Microsoft Corporation v. MICROSOFT ENGINEERING TEAM SCANDINAVIA / MICROSOFT ENGINEERING TEAM SCANDINAVIA AB / MICROSOFT ENGINEERING TEAM TURKEY / MICROSOFT ENGINEERING
Claim Number: FA1703001719641
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is MICROSOFT ENGINEERING TEAM SCANDINAVIA / MICROSOFT ENGINEERING TEAM SCANDINAVIA AB / MICROSOFT ENGINEERING TEAM TURKEY / MICROSOFT ENGINEERING (“Respondent”), Sweden.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, <microsoftengineering.support>, and <msnetshop.com> registered with eNom, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 1, 2017; the Forum received payment on March 1, 2017.
On March 2, 2017, eNom, Inc. confirmed by e-mail to the Forum that the <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, <microsoftengineering.support>, and <msnetshop.com> domain names are registered with eNom, Inc. and that Respondent is the current registrant of the names. eNom, Inc. has verified that Respondent is bound by the eNom, 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 3, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 23, 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@microsoftengineering.com, postmaster@microsoftengineering.biz, postmaster@microsoftengineering.info, postmaster@microsoftengineering.net, postmaster@microsoftengineering.support, and postmaster@msnetshop.com. Also on March 3, 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.
A timely Response was received and determined to be complete on March 22, 2017.
Complainant’s Additional Submission was received and determined to be in compliance with the Rules on March 27, 2017.
On April 3, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Complainant, Microsoft Corporation, is a producer of software and provider of services and solutions that are used around the world. Complainant has rights to the MICROSOFT mark based upon more than 25 registrations with the United States Patent and Trademark Office
(“USPTO”), and hundreds more registrations throughout the world. (e.g., Reg. No. 1,200,236, registered July 6, 1982). See Compl., at Attached Ex. D. Complainant also has rights to the MS mark based upon registration with the USPTO. (e.g., Reg. No. 1,303,495, registered Nov. 6, 1984). See Compl., at Attached Ex. E. Respondent’s domain names are confusingly similar to Complainant’s marks, as <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, and <microsoftengineering.support> each contain the MICROSOFT mark in its entirety, merely adding the generic term “engineering,” followed by a common generic top-level domain
(“gTLD”). Respondent’s <msnetshop.com> is confusingly similar to Complainant’s MS mark, as it contains the mark in its entirety, merely adding the descriptive terms “net” and “shop,” followed by the gTLD
“.com.”
2. Respondent has no rights or legitimate interests in the disputed domain names. Respondent is not commonly known by Complainant’s MICROSOFT or MS marks, despite holding itself out to be variations of
“Microsoft Engineering” in the WHOIS information. Respondent is not licensed by Complainant to use Complainant’s marks. Respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, the disputed domain names either do not resolve to active websites, or are actively being used to potentially deceive consumers into believing that it is somehow officially related to Microsoft when it is not.
3. Respondent has registered and used the disputed domain names in bad faith. Respondent is creating the false impression that <microsoftengineering.com>, <microsoftengineering.net>, <microsoftengineering.support>, and <msnetshop.com> are sponsored or otherwise endorsed by Complainant. Respondent has made no active use of <microsoftengineering.info>, and <microsoftengineering.net>. Further, it is clear that Respondent had actual knowledge of Complainant and its rights when it registered and subsequently used the disputed domain names.
B. Respondent
1. Respondent represents a team of almost 700 tech-savvy engineers, programmers, designers, and PC nerds who support Microsoft; but do not have the possibility to integrate with Complainant as full-fledged “Certified Partners” due to political issues related to Respondent’s countries of origin. Respondent sells genuine Microsoft products and educates consumers in a place where pirating of Microsoft products is rampant. Respondent has repeatedly attempted to contact Complainant for the purposes of being accepted into its network of “Certified Partners,” but has been unable to get a response from Complainant or its agents.
2. Respondent’s use of the disputed domain names is as a platform to support communities and clients. Respondent’s <microsoftengineering.support>—rather than serving as a phishing site as Complainant claims—is in fact a support-tickets portal. Respondent is not trying to pass off as Complainant or illegally sell Complainant’s products, rather it uses the domain names to help combat piracy and educate consumers about the benefits of Complainant’s products and services.
3. The disputed domain names were registered almost six years ago, and are even submitted on Complainant’s partner network portal. Therefore, Complainant had prior knowledge of the domains and waited six years to assert its rights. Respondent has closed the domain names (aside from <microsoftengineering.support>) as an act of goodwill for the duration of these proceedings.
C. Complainant’s Additional Submission
1. Respondent’s identity as a team of engineers and programmers who are fans of Complainant, does not give Respondent the legal right to register and use domain names that include Complainant’s famous marks. Further, Respondent does not address the fact that it uses Complainant’s trademarks and logos on the resolving websites in an effort to deceive the public. Respondent has not disputed that its use of the MICROSOFT and MS trademarks is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. Respondent’s closing of the domain names is actually further evidence of its lack of rights or legitimate interests.
