Microsoft Corporation v. Brian Coram
Claim Number: FA1103001381124
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Brian Coram (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsofttagtattoo.com>, registered with GoDaddy.com, Inc.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 30, 2011; the National Arbitration Forum received payment on March 30, 2011.
On March 31, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsofttagtattoo.com> domain name is 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 April 1, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 21, 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@microsofttagtattoo.com. Also on April 1, 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 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 April 25, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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 <microsofttagtattoo.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsofttagtattoo.com> domain name.
3. Respondent registered and used the <microsofttagtattoo.com> domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a worldwide provider of software, services, and solutions and uses its MICROSOFT mark in connection with software and other goods and services. Complainant owns multiple trademark registrations for the MICROSOFT mark, including many with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 issued July 6, 1982). In January 2009, Complainant publicly announced its MICROSOFT Tag technology, which allows consumers to use their mobile phones to snap an image and gain instant access to relevant online content. Complainant promotes its MICROSOFT Tag product on its website at <tag.microsoft.com>.
Respondent, Brian Coram, registered the disputed domain name on February 1, 2011. The disputed domain name resolves to a website that contains a list of six domain names, including <microsofttagtattoo.com>, along with Respondent’s email address and a statement at the top that reads, “All for Sale.”
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.
Complainant claims rights in its MICROSOFT name by virtue of its registration of the name with the USPTO (e.g., Reg. No. 1,200,236 issued July 6, 1982). The Panel finds that Complainant’s trademark registration unequivocally proves Complainant’s rights in the mark for the purposes of Policy ¶ 4(a)(i). See Enter. Rent-A-Car Co. v. Language Direct, FA 306586 (Nat. Arb. Forum Oct. 25, 2004) (finding that the complainant, who registered the ENTERPRISE RENT-A-CAR mark with the USPTO, successfully established rights in the mark); see also UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007) (finding “no difficulty” in holding that the complainant had established rights in its asserted marks for the purposes of Policy ¶ 4(a)(i) through its trademark registrations with the USPTO).
Complainant alleges that Respondent’s <microsofttagtattoo.com> domain name is confusingly similar to Complainant’s MICROSOFT mark. First, the disputed domain name incorporates the entirety of Complainant’s mark, which the Panel finds is evidence, by itself, that the domain name is confusingly similar to Complainant’s mark. See Oki Data Am. v. ASD, Inc., D2001-0903 (WIPO Nov. 6, 2001) (finding that the <okidataparts.com> domain name is confusingly similar to the complainant’s OKIDATA mark because “…the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity [sic] or confusing similarity for purposes of the Policy despite the addition of other words to such marks.”). Second, the disputed domain name adds the descriptive word “tag,” which clearly relates to a technology product offered by Complainant, as well as the generic term “tattoo.” The Panel finds that the addition of two terms, either descriptive or generic, do not properly distinguish the disputed domain name. See Am. Express Co. v. Buy Now, FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS and AMEX marks. Each disputed domain name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely adds nondistinctive, descriptive and generic terms, some of which describe Complainant’s business.”); 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). Third, the disputed domain name incorporates the generic top-level domain (“gTLD”) “.com,” which Complainant argues is the most common gTLD. The Panel finds that the addition of “.com” is insufficient to create sufficient distinction between Complainant’s mark and the disputed domain name. See Jerry Damson, Inc. v. Tex. Int’l Prop. Assocs., FA 916991 (Nat. Arb. Forum Apr. 10, 2007) (“The mere addition of a generic top-level domain (“gTLD”) “.com” does not serve to adequately distinguish the Domain Name from the mark.”). For these three reasons, the Panel finds that Respondent’s <microsofttagtattoo.com> domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
The requirements of Policy ¶ 4(a)(ii) require that Complainant first make a prima facie case in support of its contention that Respondent lacks rights and legitimate interests in the disputed domain name before the burden of proof will shift to Respondent. See Domtar, Inc. v. Theriault., FA 1089426 (Nat. Arb. Forum Jan. 4, 2008) (“It is well established that, once a complainant has made out a prima facie case in support of its allegations, the burden shifts to respondent to show that it does have rights or legitimate interests pursuant to paragraph 4(a)(ii) of the Policy.”). The Panel finds that Complainant has established a prima facie case and the burden is now on Respondent to provide affirmative evidence of its rights or legitimate interests in the <microsofttagtattoo.com> domain name. Respondent has failed to provide any sort of response to these proceedings and Respondent’s default fails to create any circumstance whereby the Panel could presume Respondent has any rights or legitimate interests in the disputed domain name. See Parfums Christian Dior v. QTR Corp., D2000-0023 (WIPO Mar. 9, 2000) (finding that by not submitting a response, the respondent has failed to invoke any circumstance which could demonstrate any rights or legitimate interests in the domain name). Nevertheless, the Panel will examine the record, in accordance with the factors contained in Policy ¶ 4(c), to make a determination as to Respondent’s rights or interests in the domain name, if any.
Complainant asserts that Respondent is not commonly known by the disputed domain name. The WHOIS information identifies the registrant of the domain name as “Brian Coram,” a name which has no apparent connection to the <microsofttagtattoo.com> domain name. According to Complainant, Respondent is not affiliated with Complainant in any way nor is Respondent licensed by Complainant to use Complainant’s MICROSOFT mark. Respondent is also not an authorized vendor, supplier, or distributor of Complainant’s goods and services. For these reasons, and without evidence in the record to the contrary, the Panel finds that Respondent is not commonly known by the disputed 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 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).
Complainant submits evidence that Respondent is not using the disputed domain name for any purpose other than to offer it for sale. The website resolving from the <microsofttagtattoo.com> domain name merely consists of a list of six domain names owned by Respondent (including the disputed domain name) along with Respondent’s email address and a statement indicating that the listed domain names are all for sale. The Panel finds that Respondent’s use of the disputed domain name to sell the domain, along with other domain names owned by Respondent, is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit 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 under Policy ¶ 4(c)(iii).”); 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 that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant argues that Respondent is offering the disputed domain name for sale. Policy ¶ 4(b)(i) governs bad faith where a disputed domain name is acquired for the purpose of selling that domain name. Here, the only content on Respondent’s resolving website is a list of domain names owned by Respondent, including the <microsofttagtattoo.com> domain name, along with Respondent’s email address and a general statement indicating that the domain names are for sale. The Panel finds that Respondent appears to have registered and is using the disputed domain name primarily for the purpose of selling the domain name. Therefore, the Panel supports a finding of bad faith registration and use under 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. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
The Panel finds that Complainant has 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 <microsofttagtattoo.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: May 9, 2011
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