Microsoft Corporation v. Duan Xiang Wang
Claim Number: FA0906001269201
Complainant is Microsoft
Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAME
The domain name at issue is <microsoftranslator.com>, registered with Todaynic.com, 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 18, 2009; the National Arbitration Forum received a hard copy of the Complaint on June 19, 2009.
On July 2, 2009, Todaynic.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftranslator.com> domain name is registered with Todaynic.com, Inc. and that Respondent is the current registrant of the name. Todaynic.com, Inc. has verified that Respondent is bound by the Todaynic.com, 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 July 7, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of July 27, 2009 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@microsoftranslator.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 30, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) 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 <microsoftranslator.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftranslator.com> domain name.
3. Respondent registered and used the <microsoftranslator.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has manufactured and sold computer software and related products and services since 1975. Complainant has registered its MICROSOFT mark with multiple governmental entities, including with the United States Patent and Trademark Office (“USPTO”) (i.e., Reg. No. 1,685,083 issued May 5, 1992) and the Chinese governmental trademark authority (Reg. No. 621,767 issued December 10, 1992). Complainant also uses its MICROSOFT mark to provide automated web-based translation services through its <microsofttranslator.com> domain name and the resolving website.
Respondent registered the <microsoftranslator.com> domain name on March 20, 2009. The disputed domain name resolves to a website featuring pop-up advertisements, redirecting customers to linked websites that promote products and services from third parties.
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.
The Panel finds that Complainant has established rights in
the MICROSOFT mark for purposes of Policy ¶ 4(a)(i) through registration of the
mark with the USPTO and the Chinese governmental trademark authority. 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.”); see also Google, Inc. v. DktBot.org,
FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had
established rights in the GOOGLE mark through its holding of numerous trademark
registrations around the world).
Complainant contends that Respondent’s <microsoftranslator.com>
domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy
¶ 4(a)(i). The disputed domain name
incorporates Complainant’s MICROSOFT mark in its entirety with the addition of
the descriptive word “translator,” the omission of the letter “t,” and the
affixation of the generic top-level domain “.com.” The word “translator” relates to
Complainant’s offering of translation services and thus, is descriptive of
Complainant’s business. The Panel finds
that these modifications fail to sufficiently distinguish Respondent’s disputed
domain name from Complainant’s mark.
Therefore, the Panel concludes that Respondent’s <microsoftranslator.com>
domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy
¶ 4(a)(i). See
Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <microsoftranslator.com> domain name. Based upon the allegations made in the Complaint, the Panel finds that Complainant has established a prima facie case pursuant to Policy ¶ 4(a)(ii), thus shifting the burden of proof to Respondent. Since Respondent has not responded to the Complaint, the Panel may infer that Respondent lacks any rights or legitimate interests in the disputed domain name. However, the Panel will examine the record to determine if Respondent has rights or legitimate interests pursuant to Policy ¶ 4(c). 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 Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence).
Respondent is using the <microsoftranslator.com>
domain name to display pop-up advertisements and links to advertise third-party
websites, some of which are in direct competition with Complainant. The Panel infers that Respondent is using the
disputed domain name to earn click-through fees and thus, finds that Respondent
has not used the disputed domain name in connection with a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a
legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See
Jerry Damson, Inc. v.
Furthermore, Complainant contends
that Respondent is not commonly known by the <microsoftranslator.com>
domain name. According to the pertinent
WHOIS information, the registrant of the disputed domain name is “Duan Xiang
Wang.” This information suggests that
Respondent is not commonly known by the disputed domain name and there is no
evidence in the record to suggest otherwise.
Thus, the Panel finds that Respondent is not commonly known by the <microsoftranslator.com>
domain name pursuant to Policy ¶ 4(c)(ii).
See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding
that the respondent was not commonly known by the <coppertown.com> domain
name where there was no evidence in the record, including the WHOIS
information, suggesting that the respondent was commonly known by the disputed
domain name).
Complainant has
satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent’s registration and use of the <microsoftranslator.com> domain name to display third-party links to Complainant’s competitors on the resolving website constitutes a disruption of Complainant’s business. The Panel agrees and finds that Respondent’s use of the disputed domain name qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See S. Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (concluding that the use of a confusingly similar domain name to attract Internet users to a directory website containing commercial links to the websites of a complainant’s competitors represents bad faith registration and use under Policy ¶ 4(b)(iii)); see also Persohn v. Lim, FA 874447 (Nat. Arb. Forum Feb. 19, 2007) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(iii) where a respondent used the disputed domain name to operate a commercial search engine with links to the complainant’s competitors).
Respondent is using the <microsoftranslator.com> domain name to attract Internet users to its website by creating a likelihood of confusion with Complainant’s MICROSOFT mark while offering pop-up advertisements and links to competing websites. Complainant contends that such use is further evidence of bad faith. The Panel presumes that Respondent receives click-through fees for diverting Internet users to said websites. Therefore, pursuant to Policy ¶ 4(b)(iv), the Panel finds that Respondent’s conduct constitutes bad faith registration and use of the disputed domain name. See Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the respondent engaged in bad faith registration and use by using a domain name that was confusingly similar to the complainant’s mark to offer links to third-party websites that offered services similar to those offered by the complainant); see also Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”).
Complainant 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 <microsoftranslator.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: August 11, 2009
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