Microsoft Corporation v. PURNA BANIYA / GAURAV / Harkesh / Manoj / Sheker
Claim Number: FA1412001597557
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is PURNA BANIYA / GAURAV / Harkesh / Manoj / Sheker (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <billing-microsoft.com>, <hotmailbillingsupport.com>, <microsoftofficebilling.com>, <msnhelp.com>, <xboxbilling.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com>, registered with Big Rock Solutions Ltd. and 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.
David P. Miranda, Esq. as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 30, 2014; the National Arbitration Forum received payment on December 30, 2014.
On December 30, 2014, Big Rock Solutions Ltd. confirmed by e-mail to the National Arbitration Forum that the <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names are registered with Big Rock Solutions Ltd. and that Respondent is the current registrant of the names. Big Rock Solutions Ltd. has verified that Respondent is bound by the Big Rock Solutions Ltd. 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 December 31, 2014, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <billing-microsoft.com>, <hotmailbillingsupport.com>, <microsoftofficebilling.com>, <msnhelp.com>, and <xboxbilling.com> domain names are registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the names. 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 January 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of January 26, 2015 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@billing-microsoft.com, postmaster@hotmailbillingsupport.com, postmaster@microsoftofficebilling.com, postmaster@msnhelp.com, postmaster@xboxbilling.com, postmaster@supportformsn.com, postmaster@commercemicrosoft.com, postmaster@mymsnbilling.com, postmaster@microsoftnumber.com. Also on January 5, 2015, 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.
A timely Response was received and determined to be complete on January 26, 2015.
On February 4, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed David P. Miranda, Esq., 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Microsoft Corporation, (“complainant”) owns and uses the MICROSOFT, MSN, XBOX, and HOTMAIL marks to promote its vast electronic device and software business. These marks are all registered with the United States Patent and Trademark Office ("USPTO"). Each of the <billing-microsoft.com>, <hotmailbillingsupport.com>, <microsoftofficebilling.com>, <msnhelp.com>, <xboxbilling.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names take one of Complainant’s marks and contextualize the mark with terms that are descriptive of services offered by Complainant.
Complainant contends Respondent has no rights or legitimate interests in these <billing-microsoft.com>, <hotmailbillingsupport.com>, <microsoftofficebilling.com>, <msnhelp.com>, <xboxbilling.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names. Respondent is variously identified by aliases—none of which have any association with the domain names. Respondent is not licensed to use any of Complainant’s marks. All of the domain names except <microsoftofficebilling.com> and <xboxbilling.com> are used to promote a website where Respondent requests credit card information so that it may provide “services” to consumers. With respect to the <microsoftofficebilling.com> and <xboxbilling.com> domain names, both are unused beyond a “coming soon”-style website.
Respondent has registered and is using these domain names in bad faith. As noted above, the <billing-microsoft.com>, <hotmailbillingsupport.com>, <msnhelp.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names resolve to websites where Respondent purports to offer official, Complainant-backed, services while seeking valuable financial and credit card information from unwary consumers constituting bad faith under Policy ¶ 4(b)(iv). Respondent’s non-use of the <microsoftofficebilling.com> and <xboxbilling.com> domain names can serve as an inference of bad faith when as here all of Respondent’s other domain names are used in a scheme to pass off as Complainant. Further, Respondent’s bad faith registration may be inferred from its registration of all of these domain names with an actual knowledge of Complainant’s interest in the various trademarks.
B. Respondent
Respondent does not believe the domain names are confusingly similar to the trademarks. Respondent claims it has a right to use these domain names within the parameters that Complainant has outlined in its online advertising initiatives.
Respondent purports to include a disclaimer on the domain names’ resolving websites noting that Respondent is not affiliated with Complainant.
Complainant has established each of the elements required under paragraph 4(a) of the Policy, and as such the domain names at issues shall be transferred to the Complainant.
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.
Preliminary Issue: Multiple Respondents
In the instant proceedings, Complainant has alleged that the entities that 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 contends that the registrant for each domain name resides in India. See Compl., at Attached Ex. A. Further, the website for each of the domain names are almost identical, and all list the same phone number. See Compl., at Attached Exs. K-Q. Significantly, in an e-mail to the National Arbitration Forum dated January 18, 2015, Respondent indicated that all nine domain names are administered by a single account. In light of these circumstances, the Panel determines that one entity is in control of all domain names at issue.
Complainant owns and uses the MICROSOFT, MSN, XBOX, and HOTMAIL marks to promote its vast electronic device and software business. These marks are all registered with the USPTO. The Panel acknowledges each of the following MICROSOFT (e.g., Reg. No. 2,198,155, registered Oct. 20, 1998), MSN (e.g., Reg. No. 2,153,763, registered Apr. 28, 1998), XBOX (e.g., Reg. No. 2,646,465, registered Nov. 5, 2002), and HOTMAIL (e.g., Reg. No. 2,165601, registered June 16, 1998) marks are in fact USPTO-registered. Such registration is sufficient evidence of Complainant’s Policy ¶ 4(a)(i) rights in the respective marks. 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.”).
