Microsoft Corporation v. Fabio Pileri fma sas di Fabio Pileri & C.
Claim Number: FA0509000570110
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225. Respondent is Fabio Pileri fma sas di Fabio Pileri & C. (“Respondent”), Via Peruzzi 18, Olbia, SS 07026, IT.
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <puntomicrosoft.com>, registered with Tucows 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.
Sandra Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 30, 2005; the National Arbitration Forum received a hard copy of the Complaint on October 4, 2005.
On October 3, 2005, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <puntomicrosoft.com> domain name is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On October 5, 2005, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 25, 2005 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@puntomicrosoft.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On October 31, 2005, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra Franklin as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 makes the following assertions:
1. Respondent’s <puntomicrosoft.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <puntomicrosoft.com> domain name.
3. Respondent registered and used the <puntomicrosoft.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured,
marketed and sold computer software and computer-related products and services
since 1975. Complainant has offered such
products as computer operating systems, client/server applications, business
and consumer productivity applications, software programming tools, interactive
media programs, Internet platform and development tools, computer input
devices, online information and entertainment services, electronic commerce
services and computer publications.
Complainant owns more than 500 trademarks and services marks
throughout the world. On July 6, 1982,
Complainant registered the MICROSOFT mark with the United State Patent and
Trademark Office (“USPTO”) (Reg. No. 1,200,236). The MICROSOFT mark is also registered with Italian trademark
authorities (Italian Reg. No. 613,585 issued December 30, 1993), Respondent’s
purported country of residence.
Respondent registered the <puntomicrosoft.com> domain name on January 4, 2005. The domain name resolves to a website for a company called La Cometa, which offers computer and information products and services. In addition, the website displays Complainant’s Windows logo and Security Shield design.
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."
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(e), 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.”).
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.
Complainant’s registration of its MICROSOFT mark with numerous trademark authorities worldwide is sufficient to establish that Complainant has rights in the mark pursuant to Policy ¶ 4(a)(i). See Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning”).
The <puntomicrosoft.com> domain name incorporates Complainant’s MICROSOFT mark in its entirety and adds only the generic or descriptive Italian term “punto,” which translates into the English word “point,” and the generic top-level domain (“gTLD”) “.com.” The addition of a gTLD to a mark is irrelevant in determining similarity, because a top-level domain of some kind of required to register a domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). Furthermore, the addition of a generic or descriptive term to a famous mark such as MICROSOFT is insufficient to create a domain name that is distinct from the mark. See Oki Data Ams., Inc. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (“[T]he fact that a domain name wholly incorporates a Complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks”); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (holding that confusing similarity under the Policy is decided upon the inclusion of a trademark in the domain name rather than upon the likelihood of confusion test under U.S. trademark law).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant has the initial burden of proving that Respondent lacks rights and legitimate interests in the disputed domain name. In Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001), the panel held:
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Id.; see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”). Thus, having found that Complainant has met its initial burden by establishing a prima facie case, the Panel will now analyze whether Respondent has met its burden to establish rights or legitimate interests in the disputed domain name under Policy ¶ 4(c).
Complainant asserts that there is no proof indicating that Respondent is commonly known by the <puntomicrosoft.com> domain name and that Respondent has not been authorized to use Complainant’s MICROSOFT mark for any purpose. Based upon these assertions and the WHOIS information for the domain name, the Panel determines that Respondent has not established rights or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See G.D. Searle & Co. v. Cimock, FA 126829 (Nat. Arb. Forum Nov. 13, 2003) (“Due to the fame of Complainant’s mark there must be strong evidence that Respondent is commonly known by the disputed domain name in order to find that Respondent has rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii); see also Am. W. Airlines, Inc. v. Paik, FA 206396 (Nat. Arb. Forum Dec. 22, 2003) (“Respondent has registered the domain name under the name ‘Ilyoup Paik a/k/a David Sanders.’ Given the WHOIS domain name registration information, Respondent is not commonly known by the [<awvacations.com>] domain name.”).
The <puntomicrosoft.com> domain name resolves to a company’s website that displays Complainant’s Windows logo and Security Shield design and that offers products and services related to computers and computer-related products. Panels have consistently refused to find a bona fide offering of goods or services or a legitimate noncommercial or fair use where a respondent is using a complainant’s mark to operate a competing website for the respondent’s commercial gain. Thus, the Panel determines that Respondent has not established rights or legitimate interests under Policy ¶ 4(c)(i) or (iii). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant is in the business of manufacturing, marketing and selling computer software and computer-related products and services. Respondent’s use of the <puntomicrosoft.com> domain name to operate a website offering similar goods and displaying Complainant’s logo is evidence that Respondent registered the domain name primarily to disrupt Complainant’s competing business. The Panel finds these circumstances to be sufficiently indicative of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent); see also Disney Enters., Inc. v. Noel, FA 198805 (Nat. Arb. Forum Nov. 11, 2003) (“Respondent registered a domain name confusingly similar to Complainant's mark to divert Internet users to a competitor's website. It is a reasonable inference that Respondent's purpose of registration and use was to either disrupt or create confusion for Complainant's business in bad faith pursuant to Policy ¶¶ 4(b)(iii) [and] (iv).”).
Respondent’s use of the <puntomicrosoft.com> domain name to operate a competing company’s website, where Complainant’s logo is prominently displayed, clearly demonstrates Respondent’s intent to attract Internet users to its website by creating confusion with Complainant’s famous MICROSOFT mark and the products and services related thereto. The registration and use of a domain name containing Complainant’s mark primarily to capitalize on the goodwill associated with Complainant’s mark by attracting Complainant’s clients is evidence of bad faith registration and use under Policy ¶ 4(b)(iv). See Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question is obviously connected with the complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain); see also Identigene, Inc. v. Genetest Labs., D2000-1100 (WIPO Nov. 30, 2000) (finding bad faith where the respondent's use of the domain name at issue to resolve to a website where similar services are offered to Internet users is likely to confuse the user into believing that the complainant is the source of or is sponsoring the services offered at the site).
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 <puntomicrosoft.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra Franklin, Panelist
Dated: November 10, 2005
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum