Microsoft Corporation v. get pivot
Claim Number: FA1007001334355
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 <getpivotcom.com>, registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE.
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.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 9, 2010.
On July 15, 2010, MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE confirmed by e-mail to the National Arbitration Forum that the <getpivotcom.com> domain name is registered with MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE and that Respondent is the current registrant of the name. MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE has verified that Respondent is bound by the MELBOURNE IT, LTD. d/b/a INTERNET NAMES WORLDWIDE 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 16, 2010, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 5, 2010 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@getpivotcom.com by e-mail. Also on July 16, 2010, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On August 16, 2010, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of a Written Notice, as defined in Rule 1. 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:
Complainant introduced its
PIVOT trademark to the media and general public on November 18, 2009.
Complainant has since used
the PIVOT mark to promote and advertise its software and services that enable
consumers to search, analyze, organize and display large amounts of data into
various collections.
Complainant’s PIVOT mark and
related products have been featured and advertised extensively in technology
news resources as well as by traditional press releases.
Complainant has filed for,
but not yet received, a trademark registration with the USPTO for its PIVOT
mark.
Complainant has eacquired
common law rights in the PIVOT mark that predate Respondent’s registration of
the disputed domain name.
Respondent registered the <getpivotcom.com> domain name on December 3, 2009.
Respondent’s domain name resolves to a website that looks identical to Complainant’s official <getpivot.com> website.
When users click on the link there entitled “Technical discussion,” they are brought to a webpage displaying links to websites unrelated to Complainant.
Respondent receives click-through fees associated with the visits of Internet users to the links displayed on its website.
Respondent’s <getpivotcom.com> domain name is confusingly similar to Complainant’s PIVOT mark.
Respondent is not commonly known by the disputed domain name or by Complainant’s PIVOT mark.
Complainant has not authorized Respondent to use its mark, and Respondent is not affiliated with Complainant in any way.
Respondent does not have any rights to or legitimate interests in the <getpivotcom.com> domain name.
Respondent registered and uses the <getpivotcom.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent in bad faith.
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 a 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
Complainant has applied for, but not yet received, trademark registration for its PIVOT mark. Previous panels have found that a trademark registration is not necessary to establish rights under Policy ¶ 4(a)(i) if Complainant can establish common law rights. To establish common law rights in its mark, Complainant must establish that the mark has developed secondary meaning for the general public. See, for example, Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that a complainant need not own a trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in that mark under Policy ¶ 4(a)(i)); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in a mark).
Respondent does not dispute that Complainant has acquired common law rights in the PIVOT mark that predate Respondent’s registration of the disputed domain name. We are satisfied that Complainant’s submissions on this point are sufficient for purposes of the Policy. See Goepfert v. Rogers, FA 861124 (Nat. Arb. Forum Jan. 17, 2007):
[T]here is no particular amount of evidence required
in order to establish common law rights.
The determination of what is sufficient is ad hoc based on the specific
facts and circumstances involved, as is the scope of the rights once
established.
See also Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that a complainant had common law rights in the McMULLEN COVE mark because that complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government officials, and newspaper articles featuring the mark).
The <getpivotcom.com>
domain name is confusingly similar to Complainant’s PIVOT mark. The domain name was formed merely by adding the
generic terms “get” and “com” as well as the generic top-level domain (“gTLD”)
“.com” to the PIVOT mark. This is not
sufficient to distinguish the domain name from the mark. Accordingly, the <getpivotcom.com> domain name is confusingly similar to
Complainant’s PIVOT mark under Policy ¶ 4(a)(i). See
Arthur Guinness Son & Co. (
The
mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to
adequately distinguish the Domain Name from the mark.
The Panel therefore finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant has alleged Respondent does not have rights to or legitimate interests in the <getpivotcom.com> domain name. Once Complainant makes out a prima facie case in support of its allegations under this head of the Policy, the burden shifts to Respondent to prove that it does have rights to or legitimate interests in the disputed domain name. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that:
complainant must first
make a prima facie case that
respondent lacks rights and legitimate interests in the disputed domain names
under Policy ¶ 4(a)(ii), and then the burden shifts to respondent to show it
does have rights or legitimate interests.
Complainant has made out a sufficient prima facie case on the point of Respondent’s lack of rights to or legitimate interests in the disputed domain name. Owing to Respondent’s failure to respond to the allegations of the Complaint, we may presume that Respondent does not have rights to or legitimate interests in the <getpivotcom.com> domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a complaint filed under the Policy allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). However we will examine the record before us, in light of the considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by observing that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name or by Complainant’s PIVOT mark. Further, Complainant asserts, without objection from Respondent, that Complainant has not authorized Respondent to use its mark and that Respondent is not affiliated with Complainant in any way. On this record, we are constrained to conclude that Respondent is not commonly known by the <getpivotcom.com> domain name under Policy ¶ 4(c)(ii). See AOL LLC v. AIM Profiles, FA 964479 (Nat. Arb. Forum May 20, 2007) (finding that, although a respondent listed itself as “AIM Profiles” in the relevant WHOIS contact information, there was no other evidence in the record to suggest that that respondent was actually commonly known by that domain name); see also Nature’s Path Foods Inc. v. Natures Path, Inc., FA 237452 (Nat. Arb. Forum Apr. 2, 2004) (“In its WHOIS contact information, Respondent lists its name and its administrative contact as ‘Natures Path, Inc.’ However, since Respondent failed to respond to the Complaint, there has not been any affirmative evidence provided to the Panel showing that Respondent was commonly known by the disputed domain name prior to its registration of the domain name.”).
