Microsoft Corporation v.
Marcelo Figueredo
Claim Number: FA0901001241927
PARTIES
Complainant is Microsoft Corporation, (“Complainant”) represented by Molly Buck Richard,
of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftword.us>, registered with Melbourne It
Ltd.
PANEL
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.
James A Crary as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
(the “Forum”) electronically on January 8, 2009;
the Forum received a hard copy of the Complaint on January 9, 2009.
On January 12, 2009, Melbourne It Ltd confirmed by e-mail to the
Forum that the <microsoftword.us> domain name is registered with Melbourne
It Ltd and that Respondent is the current registrant of the name. Melbourne It
Ltd has verified that Respondent is bound by the Melbourne It Ltd registration agreement and has thereby agreed to
resolve domain-name disputes brought by third parties in accordance with the U.
S. Department of Commerce’s usTLD Dispute Resolution Policy (the “Policy”).
On January 14, 2009, a
Notification of Complaint and Commencement of Administrative Proceeding (the
“Commencement Notification”), setting a deadline of February 3, 2009 by which
Respondent could file a Response to the Complaint, was transmitted to
Respondent in compliance with Paragraph 2(a) of the Rules for usTLD Dispute
Resolution Policy (the “Rules”).
Having received no Response from Respondent, the Forum transmitted to
the parties a Notification of Respondent Default.
On February 7, 2009, pursuant to Complainant’s request to have the
dispute decided by a single-member Panel, the Forum appointed James A Crary 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. Therefore,
the Panel may issue its decision based on the documents submitted and in
accordance with the Policy, the 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.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
A. Complainant
1. Respondent’s <microsoftword.us> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2.
Respondent does not have any rights or
legitimate interests in the <microsoftword.us>
domain name.
3.
Respondent registered and used the <microsoftword.us> domain name in bad
faith.
B. Respondent failed to submit a Response in this proceeding.
FINDINGS
Complainant, Microsoft Corporation, is one of
the world’s leading manufacturers and sellers of computer hardware and
software. Complainant has operated under
the MICROSOFT mark since 1975, and has registered the mark numerous times with
the United States Patent and Trademark Office (“USPTO”) (“i.e. Reg. No.
1,689,468 issued May 26, 1992). One of
Complainant’s most widely used software programs is Microsoft Word, which is a
word processing program that was first introduced in 1983.
Respondent registered the disputed <microsoftword.us> domain name on
January 14, 2005. Respondent has never
made any active use of this domain name.
DISCUSSION
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(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 (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 or is
being used in bad faith.
Given the similarity between the Uniform Domain Name Dispute Resolution
Policy (“UDRP”) and the usTLD Policy, the Panel will draw upon UDRP precedent
as applicable in rendering its decision.
Identical
and/or Confusingly Similar
As a preliminary matter, Complainant asserts rights to the MICROSOFT mark by virtue of its USPTO trademark registrations. The Panel recognizes that a majority of panels have previously conferred rights in a mark to a complainant on this basis, including in at least one instance with respect to Complainant and its MICROSOFT mark. See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”). Therefore, the Panel concludes that Complainant has rights in the MICROSOFT mark pursuant to Policy ¶ 4(a)(i). See also Mason Cos., Inc. v. Chan, FA 1216166 (Nat. Arb. Forum Sept. 4, 2008) (“The Panel also concludes that Complainant’s trademark registration of its mark provides ample basis to conclude that it has rights in the mark.”).
Respondent’s <microsoftword.us> domain name contains Complainant’s MICROSOFT mark in its entirety, thereby comprising the dominant portion of the disputed domain name. While “word” would generally be considered a generic term, it is very much descriptive in this case of Complainant’s well-known Microsoft Word software, thus heightening the confusing similarity of the disputed domain name. The Panel also notes that the addition of the country-code top-level domain (“ccTLD”) “.us” is without relevance to this analysis. Therefore, the Panel concludes that Respondent’s <microsoftword.us> domain name is confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding that the addition of the generic term “finance,” which described the complainant’s financial services business, did not sufficiently distinguish the respondent’s disputed domain name from the complainant’s mark); see also Tropar Mfg. Co. v. TSB, FA 127701 (Nat. Arb. Forum Dec. 4, 2002) (finding that the addition of the country-code “.us” fails to add any distinguishing characteristic to the domain name).
The Panel finds
that Policy ¶ 4(a)(i) has been satisfied.
