Microsoft Corporation v. Haotmail.com a/k/a Hoitmail.com a/k/a Hotmaol.com a/k/a Hotrmail.com
Claim Number: FA0811001235771
Complainant is Microsoft Corporation (“Complainant”), represented by Molly
Buck Richard, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <haotmail.com>, <hoitmail.com>, <hotmaol.com> and <hotrmail.com> registered with Tucows Inc..
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
James A. Carmody, Esq., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on November 25, 2008; the National Arbitration Forum received a hard copy of the Complaint on November 26, 2008.
On December 4, 2008, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <haotmail.com>, <hoitmail.com>, <hotmaol.com> and <hotrmail.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. 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 December 5, 2008, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of December 26, 2008 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@haotmail.com, postmaster@hoitmail.com, postmaster@hotmaol.com and postmaster@hotrmail.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On January 2, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <haotmail.com>, <hoitmail.com>, <hotmaol.com> and <hotrmail.com> domain names are confusingly similar to Complainant’s HOTMAIL mark.
2. Respondent does not have any rights or legitimate interests in the <haotmail.com>, <hoitmail.com>, <hotmaol.com> and <hotrmail.com> domain names.
3. Respondent registered and used the <haotmail.com>, <hoitmail.com>, <hotmaol.com> and <hotrmail.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corp., is a globally-recognized corporation providing computer software and Internet services, including it’s free HOTMAIL electronic mail service. Use of the HOTMAIL mark began with the Hotmail Corporation in 1996. Microsoft and Hotmail Corp. merged in 1998, bringing the HOTMAIL mark under ownership of Microsoft Corp. Complainant has registered the HOTMAIL mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 2,165,601 issued June 16, 1998).
Respondent, Haotmail.com a/k/a Hoitmail.com a/k/a Hotmaol.com a/k/a Hotrmail.com, registered the disputed domain names on May 1, 1998. The <haotmail.com> and <hoitmail.com> domain names forward Internet users to Respondent’s commercial online directory at the <megego.com> domain name. The <hotmaol.com> and <hotrmail.com> domain names resolve to parked web pages featuring content allegedly about or relating to Complainant’s HOTMAIL service.
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.
Pursuant to Policy ¶ 4(a)(i), the
Panel finds that Complainant has established its rights in the HOTMAIL mark
through registration with a government trademark authority, in this case the
USPTO. See Bob Jones Univ. v. Kane, FA
324692 (Nat. Arb. Forum Oct. 21, 2004) (finding that the complainant’s listing
of first use of the BOB JONES UNIVERSITY mark on its USPTO registration
information establishes that the complainant had used the mark continuously and
extensively since the time of first use, thereby establishing rights in the
mark pursuant to Policy ¶ 4(a)(i)); see also Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26,
2006) (finding that the complainant had established rights in the PENTIUM,
CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
All of the disputed domain names contain Complainant’s mark with typographical errors (e.g. “hoit” instead of “hot”). The alteration of a well-known mark by adding or subtracting a letter is an unsubstantial change doing little to differentiate Respondent’s disputed domain names from Complainant’s mark. The disputed domain names are confusingly similar to Complainant’s HOTMAIL mark pursuant to Policy ¶ 4(a)(i). See Reuters Ltd. v. Global Net 2000, Inc., D2000-0441 (WIPO July 13, 2000) (finding that a domain name which differs by only one letter from a trademark has a greater tendency to be confusingly similar to the trademark where the trademark is highly distinctive); see also Victoria’s Secret v. Zuccarini, FA 95762 (Nat. Arb. Forum Nov. 18, 2000) (finding that, by misspelling words and adding letters to words, a respondent does not create a distinct mark but nevertheless renders the domain name confusingly similar to the complainant’s marks).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case in support of its allegations, the burden shifts to the Respondent to prove it has rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). The Panel finds that Complainant has indeed established a prima facie case, thus shifting the burden to Respondent to prove that it has rights and legitimate interests in the disputed domain names. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. 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 Policy ¶ 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 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”).
Due to the Respondent’s failure to respond to the Complaint, the Panel may presume that Respondent does not have rights and legitimate interests in the disputed domain names. See AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must 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 interest in the subject domain names.”); see also Geocities v. Geociites.com, D2000-0326 (WIPO June 19, 2000) (finding that the respondent has no rights or legitimate interests in the domain name because the respondent never submitted a response or provided the panel with evidence to suggest otherwise). However, the Panel will determine if Respondent has rights or legitimate interests under Policy ¶ 4(c), while accepting the allegations in the Complaint as true unless clearly contradicted by the evidence.
