <xboxsafety.com>, and <xboxaccount.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: January 17, 2013
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