Microsoft Corporation v. Sinetbiz.com a/k/a Ravindra Bala
Claim Number: FA1103001377330
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Sinetbiz.com a/k/a Ravindra Bala (“Respondent”), New York, USA, acting PRO SE.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftwareco.com>, <microsoftwarecompany.com>, <microsoftwareinc.com>, <msftc.com>, <msftcompany.com>, <msftcorp.com>, <msftnet.com>, <msoftemail.com>, <msoftmail.com>, <msoftusa.com>, <windowsskills.com>, and <windowsys.com>, registered with Godaddy.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.
Richard DiSalle as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 11, 2011; the National Arbitration Forum received payment on March 11, 2011.
On March 14, 2011, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftwareco.com>, <microsoftwarecompany.com>, <microsoftwareinc.com>, <msftc.com>, <msftcompany.com>, <msftcorp.com>, <msftnet.com>, <msoftemail.com>, <msoftmail.com>, <msoftusa.com>, <windowsskills.com>, and <windowsys.com> domain names are registered with Godaddy.com, Inc. and that Respondent is the current registrant of the names. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On March 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 26, 2011 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@microsoftwareco.com, postmaster@microsoftwarecompany.com, postmaster@microsoftwareinc.com, postmaster@msftc.com, postmaster@msftcompany.com, postmaster@msftcorp.com, postmaster@msftnet.com, postmaster@msoftemail.com, postmaster@msoftmail.com, postmaster@msoftusa.com, postmaster@windowsskills.com, and postmaster@windowsys.com. Also on March 17, 2011, 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 facsimile, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on April 27, 2011.
On April 28, 2011 an Additional Submission was timely received from Complainant, and was considered.
On April 28, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Richard DiSalle as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant, Microsoft Corporation, states it uses the MICROSOFT and WINDOWS marks in connection with its business. Complainant claims it owns more than 25 registrations with the United States Patent and Trademark Office (“USPTO”) for the MICROSOFT mark and more than 600 trademark and service mark applications and registrations for the mark throughout the world (e.g., U.S. Reg. No. 1,200,236 issued July 6, 1982). In addition, Complainant claims it holds multiple registrations with the USPTO and numerous trademark authorities around the world for the WINDOWS mark (e.g., U.S. Reg. No. 1,872,264 issued January 10, 1995).
Complainant alleges the <microsoftwareco.com>, <microsoftwarecompany.com>, and <microsoftwareinc.com> domain names are confusingly similar to its MICROSOFT mark. Complainant argues that Respondent replicates Complainant’s mark in its entirety in the disputed domain names. In addition, Complainant contends that adding letters and common abbreviations like “co” and “inc” fail to adequately distinguish a domain name from a mark. Complainant also claims that adding generic terms like “ware” and “company” fail to distinguish a domain name from a mark. Finally, Complainant argues that the attachment of the generic top-level domain (“gTLD”) “.com” to a mark is irrelevant to the Policy ¶ 4(a)(i) analysis.
Complainant further alleges the <msftc.com>, <msftcompany.com>, <msftcorp.com>, and <msftnet.com> domain names are confusingly similar to its MICROSOFT mark. Complainant claims “MSFT” is the NASDAQ stock exchange abbreviation for its MICROSOFT mark. Complainant argues that Respondent fully incorporates this abbreviation in the <msftc.com>, <msftcompany.com>, <msftcorp.com>, and <msftnet.com> domain names. Again, Complainant contends that attaching letters or a generic term and a gTLD to a mark fails to adequately distinguish a domain name from the mark.
Complainant also alleges the <msoftemail.com>, <msoftmail.com>, and <msoftusa.com> domain names are confusingly similar to its MICROSOFT mark.
Finally, Complainant alleges the <windowsskills.com> and <windowsys.com> domain names are confusingly similar to its WINDOWS mark. Complainant claims Respondent fully incorporates its mark in the disputed domain names and then adds either the generic term “skills” or the letters “ys” and the gTLD “.com” to the mark.
B. Respondent
None
of these Ten Domains show independently the word Microsoft. On the Internet and
in the world of Information Technology, the words “soft” and “software” are
used by millions of businesses and millions of companies continue to operate as
totally different entities. MSFT.COM does not belong to Micosoft Corp. It
belongs to the company called NaturalProducts.com. Any prefix starting with
the letter "M" and ending with the word “soft” can fit into MSFT and
not necessarily Microsoft. The three Domains <msoftemail.com>, <msoftmail.com>,
and <msoftusa.com> cannot be claimed by Microsoft. Finally, Respondent contends that the disputed
domain names are comprised of common and generic terms and as such
cannot be found to be confusingly similar to Complainant’s mark.