Rights
or Legitimate Interests
Complainant alleges that Respondent lacks all
rights and legitimate interests in the <microsoftword.us> domain name. Based upon the allegations made in the
Complaint, the Panel finds that Complainant has established a prima facie case in support of its
contentions, thus shifting the burden of proof to Respondent. Since Respondent has not responded to the
Complaint, the Panel presumes that Respondent lacks all rights and legitimate
interests in the <microsoftword.us>
domain name. However, the Panel
nevertheless chooses to examine the record in its entirety against the
applicable Policy ¶ 4(c) elements. See Mason Cos., Inc. v. Chan, FA 1216166
(Nat. Arb. Forum Sept. 4, 2008) (“The Panel finds that Complainant has made a prima facie showing that Respondent
lacks rights or legitimate interests in the [disputed domain] name. Thus, the burden shifts to Respondent to
demonstrate that it does have such rights or interests.”); see also Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30,
2002) (“[B]ased on Respondent's failure to respond, it is presumed that
Respondent lacks all rights and legitimate interests in the disputed domain
name.”).
Based on the
evidence in the record, Respondent has not submitted any evidence showing that
it is the owner or beneficiary of a mark identical to the <microsoftword.us> domain name. Therefore, Respondent cannot establish rights
or legitimate interests in the <microsoftword.us>
domain name pursuant to Policy ¶ 4(c)(i). See Meow Media Inc. v. Basil, FA 113280 (Nat. Arb. Forum Aug. 20, 2002) (finding that there was no evidence that the
respondent was the owner or beneficiary of a mark that is identical to the
<persiankitty.com> domain name); see also Pepsico, Inc.
v. Becky, FA 117014 (Nat. Arb.
Forum Sept. 3, 2002) (holding that because the respondent did not own any
trademarks or service marks reflecting the <pepsicola.us> domain name, it
had no rights or legitimate interests pursuant to Policy ¶ 4(c)(i)).
Respondent’s WHOIS domain name registration information for the <microsoftword.us> domain name identifies Respondent as “Marcelo Figueredo.” There is no evidence to suggest that Respondent is somehow affiliated with Complainant; rather, Complainant’s arguments in its Complaint state the contrary. Therefore, the Panel finds that Respondent lacks rights and legitimate interests in the <microsoftword.us> domain name pursuant to Policy ¶ 4(c)(iii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Respondent is not
making any active use of the <microsoftword.us>
domain name, nor is there evidence to suggest that Respondent has made
demonstrable preparations to use it.
Therefore, Respondent is clearly not using the <microsoftword.us> domain name in
connection with a bona fide offering
of goods or services or a legitimate noncommercial or fair use. Respondent therefore lacks rights and
legitimate interests in the <microsoftword.us>
domain name pursuant to Policy ¶¶ 4(c)(ii) and
(iv). See VICORP Rests., Inc. v. Paradigm Techs. Inc., FA
702527 (Nat.
Arb. Forum June 21,
2006) (finding that the respondent’s failure to use the disputed domain name
for several years was not a bona
fide offering of goods or services
or a legitimate noncommercial or fair use); see also George Weston Bakeries Inc. v.
McBroom, FA 933276 (Nat. Arb. Forum
Apr. 25, 2007) (finding that the respondent had no rights or legitimate
interests in a domain name where it failed to make any active use of the domain
name).
Since Respondent cannot establish rights or legitimate
interests pursuant to any of the Policy ¶ 4(c) factors, the Panel concludes
that Policy ¶ 4(a)(ii) is satisfied in Complainant’s favor.
Registration
and Use in Bad Faith
As previously mentioned, Respondent is not
making any active use of the <microsoftword.us>
domain name. In accordance with previous
cases decided on this point, the Panel finds that this provides ample grounds
to conclude that Respondent registered and is using the <microsoftword.us> domain name in bad
faith pursuant to Policy ¶ 4(a)(iii) generally. See Disney Enters. Inc. v.
Meyers, FA 697818 (Nat. Arb.
Forum June 26, 2006) (holding that the non-use of a disputed domain name for
several years constitutes bad faith registration and use); see also Pirelli & C. S.p.A. v.
On this basis, the Panel finds that Policy ¶ 4(a)(iii)
has been satisfied.
DECISION
Having established all three elements required under the usTLD Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftword.us> domain name be TRANSFERRED from Respondent to Complainant.
James A Crary, Panelist
Dated: February 23, 2009
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