Microsoft Corporation v. Latanskiy Sergey Nikolaevich / hololens.supply
Claim Number: FA1603001665619
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is Latanskiy Sergey Nikolaevich / hololens.supply (“Respondent”), Ukraine.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <hololens.supply>, registered with OnlineNIC, 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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 14, 2016; the Forum received payment on March 14, 2016.
On March 16, 2016, OnlineNIC, Inc. confirmed by e-mail to the Forum that the <hololens.supply> domain name is registered with OnlineNIC, Inc. and that Respondent is the current registrant of the name. OnlineNIC, Inc. has verified that Respondent is bound by the OnlineNIC, 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 16, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 5, 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@hololens.supply. Also on March 16, 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 April 8, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (Ret.) 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 name be transferred from Respondent to Complainant.
Complainant
Complainant uses the HOLOLENS mark in connection with its business in software, services and solutions to allow a holographic computer to run Windows 10. Complainant has pending trademark registrations with agencies, including the United States Patent and Trademark Office (“USPTO”) (Serial No. 86,534,966, filed February 13, 2015). Complainant also has common law rights in the mark due to the past extensive marketing and press of the mark. Respondent’s <hololens.supply> domain name is confusingly similar to the HOLOLENS mark as it incorporates the mark in its entirety while adding the generic top-level domain (“gTLD”) “.supply.”
Respondent has no rights or legitimate interests in the <hololens.supply> domain name. Respondent is not commonly known by the disputed domain name. Further, Respondent is making neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use through the <hololens.supply> domain name. Rather, the domain name resolves to a website containing Microsoft logos, videos, and attempts to sell Complainant’s products without authorization.
Respondent is using the <hololens.supply> domain name in bad faith. Respondent is attempting to sell the disputed domain name by auction on eBay. Respondent has attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. The timing of Respondent’s domain registration indicates opportunistic bad faith. Respondent had actual or constructive knowledge of the HOLOLENS mark and Complainant’s rights therein because of the mark’s fame, extensive press, and multiple pending trademark applications.
Respondent
Respondent did not submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the <hololens.supply> domain name.
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(f), 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 HOLOLENS mark in connection with its business in software, services, and solutions to allow a holographic computer to run Windows 10. Complainant claims to have pending trademark applications around the world, including with the USPTO (Serial No. 86,534,966, filed February 13, 2015). There is no precedent indicating that trademark applications are sufficient to confer rights in a mark under Policy ¶ 4(a)(i). See ValueVapor LLC v. Vicki Oxman, FA 1542157 (Forum Mar. 20, 2014) (denying Complainant’s rights under Policy ¶ 4(a)(i) as “[t]here is no evidence of a registered trademark and it has long been held that a pending application for registration is not sufficient to prove trademark rights.”). However, complainants do not need to hold a valid governmental registration to prove rights in a mark for the purposes of Policy ¶ 4(a)(i). See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant argues it has rights in the HOLOLENS mark under the common law. In analyzing common law rights, panels look to whether a complainant has established a secondary meaning in a mark. See Tuxedos By Rose v. Nunez, FA 95248 (Nat. Arb. Forum Aug. 17, 2000) (finding common law rights in a mark where its use was continuous and ongoing, and secondary meaning was established). Relevant evidence of secondary meaning has been found to include evidence of “continuous and ongoing use of a mark, holding of a domain name identical to the mark, or using the mark in commerce before a disputed domain name is created.” Golden Title Loans, LLC dba 745Cash v. roylee, FA 1618801 (Forum June 23, 2015). Complainant asserts that it introduced the HOLOLENS mark and product to the press on January 21, 2015, and that the mark became widely known shortly thereafter through “unprecedented global press coverage.” In addition, Complainant posits that the applications associated with the HOLOLENS mark have been advertised on Complainant’s website. Given the available evidence from Complainant, and lack of response refuting these contentions, the Panel finds that Complainant has established common law rights in the HOLOLENS mark under Policy ¶ 4(a)(i).
Complainant argues that Respondent’s <hololens.supply> domain name is confusingly similar to the HOLOLENS mark as it incorporates the mark in its entirety, while adding the gTLD “.supply.” Some panels have found that top-level domains consisting of words that could conceivably be construed as generic or descriptive terms may enhance the confusing similarity between the domain name and the mark. See DD IP Holder LLC v Manpreet Badhwar, FA 1562029 (Nat. Arb. Forum July 14, 2014) (“because there is a reference to food and restaurants inherent in the new gTLD ‘.menu’, the combination of the ‘dunkin’ element with the ‘.menu’ gTLD extension adds further to the confusing character of the domain in issue in the present case.”). Other panels have stuck to the traditional notion that a top-level domain—even in cases where said domain consists of a word that could conceivably be construed as generic or descriptive—cannot distinguish a domain name from the mark at issue. See Citigroup Inc. v. Nicholas Bonner, FA 1604916 (Nat. Arb. Forum Mar. 18, 2015) (finding that the “.technology” gTLD was irrelevant to Policy ¶ 4(a)(i) analysis when assessing the confusing similarity between the <citigroup.technology> domain name and the CITIGROUP trademark). Therefore, the Panel finds Respondent’s domain name is confusingly similar to Complainant’s mark.
