Microsoft Corporation v. Leonard Aucoin
Claim Number: FA1703001720028
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Leonard Aucoin (“Respondent”), California, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windows7anytimekey.com>, registered with GoDaddy.com, LLC.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on March 3, 2017; the Forum received payment on March 3, 2017.
On March 6, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <windows7anytimekey.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 27, 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@windows7anytimekey.com. Also on March 6, 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 April 4, 2017, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
A. Complainant
1. Respondent’s <windows7anytimekey.com> domain name is confusingly similar to Complainant’s WINDOWS mark.
2. Respondent does not have any rights or legitimate interests in the <windows7anytimekey.com> domain name.
3. Respondent registered and uses the <windows7anytimekey.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, holds a registration for its well-known WINDOWS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,872,264, registered Jan. 10, 1995) and other trademark agencies throughout the world.
Respondent registered the <windows7anytimekey.com> domain name on May 7, 2016, and uses it to display links to third party products and services.
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 (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.”).
The Panel finds that Complainant’s USPTO registration for the WINDOWS mark is sufficient to establish rights under Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register at Exhibit D, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”).
Respondent’s <windows7anytimekey.com> domain name incorporates the WINDOWS mark in its entirety, adding only the generic and descriptive terms “7” and “anytime key.” These additions do not distinguish Respondent’s domain name from Complainant’s WINDOWS mark. See Microsoft Corp. v. Wicky Blown/WB, FA 1698485 (Forum Nov. 28, 2016) (finding <windows81keys.com>, <windows8onlineshop.com> and <windowspremiumkey.com> confusingly similar to the WINDOWS trademark); see also Microsoft Corp. v. Wicky Blown/WB, FA 1610585 (Forum Apr. 24, 2015) (finding <windowsonlinestore.com>, <win7codes.com>, <win8key.com>, <windows10keys.com>, <windows10productkeys.com> and <windows81key.com> confusingly similar to the WINDOWS trademark). Thus, the Panel finds that Respondent’s domain name <windows7anytimekey.com> is confusingly similar to Complainant’s WINDOWS mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 <windows7anytimekey.com> domain name and is not commonly known by the disputed domain name. Complainant has not licensed or permitted Respondent to use the WINDOWS mark. According to WHOIS, Respondent is identified as “Leonard Aucoin.” The Panel therefore finds that Respondent is not commonly known by the domain name under Policy ¶ 4(c)(ii). See Broadcom Corp. v. Ibecom PLC, FA 361190 (Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); see also Tercent Inc. v. Yi, FA 139720 (Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
Complainant argues that Respondent has not made a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name. In addition to selling illegitimate keys to consumers for compensation, Respondent is using Complainant’s logo, and the address and phone number of one of Complainant’s stores on the resolving website. The use of a domain name that is confusingly similar to Complainant’s WINDOWS mark to attract Internet users to Respondent’s own site is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See Microsoft Corp. v. Wicky Blown/WB, FA 1610585 (Forum Apr. 24, 2015) (finding the use of <win8key.com>, <windows10keys.com>, <windows10productkeys.com>, <windows81key.com>, <windowsonlinestore.com and other domains in connection with sites that sold product keys for Complainant’s products as well as unrelated third party products 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 domain names pursuant to Policy ¶ 4(c)(iii)); see also Microsoft Corp. v. Wicky Blown/WB, FA 1610585 (Forum Apr. 24, 2015) (finding the use of the Complainant’s marks to sell products which appear to be counterfeit violates the Policy). The Panel finds that Respondent’s use of the domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent is using the disputed domain name for click-through hyperlinks that presumably net Respondent commercial profit. This use is not a legitimate noncommercial or fair use, and not a bona fide offering of goods or services. See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Thus, the Panel finds that Respondent is not using the <windows7anytimekey.com> domain name for a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that, by incorporating Complainant’s famous WINDOWS trademark into the disputed domain, and using Complainant’s trademarks and products at the corresponding web sites, Respondent creates the impression of sites that are sponsored and endorsed by Complainant. Respondent no doubt commercially benefits through click-through hyperlinks, the fraudulent product keys, and offering counterfeit products. This is clear evidence of Respondent’s bad faith registration and use of the disputed domain name under Policy ¶ 4(b)(iv). See MetroPCS, Inc. v. Robertson, FA0609000809749 (Forum Nov. 13, 2006)(finding bad faith where the respondent’s web site offered high speed internet services while giving the false impression of being affiliated with the complainant); see also Hunter Fan Co. v. MSS, FA 98067 (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 also argues that Respondent registered the disputed domain name with actual knowledge of the WINDOWS mark and Complainant’s rights in the mark. The Panel agrees, noting Respondent’s use of Complainant’s marks and images on the resolving website. The Panel thus finds 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").
The Panel finds that Complainant has satisfied 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 <windows7anytimekey.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: April 5, 2017
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