Complainant contends that each of the <billing-microsoft.com>, <hotmailbillingsupport.com>, <microsoftofficebilling.com>, <msnhelp.com>, <xboxbilling.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names take one of Complainant’s marks and contextualize the mark with terms that are descriptive of services offered by Complainant or official actions that Complainant takes with respect to its paying customers. Among the terms added to the marks in forming these domain names include “support,” “billing,” “help, “my,” and other business-related descriptive terms. The addition of all such descriptive terms does not negate the confusing similarity of the respective domain names. See Am. Int’l Group, Inc. v. Ling Shun Shing, FA 206399 (Nat. Arb. Forum Dec. 15, 2003) (finding that the addition of the term “assurance,” to the complainant’s AIG mark failed to sufficiently differentiate the name from the mark under Policy ¶ 4(a)(i) because the appended term related directly to the complainant’s business). Neither hyphens nor gTLDs alleviate the confusingly similar nature of each domain name. See 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). All of the domain names are confusingly similar to the underlying trademarks.
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name 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); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Complainant contends Respondent has no rights or legitimate interests in these <billing-microsoft.com>, <hotmailbillingsupport.com>, <microsoftofficebilling.com>, <msnhelp.com>, <xboxbilling.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names. Respondent is variously identified by aliases—none of which have any association with the domain names. Respondent is not licensed to use any of Complainant’s marks at all. Respondent does not claim to be known by any of the domain names. Policy ¶ 4(c)(ii). See St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate interests in a disputed domain name where there was no evidence in the record indicating that the respondent was commonly known by the disputed domain name). Thus, Respondent has no established rights as per Policy ¶ 4(c)(ii).
Complainant points out that all of the domain names except <microsoftofficebilling.com> and <xboxbilling.com> are used to promote a website where Respondent requests credit card information so that it may provide “services” to consumers. The Complainant’s own marks are featured on Respondent’s domain names in offering off Respondent’s services. See Compl., at Attached Exs. K–Q. Dream Horse Classifieds v. Mosley, FA 381256 (Nat. Arb. Forum Feb. 8, 2005). Respondent has no legitimate interest in the holding of these <billing-microsoft.com>, <hotmailbillingsupport.com>, <msnhelp.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names under Policy ¶¶ 4(c)(i), (iii).
Complainant then argues that with respect to the <microsoftofficebilling.com> and <xboxbilling.com> domain names, both are unused beyond a “coming soon”-style website. Neither of the domain names hosts anything beyond a message stating “Website coming soon! Please check back soon to see if the site is available.” See Compl., at Attached Exs. R–S. Such a use of these domain names creates neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, or Policy ¶ 4(c)(iii) legitimate noncommercial or fair use, because this mere template placeholder gives no inference that a legitimate or bona fide use is foreseeable. See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”).
Complainant claims that Respondent has registered and is using these domain names in bad faith. As noted above, the <billing-microsoft.com>, <hotmailbillingsupport.com>, <msnhelp.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names resolve to websites where Respondent purports to offer services while seeking valuable financial and credit card information from unwary consumers, constituting bad faith under Policy ¶ 4(b)(iv). Respondent has registered and is using the <billing-microsoft.com>, <hotmailbillingsupport.com>, <msnhelp.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain names in Policy ¶ 4(b)(iv) bad faith so it may profit through the misleading of Internet users. See Metro. Life Ins. Co. v. Bonds, FA 873143 (Nat. Arb. Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”).
Complainant also argues that Respondent’s non-use of the <microsoftofficebilling.com> and <xboxbilling.com> domain names can serve as an inference of bad faith when as here all of Respondent’s other domain names are used to pass off as Complainant. Use of an “under construction” webpage for each of the <microsoftofficebilling.com> and <xboxbilling.com> domain names in conjunction with the other activity here, may serve as evidence of the bad faith registration and use of these domain names under Policy ¶ 4(a)(iii). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page stood as evidence of bad faith under Policy ¶ 4(a)(iii)).
Respondent’s bad faith registration may also be inferred from its registration of all of these domain names with an actual knowledge of Complainant’s interest in the various trademarks. Respondent admits actual knowledge of Complainant’s rights in the mark and as such Respondent’s conduct is considered in bad faith under Policy ¶ 4(a)(iii). See, e.g., Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Nat. Arb. Forum Feb. 6, 2014).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <billing-microsoft.com>, <hotmailbillingsupport.com>, <microsoftofficebilling.com>, <msnhelp.com>, <xboxbilling.com>, <supportformsn.com>, <commercemicrosoft.com>, <mymsnbilling.com>, and <microsoftnumber.com> domain name be TRANSFERRED from Respondent to Complainant.
David P. Miranda, Esq., Panelist
Dated: February 18, 2015
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