We also note that Complainant contends, and Respondent does not deny, that the disputed domain name resolves to a website that appears to be identical to Complainant’s official <getpivot.com> website. Complainant further alleges, again without objection from Respondent, that when Internet users click on the link there entitled “Technical discussion,” they are brought to a webpage displaying links to websites unrelated to Complainant, and that Respondent receives click-through fees associated with the visits of Internet users to the links displayed on its website. Respondent’s use of the disputed domain name in the manner alleged is not 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 Black & Decker Corp. v. Clinical Evaluations, FA 112629 (Nat. Arb. Forum June 24, 2002) (holding that a respondent’s use of a disputed domain name to redirect Internet users to commercial websites unrelated to a complainant, and presumably with the purpose of receiving a commission or pay-per-click referral fee, did not evidence rights to or legitimate interests in the domain name); see also Disney Enters., Inc. v. Dot Stop, FA 145227 (Nat. Arb. Forum Mar. 17, 2003) (finding that a respondent’s diversionary use of a complainant’s mark in forming a domain name to attract Internet users to its own website, which contained links to unrelated websites, was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the domain name).
Because Respondent’s <getpivotcom.com> domain name resolves to a website that looks identical to Complainant’s official <getpivot.com> domain name, Internet users may be misled to believe that they are looking at Complainant’s product information and offerings. This is further evidence that Respondent’s use of the contested domain name is neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use of the contested domain and therefore that Respondent lacks rights to and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s attempts to pass itself off as a complainant online, in a blatantly unauthorized use of that complainant’s mark, is evidence that that respondent had no rights to or legitimate interests in a disputed domain name); see also MO Media LLC v. NeXt Age Technologies LTD, FA 220031 (Nat. Arb. Forum Feb. 18, 2004) (finding that a respondent lacked rights to and legitimate interests in a disputed domain name where a respondent copied a complainant’s websites in their entirety to resolve from the disputed domain name).
The Panel therefore finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent is using the disputed domain name to resolve to a website that appears to be identical to Complainant’s official <getpivot.com> website. However, when users click on the link titled “Technical discussion,” they are brought to a webpage displaying links to websites unrelated to Complainant. Respondent receives click-through fees from the businesses advertised on and linked to its website. Respondent’s use of the disputed domain name thus to divert Internet users to websites and businesses unrelated to Complainant, for Respondent’s financial gain, is evidence that Respondent registered and is using the domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See T-Mobile USA, Inc. v. utahhealth, FA 697821 (Nat. Arb. Forum June 7, 2006) (holding that the registration and use of a domain name confusingly similar to a complainant’s mark to direct Internet traffic to a commercial “links page” in order to profit from click-through fees or other revenue sources constitutes bad faith under Policy ¶ 4(b)(iv)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (holding that a respondent was taking advantage of the confusing similarity between the <lilpunk.com> domain name and a complainant’s LIL PUNK mark by using the domain name to maintain a website with links to third-party websites unrelated to that complainant, and that such use for that respondent’s commercial gain demonstrated bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv)).
Moreover, Respondent is attempting to pass itself off as Complainant by maintaining a website resolving from the contested domain name that appears to be identical to Complainant’s official <getpivot.com> website. The confusing similarity between Complainant’s mark and the domain name will likely confuse Internet users as to the possibility of an affiliation and sponsorship of the website by complainant. This is further evidence of Respondent’s bad faith registration and use of the contested domain under Policy ¶ 4(a)(iii). See Target Brands, Inc. v. JK Internet Servs., FA 349108 (Nat. Arb. Forum Dec. 14, 2004) (finding bad faith registration and use of a contested domain name where a respondent not only registered a complainant’s TARGET mark, but “reproduced . . . Complainant’s TARGET mark . . . [and] added Complainant’s distinctive red bull’s eye [at the domain name] . . . to a point of being indistinguishable from the original.”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222 (WIPO May 29, 2000) (finding that a respondent’s use of the title “Dodgeviper.com Official Home Page” gave consumers the misimpression that a complainant endorsed and sponsored that respondent’s website).
Finally, Respondent’s registration of the <getpivotcom.com> domain name just weeks after Complainant released information about its PIVOT product launch constitutes opportunistic bad faith on the part of Respondent under Policy ¶ 4(a)(iii). See Sun v. Color Vivo, FA 1282898 (Nat. Arb. Forum October 21, 2009)(finding that registration of <javastore.com> a little over a month after a complainant’s announcement of a similarly named service was evidence of “opportunistic bad faith under Policy ¶ 4(a)(iii)”); see also Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that a respondent’s registration of the <seveballesterostrophy.com> domain name at the time of the announcement of the Seve Ballesteros Trophy golf tournament “strongly indicates an opportunistic registration”).
For these reasons, the Panel finds that Policy ¶ 4(a)(iii) has been satisfied.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be GRANTED.
Accordingly, it is Ordered that the <getpivotcom.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 24, 2010
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page
National
Arbitration Forum