1. Respondent’s <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, <microsoftengineering.support>, <msnetshop.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, <microsoftengineering.support>, <msnetshop.com> domain names.
3. Respondent registered or used the <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, <microsoftengineering.support>, <msnetshop.com> 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 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 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 each of the domain names is with the same Registrar, namely, eNom, Inc. and the administrative contact for each domain is under the same name for each of the domain names. See Compl., at Attached Ex. A. Additionally, each of the email addresses for the disputed domain names uses <microsoftengineering.com>. See id. Finally, the address listed on WHOIS for <msnetshop.com> is the same address listed on the website for <microsoftengineering.com>. Compare Compl., at Attached Ex. A, with Compl., at Attached Ex. G.
The Panel finds the domain names are commonly owned/controlled by a single Respondent who is using multiple aliases.
Complainant claims rights in the MICROSOFT and MS marks based upon registration of the mark with the USPTO (e.g., MICROSOFT—Reg. No. 1,200,236, registered July 6, 1982; MS—Reg. No. 1,303,495, registered Nov. 6, 1984). See Compl., at Attached Ex. D, E. Registration of marks with the USPTO is sufficient to establish rights in those marks. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum Aug. 9, 2015) (finding that Complainant has rights in the METROPCS mark through its registration with the United States Patent and Trademark Office). The Panel therefore holds that Complainant’s registration of the MICROSOFT and MS marks with the USPTO is sufficient to establish rights in the marks under Policy ¶ 4(a)(i).
Complainant next claims that the disputed domain names are confusingly similar to Complainant’s marks. Respondent’s <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, and <microsoftengineering.support> each contain the MICROSOFT mark in its entirety, merely adding the generic term “engineering,” followed by a gTLD. Addition of a generic term and gTLD does not distinguish a domain name from a mark for the purposes of a Policy ¶ 4(a)(i) analysis. See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Respondent’s <msnetshop.com> is confusingly similar to Complainant’s MS mark, as it contains the mark in its entirety, merely adding the descriptive terms “net” and “shop,” followed by the gTLD “.com.” Addition of a term descriptive of a complainant’s business along with a gTLD does not distinguish a mark under a Policy ¶ 4(a)(i) analysis. See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, as well as a gTLD, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark under Policy ¶ 4(a)(i)). The Panel therefore finds the disputed domain names to be confusingly similar to Complainant’s MICROSOFT and MS marks pursuant to Policy ¶ 4(a)(i).
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 argues that Respondent has no rights or legitimate interests in the disputed domain names as Respondent is not commonly known by the disputed domain names, despite WHOIS information that identifies Respondent as
“Microsoft Engineering Team Scandinavia,” “Microsoft Engineering Team Turkey,” or “Microsoft Engineering.” Where a respondent’s WHOIS information indicates it is commonly known by a disputed domain name, but it is not, additional affirmative evidence is needed to determine the respondent is commonly known by the domain name. See Yoga Works, Inc. v. Arpita, FA 155461 (Forum June 17, 2003) (finding that the respondent was not “commonly known by” the <shantiyogaworks.com> domain name despite listing its name as “Shanti Yoga Works” in its WHOIS contact information because there was “no affirmative evidence before the Panel that the respondent was ever ‘commonly known by’ the disputed domain name prior to its registration of the disputed domain name”); see also Qwest Commc’ns Int’l, Inc. v. Qwest Networking, FA 238004 (Forum Apr. 8, 2004) (“The Panel determines that, because of the fame of Complainant’s mark, Respondent does not have rights or legitimate interests in the <qwestcommunications.net> domain name, despite the presence of the word ‘qwest’ in the domain name registration WHOIS information.”). Though the WHOIS information for the disputed domain names name Respondent as
“Microsoft Engineering Team Scandinavia,” “Microsoft Engineering Team
Turkey,” or “Microsoft Engineering,” Complainant asserts that Respondent is not authorized or licensed by Complainant to use Complainant’s MICROSOFT or MS marks in a business name or domain name. See Compl., at Attached Ex A. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the disputed domain name.