Complainant has proved this element.
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 argues that Respondent has no rights or legitimate interests in the <hololens.supply> domain name. Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information regarding the disputed domain name lists “Latanskiy Sergey Nikolaevich” as registrant of record. Respondent has not submitted a response in this proceeding. Therefore, in light of the available evidence, the Panel finds that there is no basis to find Respondent is commonly known by the disputed domain name per Policy ¶4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. 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).
Complainant argues that Respondent is not using the <hololens.supply> domain name for a bona fide offering of goods or services, or a legitimate noncommercial or fair use. Complainant contends that the domain name resolves to a website that focuses on the Microsoft HOLOLENS device, offering pre-order sales. Such links include: “Pre- Order HOLOLENS!” “PayPal” “You can send 0.5 btc (BITCOIN) to bitcoin adress”. Complainant also contends that Respondent is offering the disputed domain name for sale on eBay. Additionally, Complainant asserts that Respondent’s website is attempting to impersonate Complainant through the use of videos, the Microsoft name and logo, and a link to the official Microsoft site for the HOLOLENS device. Panels have found that such use by a respondent is neither a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also Nokia Corp. v. Eagle, FA 1125685 (Nat. Arb. Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)); see also Deutsche Lufthansa AG v. Future Media Architects, Inc., FA 1153492 (Nat. Arb. Forum Apr. 17, 2008) (“The Panel finds that an offer to rent or lease the <lh.com> domain name supports findings of a lack of rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).”). Therefore, the Panel finds that Respondent’s <hololens.supply> domain name constitutes neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
Complainant has proved this element.
Complainant argues that Respondent’s use of the <hololens.supply> domain name constitutes bad faith. Complainant asserts that Respondent has attempted to sell the domain name. Past panels have agreed that when a Respondent has registered a disputed domain name primarily for the purpose of selling the domain name, it supports a finding of bad faith under Policy ¶ 4(b)(i). See Microsoft Corporation v. Chiou Ji-an, FA 1521025 (Nat. Arb. Forum, Oct. 3, 2013)(finding that Respondent’s bad faith may be inferred from Respondent’s decision to place the domain names up for auction to the public). Therefore, the Panel finds that Respondent’s <hololens.supply> domain name falls within the purview of Policy ¶4(b)(i).
Complainant contends that Respondent has also attempted to attract Internet users to its site for commercial gain by creating confusion as to the source, sponsorship, affiliation, or endorsement of the website. Complainant asserts that Respondent’s website contains the Microsoft name and logo, in addition to a video, and a link to Complainant’s official website. Complainant also argues that Respondent is offering unauthorized pre-sales of the HOLOLENS product in an attempt to commercially benefit from the goodwill associated with Complainant’s mark. The Panel agrees with Complainant’s argument and finds that Internet user confusion which subsequently results in the unauthorized sale of Complainant’s products constitutes bad faith attraction for commercial gain under Policy ¶4(b)(iv). See Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant).
Complainant argues that Respondent’s domain, the timing of its registration, and Respondent’s use of the domain indicate opportunistic registration, in violation of Policy ¶ 4(a)(iii). Specifically, Complainant argues that Respondent registered the domain soon after Complainant’s official announcement of its product and the worldwide press related to the product. Panels have held that where a respondent takes advantage of a complainant’s public announcement by registering a confusingly similar domain within a short period of time thereafter, the respondent has demonstrated opportunistic bad faith pursuant to Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”). Accordingly, the Panel finds that Respondent has engaged in opportunistic bad faith registration and use per Policy ¶ 4(a)(iii).
Complainant argues that Respondent had at least constructive knowledge of Complainant's rights in the HOLOLENS mark. Complainant argues that Respondent's offering of Complainant's own products and competing products at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel finds that Respondent had actual knowledge of Complainant's mark and rights and therefore determines that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); 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 has proved this element.
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 <hololens.supply> domain name be TRANSFERRED from Respondent to Complainant.
__________________________________________________________________
Hon. Karl V. Fink (Ret.), Panelist
Dated: April 13, 2016
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