Microsoft Corporation v. Rojon Danile / Psttavge
Claim Number: FA1704001727547
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Rojon Danile / Psttavge (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftwindows10key.com>, <microsoftwin7keys.com>, and <win7keycodeonline.org>, registered with eNom, 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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 18, 2017; the Forum received payment on April 18, 2017.
On April 18, 2017, eNom, LLC confirmed by e-mail to the Forum that the <microsoftwindows10key.com>, <microsoftwin7keys.com>, and <win7keycodeonline.org> domain names are registered with eNom, LLC and that Respondent is the current registrant of the names. eNom, LLC has verified that Respondent is bound by the eNom, 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 April 25, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 15, 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@microsoftwindows10key.com, postmaster@microsoftwin7keys.com, postmaster@win7keycodeonline.org. Also on April 25, 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 May 19, 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. 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(s) be transferred from Respondent to Complainant.
1. Complainant, Microsoft Corporation, is a worldwide leader in software, services, and solutions based in Redmond, Washington, USA. In connection with this business, Complainant utilizes the MICROSOFT and WINDOWS marks to promote its goods and services. Complainant has rights in the marks due to registration with the United States Patent and Trademark Office (“USPTO”) (e.g. MICROSOFT—Reg. No. 1,200,236, registered July 6, 1982; WINDOWS—Reg. No. 1,872,264, registered Jan. 10, 1995). See Compl., at Attached Ex. D, G (trademark registrations for the MICROSOFT and WINDOWS marks). Respondent’s domain names, <microsoftwindows10key.com>, <microsoftwin7keys.com>, and <win7keycodeonline.org> are all confusingly similar to Complainant’s marks.
2. Respondent lacks rights and legitimate interests in the disputed domain names. Respondent has not been commonly known by any of the domain names; further, Respondent has failed to utilize the domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the resolving websites for each of the disputed domain names displays images of Complainant’s trademarks and purportedly sells counterfeit versions of Complainant’s software. See Compl., at Attached Exs. H-J (landing pages for each of the three disputed domain names). Further, Respondent attempts to pass off as Complainant.
3. Respondent registered and used the disputed domain names in bad faith. Respondent registered three domains containing Complainant’s trademarks in a pattern of bad faith domain name registration. Respondent intentionally attracts Internet users for Respondent’s commercial benefit. Respondent had actual knowledge of Complainant’s marks at time of registration and subsequent use—further evidence of Respondent’s bad faith per Policy ¶ 4(a)(iii).
B. Respondent
1. Respondent failed to submit a Response in this proceeding
1. Respondent’s <microsoftwindows10key.com>, <microsoftwin7keys.com>, <win7keycodeonline.org> domain names are confusingly similar to Complainant’s MICROSOFT and WINDOWS marks.
2. Respondent does not have any rights or legitimate interests in the <microsoftwindows10key.com>, <microsoftwin7keys.com>, <win7keycodeonline.org> domain names.
3. Respondent registered or used the <microsoftwindows10key.com>, <microsoftwin7keys.com>, <win7keycodeonline.org> 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.
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.”).
Complainant asserts rights in the marks due to registration with the USPTO (e.g. MICROSOFT—Reg. No. 1,200,236, registered July 6, 1982; WINDOWS—Reg. No. 1,872,264, registered Jan. 10, 1995). See Compl., at Attached Exs. D, G (trademark registrations for the MICROSOFT and WINDOWS marks). Registration of a mark with a trademark authority such as the USPTO is sufficient to evidence rights in the mark per Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). The Panel finds that Complainant has rights in the MICROSOFT and WINDOWS marks.
Respondent’s domain names are all confusingly similar to Complainant’s marks. <microsoftwindows10key.com> contains both marks in their entirety and adds the numeral “10” and the generic term “key;” <microsoftwin7keys.com> contains the MICROSOFT mark and the abbreviated version of the WINDOWS mark and adds the numeral “7” and the generic term “keys;” <win7keycodeonline.org> contains the abbreviated version of the WINDOWS mark and adds the numeral “7” and the generic terms “key,” “code,” and “online.” Each disputed domain name has the generic top-level domain (“gTLD”) “.com” appended to make them resolvable. The addition of numerals, generic terms, and gTLDs does not adequately differentiate a mark from a domain name pursuant to Policy ¶ 4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.). Likewise, the combination of two marks does not make the resultant domain name distinguishable from the marks. See Wyndham Hotels and Resorts, LLC, and Wyndham Vacation Resorts, Inc. v. James VanBuren, FA 1624028 (Forum July 10, 2015) (“The disputed domain name combines two of Complainant's registered trademarks, WYNDHAM and EXTRA VACATIONS, omitting the space and adding the ".com" top-level domain name. These alterations do not diminish the similarity between the domain name and Complainant's marks.”). Further, the inclusion of an abbreviation of a complainant’s mark does not sufficiently differentiate the domain name from the mark. See Black Hills Ammunition, Inc. v. ICS INC, FA 1541572 (Forum Mar. 4, 2014) (finding that the <black-hillsammo.com> domain name is confusingly similar to the BLACK HILLS AMMUNITION mark under Policy ¶ 4(a)(i).); see also Microsoft Corp. v. Montrose Corp., D2000-1568 (WIPO Jan. 25, 2001) (finding the domain name <ms-office-2000.com> to be confusingly similar even though the mark MICROSOFT is abbreviated). The Panel finds that Respondent’s domain names are confusingly similar to Complainant’s MICROSOFT and WINDOWS mark under Policy ¶ 4(a)(i).