The <haotmail.com> and <hoitmail.com> domain names redirect Internet users to Respondent’s commercial online directory at the <megego.com> domain name. The <hotmaol.com> and <hotrmail.com> domain names resolve to webpages offering links to either new landing pages or third-party commercial websites with information on Complainant’s competitors. Respondent’s websites are presumed to be pay-per-click (“PPC”) sites where Respondent collects referral fees when Internet users click through to the advertised links. Both uses of the disputed domain names are intended to divert Internet users from Complainant by using its mark. The Panel finds that this is neither a bona fide offering of goods and services under Policy ¶ 4(c)(i) or a noncommercial or fair use of the domain names under Policy ¶ 4(c)(iii). See Am. Online, Inc. v. Advanced Membership Servs., Inc., FA 180703 (Nat. Arb. Forum Sept. 26, 2003) (“Respondent's registration and use of the <gayaol.com> domain name with the intent to divert Internet users to Respondent's website suggests that Respondent has no rights to or legitimate interests in the disputed domain name pursuant to Policy Paragraph 4(a)(ii).”); see also Pioneer Hi-Bred Int’l Inc. v. Chan, FA 154119 (Nat. Arb. Forum May 12, 2003) (finding that the respondent did not have rights or legitimate interests in a domain name that used the complainant’s mark and redirected Internet users to a website that pays domain name registrants for referring those users to its search engine and pop-up advertisements).
Respondent’s information in WHOIS designates the registrant
as the disputed domain names: “Haotmail.com
a/k/a Hoitmail.com a/k/a Hotmaol.com a/k/a Hotrmail.com.” Therefore, without further evidence, the
Panel finds that Respondent is not commonly known by the disputed domain
names. See St. Lawrence Univ.
v. Nextnet Tech, FA 881234 (Nat. Arb.
Forum Feb. 21, 2007) (concluding a respondent has no rights or legitimate
interests in a disputed domain name where there is no evidence in the record
indicating that the respondent is commonly known by the disputed domain name); see also IndyMac Bank F.S.B. v. Eshback, FA 830934 (Nat. Arb. Forum
Dec. 7, 2006) (finding that the respondent failed to submit evidence of that it
is commonly known by the disputed domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent’s use of the <haotmail.com>, <hoitmail.com>, <hotmaol.com>, and <hotrmail.com> domain names
evidences bad faith registration and use pursuant to Policy ¶ 4(b)(iii). The
confusingly similar disputed domain names resolve to websites that direct
Internet users to Complainant’s competitors either directly or through the use
of hyperlinks. Respondent takes
advantage of the high number of Internet users that possess or are interested
in HOTMAIL accounts and exploits typographical mistakes. The Panel finds that the Respondent’s use of
the disputed domain names is indicative of Respondent’s intent to disrupt Complainant’s
business. See Red
Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24,
2006) (finding that the respondent engaged in bad faith registration and use
pursuant to Policy ¶ 4(b)(iii) by using the disputed
domain names to operate a commercial search engine with links to the products
of the complainant and to complainant’s competitors, as well as by diverting
Internet users to several other domain names); see also St. Lawrence Univ. v. Nextnet Tech, FA 881234 (Nat. Arb. Forum Feb. 21, 2007) (“This Panel concludes
that by redirecting Internet users seeking information on Complainant’s
educational institution to competing websites, Respondent has engaged in bad
faith registration and use pursuant to Policy ¶
4(b)(iii).”).
Respondent is presumed to be receiving compensation in the form of click-through fees by redirecting Internet users. The Panel finds that this use through the <hotmaol.com> and <hotrmail.com> domain names is an attempt by Respondent to profit from Complainant’s HOTMAIL mark. This is further evidence in finding bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme); see also Bank of Am. Fork v. Shen, FA 699645 (Nat. Arb. Forum June 11, 2006) (holding that the respondent’s previous use of the <bankofamericanfork.com> domain name to maintain a web directory was evidence of bad faith because the respondent presumably commercially benefited by receiving click-through fees for diverting Internet users to third-party websites).
The Panel finds 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 <haotmail.com>, <hoitmail.com>, <hotmaol.com>, and <hotrmail.com> domain names be TRANSFERRED from Respondent to Complainant.
James A. Carmody, Esq., Panelist
Dated: January 16, 2009
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