Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc.
Claim Number: FA1602001661030
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc. (“Respondent”), Florida, United States.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftcorps.com> and <microsoftcorps.net>, registered with Name.com, Inc. and Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA, respectively.
The undersigned certifies that she acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically February 15, 2016; the Forum received payment February 15, 2016.
On February 17, 2016 Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA confirmed by e-mail to the Forum that the <microsoftcorps.net> domain name is registered with Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA and that Respondent is the current registrant of the name. Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA verified that Respondent is bound by the Ascio Technologies, Inc. Danmark – Filial af Ascio technologies, Inc. USA 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 February 22, 2016, Name.com, Inc. confirmed by e-mail to the Forum that the <microsoftcorps.com> domain name is registered with Name.com, Inc. and that Respondent is the current registrant of the name. Name.com, Inc. verified that Respondent is bound by the Name.com, Inc. registration agreement and thereby agreed to resolve domain disputes brought by third parties in accordance with the Policy.
On February 22, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 14, 2016, 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@microsoftcorps.com, and postmaster@microsoftcorps.net. Also on February 22, 2016, 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 March 21, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson, to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant is a worldwide leader in software, services and solutions that help people and businesses. Complainant continuously used the MICROSOFT mark since the company’s founding in 1975. Complainant owns more than 25 registrations for the MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 registered July 6, 1982). Complainant owns hundreds of registrations for the MICROSOFT mark internationally. Respondent’s <microsoftcorps.com> and <microsoftcorps.net> domain names are confusingly similar to Complainant’s MICROSOFT mark as they add the descriptive term “corps” and the generic top level domains (“gTLD”) “.com,” and “.net.”
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the domain name, nor licensed or in any manner permitted to use Complainant’s MICROSOFT mark. Respondent is using the disputed domain names to generate emails posing as an executive of the Microsoft Corporation while contacting Complainant’s suppliers; presumably for commercial gain. Such use cannot be considered a bona fide offering of goods or services or a legitimate noncommercial or fair use.
Respondent registered and used the disputed domain names in bad faith. Through Respondent’s fraudulent scheme impersonates an executive of Complainant, Respondent is disrupting the business of Complainant (Policy ¶ 4(b)(iii)). Respondent registered and used the disputed domain names with actual knowledge of the MICROSOFT mark and Complainant’s rights in the mark.
B. Respondent’s Contentions in this Proceeding:
Respondent failed to submit a Response in this proceeding. The Panel notes that Respondent registered the <microsoftcorps.com> domain name on January 8, 2016 and the <microsoftcorps.net> domain name on January 15, 2015.
Complainant established that it has rights and legitimate interests in the mark
contained in its entirety in the disputed domain names.
Respondent registered domain names that are confusingly similar to
Complainant’s protected mark.
Respondent has shown no rights or legitimate interests in the domain names.
Respondent registered and used the disputed domain names in bad faith.
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 Complainant to 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.
Given 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(f), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel 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 (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
In the instant proceedings, Complainant 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 contends that the name “Terrance Green” is false and that the same person has control of both of the disputed domain names.
The Panel finds that Complainant’s allegation has not been challenged by Respondent, which Is in the best position to refute this claim by offering proof to the contrary and the Panel finds, under the Forum’s Supplemental Rule 4(c), that the domain names are commonly owned and that Respondent Whois Privacy Protection Service Inc. is the best Respondent to proceed against, as a UDRP decision can proceed against only one Respondent. The Panel dismisses the Complaint against Terrence Green, who is identified as being a false identification and a non-person.
Identical or Confusingly Similar
Complainant uses the MICROSOFT mark in connection with software and other goods and services. Complainant claims to have registered the MICROSOFT mark with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982), arguing that such registrations demonstrate rights in a mark. Panels have found that a complainant’s valid USPTO registration is sufficient to establish rights in a mark per Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore, this Panel finds that Complainant demonstrated rights in the MICROSOFT mark under Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <microsoftcorps.com> and <microsoftcorps.net> domain names are confusingly similar to the MICROSOFT mark as they incorporate the mark in its entirety, the descriptive term “corps” and the gTLD “.com” and “.net” respectively. Panels have found that such alterations to a mark do not overcome a finding of confusing similarity under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Eastman Chem. Co. v. Patel, FA 524752 (Forum Sept. 7, 2005) (“Therefore, the Panel concludes that the addition of a term descriptive of Complainant’s business, the addition of a hyphen, and the addition of the gTLD ‘.com’ are insufficient to distinguish Respondent’s domain name from Complainant’s mark.”). Therefore, the Panel here agrees that Respondent’s <microsoftcorps.com> and <microsoftcorps.net> domain names are confusingly similar to the MICROSOFT mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain names are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests
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 of proof shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (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 (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 argues that Respondent has no rights or legitimate interests in the <microsoftcorps.com> and <microsoftcorps.net> domain names. To begin, Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information for the <microsoftcorps.com> disputed domain identifies Respondent as “Whois Agent,” and the <microsoftcorps.net> domain name lists “Terrence Green” neither resemble the disputed domain name. Panels have held that a respondent is not commonly known by a disputed domain name based on a lack of information, including WHOIS information, to the contrary. See Instron Corp. v. Kaner, FA 768859 (Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute). The Panel therefore finds that Respondent is not commonly known by the disputed domain name for the purposes of Policy ¶ 4(c)(ii).
Complainant further claims that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. The domain names appear to be used to generate email sent from an account associated with the domains. In this email, someone using the email address <judson.althoff@microsoftcorp.net> and <judson.althoff@microsoftcorp.com> requested pricing and availability of items from one of Complainant’s suppliers. See Compl., at Attached Ex. B. Respondent’s behavior could be considered an attempt to pass itself off as Complainant, which panels have found is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Am. Int’l Group, Inc. v. Busby, FA 156251 (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); see also Abbott Laboratories v. Miles White, FA 1646590 (Forum Dec. 10, 2015)(finding use of the disputed domain name to impersonate an executive of Complainant was not a bona fide offering or legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or 4(c)(iii)). Accordingly, the Panel finds that Respondent’s attempt to masquerade as an agent of Complainant is not within uses allowable under Policy ¶¶ 4(c)(i) or 4(c)(iii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith
Complainant contends that Respondent’s use of fraudulent email accounts to contact Complainant’s suppliers shows that Respondent intended to disrupt and compete with Complainant’s business. Respondent appears to use the disputed domain names to send fraudulent emails to Complainant’s suppliers while posing as Complainant. See Compl., at Attached Ex. B. Panels have chosen to interpret competitors broadly under Policy ¶ 4(b)(iii). See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”). The Panel thus finds that Respondent competes and disrupts Complainant’s business in bad faith pursuant to Policy ¶ 4(b)(iii). See Brownell Travel, Inc. v. Troy Haas, FA 1589137 (Forum Dec. 20, 2014)(finding the use of the domain name to send emails impersonating the CEO to the Complainant’s Account Manager to attempt to commit fraud on the Complainant constituted bad faith registration and use under Policy ¶ 4(b)(iii)).
Complainant contends that in light of the fame and notoriety of Complainant's MICROSOSFT mark, in conjunction with Respondent’s use of the disputed domain, it is inconceivable that Respondent could have registered the <microsoftcorps.com> or <microsoftcorps.net> domain names without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant asserts that Respondent’s efforts to impersonate an executive of the Microsoft Corporation is evidence of Respondent’s knowledge of Complainant’s rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). The Panel agrees with Complainant, however, that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name and finds that actual knowledge is adequate evidence to support findings of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain names in bad faith; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftcorps.com> and <microsoftcorps.net> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: April 4, 2016
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