(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.
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."
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:
(4) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(5) Respondent has no rights or legitimate interests in respect of the domain name; and
(6) the domain name has been registered and is being used in bad faith.
The Panel finds Complainant’s trademark registrations with the USPTO for the MICROSOFT and WINDOWS marks sufficiently prove its rights in the marks pursuant to Policy ¶ 4(a)(i). 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 Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that the complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO).
The Panel finds Respondent’s <microsoftwareco.com>, <microsoftwarecompany.com>, <microsoftwareinc.com> domain names are confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i). See Amazon.com, Inc. v. Ikhizamah, D2002-1168 (WIPO Mar. 17, 2003) (holding that the <zamazon.com> domain name was confusingly similar to the complainant’s AMAZON.COM mark); see also Am. Online, Inc. v. Amigos On Line RJ, FA 115041 (Nat. Arb. Forum Aug. 28, 2002) (finding that the <aolrj.com> domain name was confusingly similar to the complainant’s AOL mark because “…the addition of a string of indiscriminate letters to a famous mark in a second level domain does not differentiate the domain name from the mark.”); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term); see also Disney Enters. Inc. v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the <disneyvacationvillas.com> domain name to be confusingly similar to Complainant’s DISNEY mark because it incorporated Complainant’s entire famous mark and merely added two terms to it); 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). The Panel finds Respondent creates a common misspelling of the mark by omitting the letters “i,” “c,” “r,” and “o” from the mark. The Panel further finds that adding generic terms like “email,” “mail,” and “USA” as well as the gTLD “.com” to a mark fail to adequately distinguish the domain names from the mark. See Am. Online, Inc. v. David, FA 104980 (Nat. Arb. Forum Apr. 10, 2002) (“The misspelling of a famous mark does not diminish the confusingly similar nature between the mark and the disputed domain names.”); see also Compaq Info. Techs. Group, L.P. v. Seocho, FA 103879 (Nat. Arb. Forum Feb. 25, 2002) (finding that the domain name <compq.com> is confusingly similar to the complainant’s COMPAQ mark because the omission of the letter “a” in the domain name does not significantly change the overall impression of the mark); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra; see also Reese v. Morgan, supra.
The Panel holds Respondent’s <msoftemail.com>, <msoftmail.com>, and <msoftusa.com> domain names are confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i). The Panel finds Respondent’s changes fail to distinguish the domain names from Complainant’s mark. See Amazon.com, Inc. v. Ikhizamah, supra; see also Am. Online, Inc. v. Amigos On Line RJ, supra; see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, supra; see also Disney Enters. Inc. v. McSherry, supra; see also Reese v. Morgan, supra.
The Panel holds that Respondent’s windowsskills.com> and <windowsys.com> domain names are confusingly similar to Complainant’s WINDOWS mark under Policy ¶ 4(a)(i).
Complainant is not affiliated with Respondent nor has it licensed or otherwise authorized Respondent to use its MICROSOFT or WINDOWS marks. The WHOIS information lists “Sinetbiz.com a/k/a Ravindra Bala” as the registrant of the disputed domain names, which the Panel finds is not similar to the domain names. Based on the evidence in the record, the Panel concludes Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006).
The Panel finds Respondent’s general offer to sell the disputed domain names to the public indicates that Respondent lacks rights and legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”); see also 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 or legitimate interests in that domain name under Policy ¶ 4(a)(ii)).
Acquiring confusingly similar domain names solely for the purpose of selling them supports a finding of bad faith. The Panel finds Respondent registered and is using the disputed domain names in bad faith pursuant to Policy ¶ 4(b)(i). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general offer of the disputed domain name registration for sale establishes that the domain name was registered in bad faith 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”).
The Panel also finds Respondent’s pattern of registering infringing domain names constitutes registration and use in bad faith under Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000)
The Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <microsoftwareco.com>, <microsoftwarecompany.com>, <microsoftwareinc.com>, <msftc.com>, <msftcompany.com>, <msftcorp.com>, <msftnet.com>, <msoftemail.com>, <msoftmail.com>, <msoftusa.com>, <windowsskills.com>, and <windowsys.com> domain names be TRANSFERRED from Respondent to Complainant.
Richard DiSalle, Panelist
Dated: May 9, 2011
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