Microsoft Corporation v. S.H. INC
Claim Number: FA0909001284612
Complainant is Microsoft
Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc.,
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <microsoftonecare.com>, <msantispy.com>, <ms-antispyware.com>, <msvirus.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com>, registered with Enom, Inc.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically September 15, 2009; the National Arbitration Forum received a hard copy of the Complaint September 16, 2009.
On September 16, 2009, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <microsoftonecare.com>, <msantispy.com>, <ms-antispyware.com>, <msvirus.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. verified that Respondent is bound by the Enom, Inc. registration agreement and thereby has agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On September 21, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of October 13, 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@microsoftantispy.com, postmaster@microsoftanti-spyware.com, postmaster@microsoft-antispyware.com, postmaster@microsoftonecare.com, postmaster@msantispy.com, postmaster@ms-antispyware.com, postmaster@msvirus.com, postmaster@msnpeoplesearch.com, postmaster@httpxbox.com, postmaster@windowsregistryrepair.com, postmaster@widowsdefender.com, postmaster@windosdefender.com, and postmaster@wwwindowslive.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 20, 2009, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum 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 <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, and <microsoftonecare.com> domain names are confusingly similar to Complainant’s MICROSOFT mark.
Respondent’s <msantispy.com>, <ms-antispyware.com>, and <msvirus.com>
domain names are confusingly similar to Complainant’s MS mark.
Respondent’s <msnpeoplesearch.com>
domain name is confusingly similar to Complainant’s MSN mark.
Respondent’s <httpxbox.com>
domain name is confusingly similar to Complainant’s XBOX mark.
Respondent’s <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names are confusingly similar to Complainant’s WINDOWS mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <microsoftonecare.com>, <msantispy.com>, <ms-antispyware.com>, <msvirus.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names.
3. Respondent registered and used the <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <microsoftonecare.com>, <msantispy.com>, <ms-antispyware.com>, <msvirus.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, manufactures, markets,
and sells computer software and related products and services. Complainant has operated under the MICROSOFT
mark since 1975. Complainant holds
multiple trademark registrations with the United States Patent and Trademark
Office (“USPTO”) for its MICROSOFT (e.g., Reg. No. 1,200,236 issued July 6,
1982); MS (e.g., Reg. No. 1,333,178 issued April 30, 1985); MSN (e.g., Reg. No.
2,854,091); XBOX (e.g., Reg. No. 2,663,880 issued December 17, 2002); and
WINDOWS (e.g., Reg. No. 1,872,264 issued January 10, 1995) marks. Complainant also holds numerous trademarks
with government trademark authorities around the world. Additionally, some of Complainant’s marks
were registered with the
Respondent, S.H. INC, registered the <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <microsoftonecare.com>, <msantispy.com>, <ms-antispyware.com>, <msvirus.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names no earlier than August 12, 2003. The <microsoftantispy.com>, <microsoftonecare.com>, <msantispy.com>, and <ms-antispyware.com> domain names resolve to websites that promote “Antispyware 2009,” a product in direct competition with Complainant’s security products, including “Microsoft OneCare.” The <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names resolve to websites featuring hyperlink directories that point to third-party products, many of which compete with Complainant’s antivirus, security, and other products. These disputed domain names also resolve to websites featuring pop-up advertisements. The <msvirus.com> domain name resolves to a website containing hyperlinks to third-party products, some of which compete with Complainant’s computer software and related products and services.
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."
Given 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 will draw such inferences as the Panel 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 Complainant to 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 registered its MICROSOFT (e.g., Reg. No.
1,200,236 issued July 6, 1982), MS (e.g., Reg. No. 1,333,178 issued April 30,
1985), MSN (e.g., Reg. No. 2,854,091), XBOX (e.g., Reg. No. 2,663,880 issued
December 17, 2002), and WINDOWS marks (e.g., Reg. No. 1,872,264 issued January
10, 1995) with the USPTO. While
Complainant has registered some of its marks with the Belize trademark
authority (MICROSOFT (e.g. Reg. No. 7,846 issued December 16, 1997) and WINDOWS
(Reg. No. 7,847 issued July 10, 1997)), the Panel finds that it is not
necessary for Complainant to register the mark in Respondent’s country, Belize,
as long as Complainant can demonstrate rights with some government trademark
authority. See Koninklijke KPN N.V. v.
Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does
not require that the mark be registered in the country in which the respondent
operates; therefore it is sufficient that the complainant can demonstrate a
mark in some jurisdiction). The Panel thus
finds Complainant established rights under Policy ¶ 4(a)(i) in the MICROSOFT,
MS, MSN, XBOX, and WINDOWS marks through its registrations with the USPTO and the
Complainant alleges Respondent’s <microsoftantispy.com>, <microsoftanti-spyware.com>,
and <microsoft-antispyware.com> domain names are
confusingly similar to Complainant’s MICROSOFT mark. The disputed domain names include
Complainant’s entire mark, and simply add one of the descriptive terms “antispy”
or “anti-spyware,” which describe Complainant’s anti-spyware products. Respondent also includes a generic top-level
domain (“gTLD”) “.com.” The Panel finds
the additions of a descriptive term and a gTLD are insufficient to adequately
distinguish the disputed domain names from Complainant’s marks under Policy ¶
4(a)(i). See Kohler Co. v. Curley, FA 890812 (Nat. Arb. Forum Mar. 5, 2007)
(finding confusing similarity where <kohlerbaths.com>,
the disputed domain name,
contained the complainant’s mark in its entirety adding “the descriptive term
‘baths,’ which is an obvious allusion to complainant’s business.”); see also Jerry Damson, Inc. v.
Complainant also claims that Respondent’s <microsoftonecare.com>
domain name is confusingly similar
to Complainant’s MICROSOFT mark. The
disputed domain names simply add one of the descriptive phrases “onecare” and
the gTLD “.com.” The phrase “onecare”
describes Complainant’s “OneCare” security product. The Panel finds that the additions of a
descriptive phrase and a gTLD fail to adequately distinguish the disputed domain
name from Complainant’s mark Policy ¶ 4(a)(i). See Am. Online, Inc.
v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003)
(finding that the respondent’s domain names, which incorporated the complainant’s
entire mark and merely added the descriptive terms “traffic school,” “defensive
driving,” and “driver improvement” did not add any distinctive features capable
of overcoming a claim of confusing similarity); see also Reese v. Morgan, FA 917029 (Nat. Arb.
Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level
domain “.com” is insufficient to differentiate a disputed domain name from a
mark).
Therefore, the Panel finds that Respondent’s disputed domain name is
confusingly similar to Complainant’s MICROSOFT mark.
Complainant contends
that Respondent’s <msantispy.com>, <ms-antispyware.com>,
and <msvirus.com> domain names are confusingly similar to
Complainant’s MS mark. The disputed
domain names include Complainant’s MS mark, and simply add one of the
descriptive terms “antispy,” “-antispyware,” and “virus,” which describe
Complainant’s anti-spyware products.
Respondent also includes a generic top-level domain (“gTLD”) “.com.” The Panel finds that the additions of a
descriptive term and a gTLD are insufficient to adequately distinguish the
disputed domain names from Complainant’s mark Policy ¶ 4(a)(i). See
supra Kohler Co. v. Curley; see also
supra Jerry Damson, Inc. v.
Complainant further
claims that Respondent’s disputed <msnpeoplesearch.com> domain
name is confusingly similar to Complainant’s MSN mark. The disputed domain name simply adds the
descriptive phrase “peoplesearch” and the gTLD “.com.” The phrase “peoplesearch” describes a
computer service offered by Complainant.
The Panel finds that the additions of a descriptive phrase and a gTLD
fail to adequately distinguish the disputed domain name from Complainant’s mark
Policy ¶ 4(a)(i). See
supra Am. Online, Inc. v.
Anytime Online Traffic Sch.; see also supra Reese v. Morgan. Therefore, the Panel finds Respondent’s
disputed domain name is confusingly similar to Complainant’s MSN mark.
Complainant asserts
that Respondent’s <windowsregistryrepair.com> domain name is
confusingly similar to Complainant’s WINDOWS mark. The disputed domain name simply adds the descriptive
phrase “registryrepair” and the gTLD “.com.”