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 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 asserts Respondent is not commonly known by any of the three disputed domain names. Where a response is lacking and there is no evidence to the contrary, WHOIS information can support a finding that a respondent is not commonly known by a disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response); see also Chevron Intellectual Property LLC v. Fred Wallace, FA1506001626022 (Forum July 27, 2015) (finding that the respondent was not commonly known by the <chevron-europe.com> domain name under Policy ¶ 4(c)(ii), as the WHOIS information named “Fred Wallace” as registrant of the disputed domain name). The WHOIS information of record names the registrant of the domain names as “Rojon Danile.” The Panel therefore findsRespondent is not commonly known by any of the three disputed domain names pursuant to Policy ¶ 4(c)(ii).
Next, Complainant argues Respondent failed to utilize the disputed domain names in connection with a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Instead, the resolving website for each of the disputed domain names displays images of Complainant’s trademarks and purportedly sells counterfeit versions of Complainant’s software in an attempt to pass off as Complainant. See Compl., at Attached Exs. H-J (landing pages for each of the three disputed domain names). The use of domain names that are confusingly similar to a complainant’s mark to attract Internet users to a respondent’s website is not a use indicative of rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Forum Dec. 6, 2003) (“Diverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).”). Likewise, passing off as a complainant for respondent’s commercial gain is not a use indicative of rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Microsoft Corp. v. lijiuliang, FA0912001300266 (Forum Feb. 11, 2010)
(“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … is not 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)”). Finally, the use of a complainant’s marks and logos to sell counterfeit software of the complainant is further indicative of a lack of rights and legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or legitimate noncommercial or fair use existed where Respondent used the resolving website to sell products branded with Complainant’s MERRELL mark, and were either counterfeit products or legitimate products of Complainant being resold without authorization). The Panel therefore finds Respondent lacks rights and legitimate interests in the disputed domain names per Policy ¶¶ 4(c)(i) or (iii).
Complainant contends Respondent registered and used the disputed domain names in bad faith through Respondent’s registration of three domains containing Complainant’s trademarks in an alleged pattern of bad faith domain name registration. Registration of multiple domain names containing a complainant’s mark can evince a pattern of bad faith registration per Policy ¶ 4(b)(ii). See Microsoft Corporation and Skype v. zhong biao zhang / Unknown company / zhong zhang, FA1401001538218 (Forum February 20, 2014) (holding that the respondent’s registration of three domain names incorporating variants of the complainant’s SKYPE mark reflected a pattern of bad faith registration under Policy ¶ 4(b)(ii)). Each of the three disputed domain names, <microsoftwindows10key.com>, <microsoftwin7keys.com>, and <win7keycodeonline.org>, contains the MICROSOFT and/or WINDOWS marks or an abbreviation thereof. The Panel finds Respondent’s behavior constitutes a pattern of bad faith registration per Policy ¶ 4(b)(ii).
Complainant argues Respondent is attempting to commercially benefit from the goodwill associated with Complainant’s marks through the use of Complainant’s marks and sale of counterfeit versions of Complainant’s software. See Compl., at Attached Exs. H–J. Use of a domain name and a complainant’s mark to mislead Internet users seeking Complainant demonstrates bad faith pursuant to Policy ¶ 4(b)(iv). See Affliction, Inc. v. Chinasupply, FA 1223521 (Forum Oct. 23, 2008) (finding that the respondent attempts to commercially gain by creating confusion as to the complainant’s connection with the website by selling counterfeit products, and thus showed Policy ¶ 4(b)(iv) bad faith); see also Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting). The Panel therefore finds Respondent attempted to benefit commercially from the goodwill associated with Complainant’s marks in bad faith pursuant to Policy ¶ 4(b)(iv).
Last, Complainant asserts Respondent had actual knowledge of Complainant’s rights in the MICROSOFT and WINDOWS marks. Actual notice of a mark is sufficient for a finding of bad faith registration under Policy ¶ 4(a)(iii); likewise, registration of a domain containing a famous mark is also sufficient for a finding of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); see also Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”). The Panel agrees with Complainant and finds further evidence of Respondent’s bad faith registration per Policy ¶ 4(a)(iii), including Respondent having had actual knowledge through its use of the domain names.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftwindows10key.com>, <microsoftwin7keys.com>, and <win7keycodeonline.org> domain names be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
Dated: June 1, 2017
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