Microsoft Corporation v. Mr. William Wong
Claim Number: FA1702001716048
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Mr. William Wong (“Respondent”), Thailand.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <surfacethsale.com>, registered with GoDaddy.com, LLC.
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 6, 2017; the Forum received payment February 6, 2017.
On February 7, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <surfacethsale.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC registration agreement and 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 8, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of February 28, 2017, 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@surfacethsale.com. Also on February 8, 2017, 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 6, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here 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 name be transferred from Respondent to Complainant.
A. Complainant’s Contentions in this Proceeding:
Complainant registered the SURFACE mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,581,342, registered Mar. 19, 2013). See Compl., at Attached Ex. C. Complainant also registered the mark with numerous other government agencies. Id. Respondent’s <surfacethsale.com> mark is confusingly similar as it fully incorporates the SURFACE mark and adds the term “th”, which is the country code for Thailand, the generic term “sale”, and the generic top-level domain (“gTLD”) “.com”.
Respondent has no rights or legitimate interests in <surfacethsale.com> domain name because no evidence even suggests that Respondent as listed in the WHOIS information is commonly known by Complainant’s protected marks. Complainant urges that it has not licensed or otherwise permitted Respondent to use Complainant’s protected marks or to use a domain name with the marks. The disputed domain name resolves to a webpage that appears identical to that of Complainant’s site and purports to be an official vendor of Complainant in Thailand. See Compl. at Attached Ex. G. Respondent attempts to commercially benefit by passing itself off as Complainant, opportunistically attempting to capitalize on Complainant’s worldwide notoriety, popularity, and
Goodwill.
Respondent registered and uses <surfacethsale.com> in bad faith. Respondent uses the website to pass itself off as Complainant and mislead users into believing it is an authorized vendor for Complainant’s products. See Compl. at Attached Ex. G. Additionally, Respondent must have had actual or constructive knowledge of Complainant’s marks based on the use of the disputed domain name.
B. Respondent’s Contentions in Response:
Respondent did not submit a Response in this Proceeding. The Panel notes that Respondent registered <surfacethsale.com> Feb. 1, 2017.
Complainant has well-established rights and legitimate interests in its family of marks.
Respondent has no such rights or legitimate interests in Complainant’s family of marks, including the one used in the disputed domain name.
Respondent registered a domain name that is confusingly similar to Complainant’s protected mark.
Respondent registered and uses the disputed domain name 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 finds to be 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.”).
Complainant is an international leader in software, services, and solutions to aid individuals and businesses. They have numerous products sold all over the world. Complainant claims it registered the SURFACE mark with the USPTO (e.g., Reg. No. 3,581,342, registered Mar. 19, 2013). See Compl., at Attached Ex. C. Complainant also alleges that it registered the mark with numerous other government agencies. Id. Registration of a mark with multiple governmental agencies sufficiently demonstrates a registrant’s rights in a mark under Policy ¶ 4(a)(i). See Alibaba Group Holding Limited v. YINGFENG WANG, FA 1568531 (Forum Aug. 21, 2014) (“Complainant has rights in the ALIBABA mark under the Policy through registration with trademark authorities in numerous countries around the world.”). Therefore, the Panel finds that Complainant established rights in the mark for the purposes of Policy ¶ 4(a)(i).
Next, Complainant argues that Respondent’s <surfacethsale.com> is confusingly similar as it fully incorporates Complainant’s protected mark and adds descriptive, generic terms and the gTLD “.com”. Changing marks in these ways does not sufficiently distinguish a disputed domain name from the mark. See EMVCO, LLC c/o Visa Holdings v. Corey Grottola / Prophet Companies, FA 1649199 (Forum Dec. 22, 2015) (Holding that the addition of descriptive terms to a complainant’s mark does not serve to adequately distinguish a disputed domain name from a complainant’s mark under Policy ¶ 4(a)(i).). Similarly, Panels have held that adding the gTLD “.com” is irrelevant to an analysis of confusing similarity. See F.R. Burger & Associates, Inc. v. shanshan lin, FA 1623319 (Forum July 9, 2015) (holding, “Respondent’s <frburger.com> domain name is identical to Complainant’s FRBURGER mark because it differs only by the domain name’s addition of the top-level domain name “.com.”). Here, Respondent changed the SURFACE mark by adding the term “th”, which is the country code for Thailand, the generic term “sale”, and the generic top-level domain (“gTLD”) “.com”. Therefore, the Panel finds that Respondent did not include elements in the disputed domain name that would distinguish it from Complainant’s mark under Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that Respondent registered a disputed domain name that is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or Legitimate Interests:
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 (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 contends that Respondent has no rights or legitimate interests in <surfacethsale.com>. Complainant notes that the WHOIS information identifies “Mr. William Wong” as the registrant. See Compl., at Attached Ex. A. Complainant argues that no evidence exists to demonstrate that Respondent previously had any connection with the disputed domain name before its registration, nor has Complainant licensed or otherwise permitted Respondent to use Complainant’s mark or use a domain name with the mark. Complainants may use these assertions as evidence of lacking rights or legitimate interests. Further, when a Respondent fails to respond, relevant information includes the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent. See Braun Corp. v. Loney, FA 699652 (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 domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark). Accordingly, the Panel may agree that Respondent is not commonly known by <surfacethsale.com> under Policy ¶ 4(c)(ii).
Alternatively, Complainant contends that the disputed domain name resolves to a webpage that appears identical to that of Complainant’s and purports to be an official vendor of Complainant in Thailand. Generally, panels have found that using a confusingly similar domain name to pass off as complainant to commercially benefit can evince a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Nokia Corp. v. Eagle, FA 1125685 (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)). Respondent’s domain name resolves in a webpage that prominently displays the words “Microsoft Surface” and shows a picture of Complainant’s Surface tablet and offers “free registration” and to “save up to 98%”. See Compl. at Attached Ex. G. Accordingly, the Panel may agree with Complainant’s assertions and find that the <surfacethsale.com> domain name is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor is it a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 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 name containing in its entirety Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant claims that Respondent registered and uses the <surfacethsale.com> domain name in bad faith. Complainant first contends that Respondent uses the website to pass itself off as Complainant and misleads users into believing it is an authorized vendor for Complainant’s products. As previously noted above, Respondent’s website resolves in a site that appears to be an official site by Complainant by prominently displaying Complainant’s marks and products. See Compl. at Attached Ex. G. Complainant believes that Respondent uses such redirection for its own financial gain, conduct that supports findings of bad faith under Policy ¶ 4(b)(iv). The Panel finds that Respondent registered and uses the <surfacethsale.com> domain name in bad faith.
Complainant lastly claims that Respondent had actual or constructive knowledge of Complainant’s mark. Complainant contends that Respondent must have had actual knowledge of Complainant’s marks based on the manner in which Respondent uses the website. Arguments of bad faith based on constructive notice are irrelevant 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 here prior to registering the disputed domain name and finds that actual knowledge is adequate evidence 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 uses the disputed domain name containing Complainant’s protected mark in its entirety 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 <surfacethsale.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist.
Dated: March 20, 2017
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