The phrase “registryrepair” describes computer services offered by
Complainant. The Panel finds the
addition of a descriptive phrase and a gTLD fail to adequately distinguish the
disputed domain name from Complainant’s mark Policy ¶ 4(a)(i). See supra Am. Online, Inc. v. Anytime Online Traffic Sch.; see
also supra Reese v. Morgan.
Therefore, the Panel finds that Respondent’s disputed domain name is
confusingly similar to Complainant’s WINDOWS mark.
Complainant argues that
Respondent’s <widowsdefender.com>, <windosdefender.com>,
and <wwwindowslive.com> domain names are confusingly
similar to Complainant’s WINDOWS marks. The disputed domain names contain common
misspellings or typographical errors and Respondent adds the gTLD “.com.” The disputed domain names also include one of
the descriptive terms “defender” and “live,” which describe products of
Complainant. The Panel finds that common
misspellings and typographical errors, the addition of a descriptive term, and
the addition of a gTLD all fail to adequately distinguish the disputed domain
name from Complainant’s marks Policy ¶ 4(a)(i). See Internet Movie Database, Inc. v. Temme, FA 449837
(Nat. Arb. Forum May 24, 2005) (finding that the respondent’s disputed domain
names were confusingly similar to the complainant’s mark because the disputed
domain names were common misspellings of the mark involving keys that were
adjacent to the current keys comprising the complainant’s mark); see
also Neiman Marcus Group, Inc. v. S1A, FA 128683 (Nat. Arb.
Forum Dec. 6, 2002) (holding confusing similarity has been established because
the prefix “www” does not sufficiently differentiate the
<wwwneimanmarcus.com> domain name from the complainant's NEIMAN-MARCUS
mark); see also Brown &
Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) (finding
that the <hoylecasino.net> domain name is confusingly similar to the
complainant’s HOYLE mark, and that the addition of “casino,” a generic word
describing the type of business in which the complainant is engaged, does not
take the disputed domain name out of the realm of confusing similarity); see
also Rollerblade, Inc. v.
McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the
domain name such as “.net” or “.com” does not affect the domain name for the
purpose of determining whether it is identical or confusingly similar).
Therefore, the Panel finds that Respondent’s disputed domain names are
confusingly similar to Complainant’s XBOX and WINDOWS marks.
Finally, Complainant
argues that Respondent’s <httpxbox.com> domain name is
confusingly similar to Complainant’s XBOX mark. The disputed domain name contains
common misspellings and typographical errors and Respondent adds the gTLD
“.com.” The Panel finds common misspellings
and typographical errors and the addition of a gTLD all fail to adequately
distinguish the disputed domain name from Complainant’s mark Policy ¶
4(a)(i). See
supra Internet Movie Database, Inc. v. Temme; see
also supra Rollerblade, Inc.
v. McCrady. Therefore, the Panel finds that Respondent’s
disputed domain name is confusingly similar to Complainant’s XBOX mark.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Complainant alleges that Respondent lacks rights and legitimate interests in the <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <microsoftonecare.com>, <msantispy.com>, <ms-antispyware.com>, <msvirus.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names. Previous panels have found that when a complainant makes a prima facie case in support of its allegations, the burden shifts to the respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a prima facie case. Given Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent has no rights or legitimate interests in the disputed domain names. However, the Panel still examines the record to determine whether Respondent has rights or legitimate interests in the disputed domain name under Policy ¶ 4(c). 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 Vanguard Group, Inc. v. Collazo, FA 349074 (Nat. Arb. Forum Dec. 1, 2004) (finding that because the respondent failed to submit a Response, “Complainant’s submission has gone unopposed and its arguments undisputed. In the absence of a Response, the Panel accepts as true all reasonable allegations . . . unless clearly contradicted by the evidence.”).
The WHOIS information provided by Complainant lists
Respondent as “S.H. INC.” Respondent
fails to offer evidence contradicting this information or showing that Respondent
is commonly known by the disputed domain names.
No other evidence in the record shows that Respondent is commonly known
by the disputed domain names.