Complainant also contends that Respondent’s lack of rights and legitimate interests in the disputed domain names is evident from its failure to use the disputed domain names to make a bona fide offering of goods or services or legitimate noncommercial or fair use. Complainant argues Respondent uses its <microsoftengineering.com>, <microsoftengineering.net>, and <msnetshop.com> to pass off as Complainant through use of Complainant’s logos and marks. Use of a domain name to pass off as a complainant is not a bona fide offering of goods or services per Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii). 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). Complainant points out that <microsoftengineering.com> uses Complainant’s name and logo, calls itself
“Team Turkey,” and copies a press release issued by Complainant. See Compl., at Attached Ex. G. Respondent’s <microsoftengineering.net> redirects to an official page of Complainant’s that describes the Microsoft.com Engineering Operations Team, which is the exact text Respondent duplicated on the resolving website for <microsoftengineering.com>. See id. Respondent uses <msnetshop.com> to resolve to a webpage that uses Complainant’s logos and marks to advertise domain registration and hosting services. See Compl., at Attached Ex. J. The Panel finds this behavior amounts to passing off and is evidence that Respondent is not using the <microsoftengineering.com>, <microsoftengineering.net>, and/or <msnetshop.com> domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends <microsoftengineering.support> is being used to deceive customers into believing it is somehow officially related to Complainant, when it is not. Complainant also contends that since the resolving website asks for personal information, it is possible the website is being used for a phishing scheme. Use of a domain name to create the false impression of association with a complainant for phishing purposes is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> domain name for 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).”); see also Microsoft Corp. v. Dang Ngo, FA 1645686 (Forum, Dec. 15, 2015) (finding the use of the disputed domain name to require users to enter a user name and password is an attempt to phish for personal information and thus is not a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ (c)(iii)). The <microsoftengineering.support> domain name resolves to a website that says “welcome to MSET Support Center” and contains no other identifying information, but requires the user to sign in with an email address and password. See Compl., at Attached Ex. I. The Panel therefore finds the use of <microsoftengineering.support> does not amount to a bona fide offering of goods or services or a legitimate noncommercial or fair use pursuant to Policy ¶¶ 4(c)(i) or (iii).
Complainant also asserts Respondent lacks rights and legitimate interests in <microsoftengineering.biz> and <microsoftengineering.info> because the domain names do not resolve to active websites. Failure to make an active use of a disputed domain name does not indicate rights or legitimate interests in the names per Policy ¶¶ 4(c)(i) or (iii). See Thermo Electron Corp. v. Xu, FA 713851 (Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)). The two disputed domain names redirect to <bing.com> search results. See Compl., at Attached Exs. L–M. The Panel therefore finds Respondent lacks rights and legitimate interests in the <microsoftengineering.biz> and <microsoftengineering.info> domain names pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant also contends that Respondent’s offer to take down the websites at the disputed domain names pending the conclusion of the current proceeding is further evidence of its lack of rights or legitimate interests in the disputed domain names. Taking down a website after contact by a complainant can be evidence of a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) and (iii). See Wells Fargo & Company v. Emily Evans, FA 1438708 (Forum May 21, 2012) (Finding that after being contacted by Complainant, Respondent took down the site and this current non-use of the disputed domain name was also not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”). Respondent stated in its Response that it had taken down the websites at the disputed domain names as an act of goodwill. See Resp., 4. The Panel finds this is further evidence of Respondent’s lack of rights or legitimate interests pursuant to Policy ¶¶ 4(c)(i) and (iii).
Complainant contends that Respondent has registered and used the disputed <microsoftengineering.com>, <microsoftengineering.net>, <microsoftengineering.support>, and <msnetshop.com> domain names in bad faith because the domain names incorporate Complainant’s famous marks and is using the marks and information about Complainant at the resolving websites to create the false impression that the sites are supported or otherwise endorsed by Complainant. Use of a disputed domain name to create such a false impression is evidence of bad faith per Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (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.”); see also Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”). Complainant points out that the websites resolving from the four domain names prominently display Complainant’s marks and logos, and <microsoftengineering.com> includes information directly copied from Complainant’s website. See Compl., at Attached Exs. G–K. the Panel therefore finds Respondent to have acted in bad faith pursuant to Policy ¶ 4(b)(iv) with regards to the <microsoftengineering.com>, <microsoftengineering.net>, <microsoftengineering.support>, and/or <msnetshop.com> domain names.
Complainant further contends that Respondent’s bad faith is evinced by its failure to make an active use of the <microsoftengineering.biz> and <microsoftengineering.info> domain names. A respondent’s failure to make active use of a disputed domain name can support a finding of bad faith per Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use). Neither domain name resolves to an active webpage. See Compl., at Attached Exs. L–M. The Panel therefore finds Respondent has registered and used the <microsoftengineering.biz> and <microsoftengineering.info> in bad faith per Policy ¶ 4(a)(iii).
Complainant also argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the MICROSOFT and MS marks. Complainant argues that Respondent’s use of the disputed domain names 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 marks 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 (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 (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").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftengineering.com>, <microsoftengineering.biz>, <microsoftengineering.info>, <microsoftengineering.net>, <microsoftengineering.support>, and <msnetshop.com> domain names be TRANSFERRED from Respondent to Claimant.
John J. Upchurch, Panelist
Dated: April 14, 2017
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