Microsoft Corporation v. harold martinez / harold martinez
Claim Number: FA1503001607880
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is harold martinez / harold martinez (“Respondent”), Bogota, Colombia.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftcolombia.com> and <microsoftcolombia.com.co>, registered with Tucows Domains 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.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2015; the Forum received payment on March 3, 2015.
On March 4, 2015, Tucows Domains Inc. confirmed by e-mail to the Forum that the <microsoftcolombia.com> and <microsoftcolombia.com.co> domain names are registered with Tucows Domains Inc. and that Respondent is the current registrant of the names. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 March 5, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 25, 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@microsoftcolombia.com, postmaster@microsoftcolombia.com.co. Also on March 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.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 7, 2015 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson, as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant uses the MICROSOFT mark in connection with its software and other goods and services. Complainant has registered the MICROSOFT mark with multiple trademark agencies, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,256,083, registered November 1, 1983), and with Colombia’s Copyright Office (e.g., Reg. No. 122,009, registered February 22, 1988), which demonstrate Complainant’s rights in the mark. Respondent’s <microsoftcolombia.com> and <microsoftcolombia.com.co> domain names are confusingly similar to the MICROSOFT mark because they incorporate the mark in its entirety and merely add the geographic term “colombia” and generic top-level domain (“gTLD”) “.com” or gTLD and country code top-level domain (“ccTLD”) “.com.co.”
Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by the disputed domain names or the MICROSOFT mark, nor is Respondent affiliated with Complainant in any way. Further, Respondent is not using the disputed domains in connection with a bona fide offering of goods and services or a legitimate noncommercial or fair use. Rather, the <microsoftcolombia.com> domain name resolves to a site which purports to pass itself off as Complainant. The <microsoftcolombia.com.co> domain name resolves to an inactive site.
Respondent is using the disputed domain names in bad faith. Respondent was acting with actual or at least constructive knowledge of Complainant’s MICROSOFT mark and its rights thereof when registering the disputed domain names. Finally, Respondent’s inactive holding of the <microsoftcolombia.com.co> domain name is evidence of bad faith.
B. Respondent
Respondent failed to submit a formal Response in this proceeding.
Complainant is Microsoft Corporation of Redmond, WA, USA. Microsoft is a worldwide leader in software, services, and solutions. Complainant, founded in 1975 uses, and has registered domestically and internationally, various well-known marks in connection with its business, including the mark MICROSOFT. Complainant has continuously used the mark appurtenant to its goods and services domestically and/or internationally since at least as early as 1975.
Respondent is harold martinez / harold Martinez of Bogota, Colombia. Respondent’s registrar’s address is listed as Toronto, ON, Canada. The Panel notes that the disputed domain names were registered on or about the following dates: <microsoftcolombia.com>, December 17, 2014 and <microsoftcolombia.com.co> December 16, 2014.
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.”).
Complainant uses the MICROSOFT mark in connection with its software and other goods and services. Complainant has registered the MICROSOFT mark with multiple trademark agencies, including the USPTO (e.g., Reg. No. 1,256,083, registered November 1, 1983), and with Colombia’s Copyright Office (e.g., Reg. No. 122,009, registered February 22, 1988), which Complainant asserts is a demonstration of its rights in the mark. Prior panels have found that a complainant’s registrations with multiple trademark agencies, including the USPTO, constitute sufficient evidence to establish rights in a mark regardless of where the respondent resides and does business. See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”); see also W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”). The Panel here finds that Complainant’s trademark registrations suffice to establish its rights in the MICROSOFT mark.
Respondent’s <microsoftcolombia.com> and <microsoftcolombia.com.co> domain names are confusingly similar to the MICROSOFT mark because they incorporate the mark in its entirety and merely add the geographic term “colombia” and gTLD “.com” or gTLD and ccTLD “.com.co.” Previous panels have found that where a geographic term is added to a mark, such an alteration is not enough to overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the addition of geograhic terms, such as “cancun” to the end of the CHEAPTICKETS mark in the <cheapticketscancun.com>, <cheapticketscancun.biz>, <cheapticketscancun.net>, and <cheapticketscancun.org> domain names, does not overcome a finding of confusing similarity under Policy ¶ 4(a)(i)). Panels have also found that top-level domains such as gTLDs and ccTLDs as required of all domains and therefore irrelevant to a Policy ¶ 4(a)(i) analysis. 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); see also Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). The Panel here finds that Respondent’s incorporation of “colombia” and “.com” and “.com.co” to the MICROSOFT mark is insufficient to preclude a finding of confusing similarity under Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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), 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). The Complainant has met this burden.
Complainant contends that Respondent has no rights or legitimate interests in the disputed domain names. Complainant asserts that Respondent is not commonly known by the disputed domain names, nor is Respondent authorized by Complainant to register domain names that incorporate the MICROSOFT mark. The Panel notes the relevant WHOIS information merely lists “harold martinez / harold martinez” as registrant of record. Although Respondent submitted a brief informal email, presumably as some type of response to this proceeding, it did not conform with the English language agreement and did not noticeably address this element. Because Respondent has provided no evidence to contradict Complainant’s assertions the Panel finds no basis to declare Respondent as commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Ian Schrager Hotels, L.L.C. v. Taylor, FA 173369 (Nat. Arb. Forum Sept. 25, 2003) (finding that without demonstrable evidence to support the assertion that a respondent is commonly known by a domain name, the assertion must be rejected).
Complainant argues that Respondent is not using the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Instead Complaint provides screenshots indicating Respondent’s use of Complainant’s trademarks and logos. The Panel finds that Respondent is using <microsoftcolombia.com> to pass itself off as Complainant through the use of Complainant’s registered marks on the resolving site. See Microsoft Corp. v. li jiuliang, FA1300266 (Nat. Arb. Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website . . . is not 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 Panel here finds that the Respondent’s attempt at passing itself off as Complainant does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii).
Complainant includes a screenshot of <microsoftcolombia.com.co> in its exhibits, which display the following message: “This page can’t be displayed.” The Panel finds that such use of a domain name constitutes inactive holding and therefore is not a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (“The Panel finds that the [failure to make an active use] of a domain name that is identical to Complainant’s mark is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii).”); see also TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003) (“[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).”). The Panel here finds that Respondent’s inactive holding of the <microsoftcolombia.com.co> domain name evinces no rights or legitimate interests pursuant to the Policy.
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
As the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent has acted in bad faith under Policy ¶ 4(a)(iii). First, Complainant argues that Respondent uses the <microsoftcolombia.com> domain name to intentionally attract Internet users to its own website for commercial gain, by capitalizing on the likelihood of confusion as to its relationship with Complainant. The Panel again notes that Complainant has submitted a screenshot of this disputed domain names misuse by Respondent to demonstrate the probability of confusion for Internet users. Prior panels have found bad faith under Policy ¶ 4(b)(iv) when a respondent engages in such behavior. 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.”). The Panel here finds that Respondent’s behavior indicates bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant asserts that Respondent’s inactive holding of the <microsoftcolombia.com.co> domain name is evidence of bad faith per Policy ¶ 4(a)(iii). The Panel again notes that the screenshot of the <microsoftcolombia.com.co> domain name merely relays the message that “This page can’t be displayed.” The Panel finds that such use constitutes inactive holding and find bad faith pursuant to Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftcolombia.com> and <microsoftcolombia.com.co> domain names be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: April 14, 2015
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