Complainant further asserts that Respondent is not authorized to use the
MICROSOFT,
Respondent’s <microsoftantispy.com>, <microsoftonecare.com>, <msantispy.com>, and <ms-antispyware.com> domain names resolve to websites that promote “Antispyware 2009,” a product in direct competition with Complainant’s security products, including “Microsoft OneCare.” The Panel finds that Respondent’s use of these confusingly similar disputed domain names is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(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 Ultimate Elecs., Inc. v. Nichols, FA 195683 (Nat. Arb. Forum Oct. 27, 2003) (finding that the respondent's “use of the domain name (and Complainant’s mark) to sell products in competition with Complainant demonstrates neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the name”).
The <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <msnpeoplesearch.com>, <httpxbox.com>,
<windowsregistryrepair.com>, <widowsdefender.com>, <msvirus.com>,
<windosdefender.com>, and <wwwindowslive.com>
domain names resolve to websites featuring hyperlink directories that point to
third-party products, many of which compete with Complainant’s antivirus, security,
and other products. The eight disputed
domain names, other than <msvirus.com>, also resolve to websites
featuring pop-up advertisements. The
Panel finds Respondent’s use of the nine disputed domain names is not a bona fide offering of goods or services
under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use of
the disputed domain names under Policy ¶ 4(c)(iii). See
24 Hour Fitness USA, Inc. v. 24HourNames.com-Quality Domains For
Respondent’s <msvirus.com> domain name resolves to a website featuring an offer to sell the disputed domain name. The Panel finds that acquiring a domain name in order to sell it is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(iii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights to or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Mothers Against Drunk Driving v. Hyun-Jun Shin, FA 154098 (Nat. Arb. Forum May 27, 2003) (holding that under the circumstances, the respondent’s apparent willingness to dispose of its rights in the disputed domain name suggested that it lacked rights or legitimate interests in the domain name).
The Panel finds Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Respondent’s <msvirus.com> domain name includes an offer of sale on the
resolving website. The Panel finds that acquiring
a domain name for the purpose of selling the domain name supports findings of bad
faith registration and use under Policy ¶ 4(b)(i). See
Neiman Marcus Group, Inc. v.
AchievementTec, Inc., FA 192316 (Nat. Arb.
Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name
for $2,000 sufficient evidence of bad faith registration and use under Policy ¶
4(b)(i)); see also Am. Anti-Vivisection Soc’y v. “Infa dot Net” Web
Serv., FA 95685 (Nat. Arb. Forum
Nov. 6, 2000) (finding that “general offers to sell the domain name, even if no
certain price is demanded, are evidence of bad faith”).
Respondent’s <microsoftantispy.com>, <microsoftonecare.com>, <msantispy.com>,
and <ms-antispyware.com> domain names resolve to websites
that promote “Antispyware 2009,” a product in direct competition with
Complainant’s security products, including “Microsoft OneCare.” The <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <msnpeoplesearch.com>, <httpxbox.com>,
<windowsregistryrepair.com>, <widowsdefender.com>, <msvirus.com>,
<windosdefender.com>, and <wwwindowslive.com>
domain names resolve to websites featuring hyperlink directories that point to
third-party products, many of which compete with Complainant’s antivirus,
security, and other products. Internet
users, interested in purchasing products and services from Complainant, may find
one of Respondent’s domain names and purchase products or services from
Complainant’s competitors instead of from Complainant. The Panel finds Respondent’s use of the
disputed domain names disrupt Complainant’s computer products and services
business, which constitutes bad faith registration and use under Policy ¶ 4(b)(iii). See
David Hall Rare Coins v.
In such circumstances, the Panel is permitted to make an
inference that Respondent profits from click-through
fees from the third-party hyperlinks and the pop-up advertisements. Respondent also likely profits from the promotion
of the “Antispyware 2009” product.
Internet users may become confused as to Complainant’s affiliation with
the resolving websites and disputed domain names, and Respondent attempts to
profit from that confusion. The Panel
finds that Respondent’s use of the disputed domain names constitutes bad faith
registration and use under Policy ¶ 4(b)(iv).
See
The Panel finds Complainant satisfied the elements of ICANN 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 <microsoftantispy.com>, <microsoftanti-spyware.com>, <microsoft-antispyware.com>, <microsoftonecare.com>, <msantispy.com>, <ms-antispyware.com>, <msvirus.com>, <msnpeoplesearch.com>, <httpxbox.com>, <windowsregistryrepair.com>, <widowsdefender.com>, <windosdefender.com>, and <wwwindowslive.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: November 3, 2009.
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