NATIONAL ARBITRATION FORUM

 

DECISION

 

Microsoft Corporation v. Marcelo Figueredo

Claim Number: FA0901001241927

 

PARTIES

Complainant is Microsoft Corporation, (“Complainant”) represented by Molly Buck Richard, of Richard Law Group, Inc., Texas, USA.  Respondent is Marcelo Figueredo, (“Respondent”), California, USA.

 

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. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).

 

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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