Microsoft Corporation v. IDGLabs Network di Ilie Grigoras / Ilie Grigoras
Claim Number: FA1104001382971
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is IDGLabs Network di Ilie Grigoras / Ilie Grigoras (“Respondent”), Italy.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-tag.info>, registered with GoDaddy.com.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2011; the National Arbitration Forum received payment on April 11, 2011.
On April 13, 2011, GoDaddy.com confirmed by e-mail to the National Arbitration Forum that the <microsoft-tag.info> domain name is registered with GoDaddy.com and that Respondent is the current registrant of the name. GoDaddy.com has verified that Respondent is bound by the GoDaddy.com 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 14, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 4, 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@microsoft-tag.info. Also on April 14, 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 May 5, 2011, 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 (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:
Complainant was founded 1975 to operate as a provider of software solutions for businesses and individuals.
Complainant owns the MICROSOFT trademark and service mark and uses it for the promotion of its software goods and services.
Complainant holds trademark and service mark registrations for its MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,200,236, issued July 6, 1982).
Respondent registered the disputed <microsoft-tag.info> domain name on January 22, 2011.
The disputed domain name previously resolved to a website providing information about Complainant’s “Microsoft Tag” mobile tagging system.
After being contacted by Complainant, Respondent disabled the website content, and, currently, the resolving website contains nothing other than the words “Website Disabled.”
Respondent’s <microsoft-tag.info> domain name is confusingly similar to Complainant’s MICROSOFT mark.
Respondent is not commonly known by the disputed domain name.
Respondent has not been licensed or authorized by Complainant to use its MICROSOFT mark in the disputed domain name.
Respondent does not have any rights to or legitimate interests in the <microsoft-tag.info> domain name.
Respondent both registered and uses the <microsoft-tag.info> 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 and service mark 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 a 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 established rights in the MICROSOFT trademark and service mark under Policy ¶ 4(a)(i) by means of its registration of the mark with a national trademark authority, the USPTO. See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that a complainant had established rights to the MILLER TIME mark through its national trademark registrations); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that a complainant had established rights in the GOOGLE mark through its holding of trademark registrations around the world).
Respondent’s <microsoft-tag.info> domain name is confusingly similar to Complainant’s MICROSOFT mark. The disputed domain name incorporates Complainant’s entire mark, merely adding a hyphen, the descriptive word “tag,” which relates to complainant’s business, and the generic top-level domain (“gTLD”) “.info.” The addition of a hyphen and a gTLD do not significantly differentiate the disputed domain name from Complainant’s mark. See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Similarly, the inclusion of the descriptive word “tag,” which relates to Complainant’s “Microsoft Tag” application, does not remove the disputed domain name from the realm of confusing similarity. See Miller Brewing Co. v. Domain Active Pty. Ltd., FA 243606 (Nat. Arb. Forum Apr. 23, 2004) (finding that the <millerbeers.com> domain name was confusingly similar to a complainant’s MILLER mark, because:
[t]he addition of a descriptive term that describes Complainant’s business to Complainant’s registered mark, does not remove the domain from the realm of confusing similarity with regard to Policy ¶ 4(a)(i).
The Panel therefore concludes that Respondent’s <microsoft-tag.info> domain name is confusingly similar to Complainant’s MICROSOFT trademark and service mark under Policy ¶ 4(a)(i).
Complainant contends that Respondent does not have rights to or legitimate interests in the <microsoft-tag.info> domain name. In Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007), the panel stated that:
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), and then the burden shifts to Respondent to show it does have rights or legitimate interests.
Complainant has presented a prima facie case under this head of the Policy, and no response to the Complaint was submitted by Respondent. We may interpret this as demonstrating that Respondent has no rights to or legitimate interests in the contested domain name under Policy ¶ 4(a)(ii). See Pavillion Agency, Inc. v. Greenhouse Agency Ltd., D2000-1221 (WIPO Dec. 4, 2000) (finding that a respondents’ failure to respond to the allegations of a complaint filed under the Policy can be construed as an admission that it has no legitimate interest in disputed domain names). Nonetheless, 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 first observe that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the disputed domain name, and that Respondent has not been licensed or authorized by Complainant to use its MICROSOFT mark in the disputed domain name. Moreover, the pertinent WHOIS information shows that the registrant of the contested domain name is “IDGLabs Network di Ilie Grigoras / Ilie Grigoras,” which does not resemble the disputed domain name. On this record, we conclude that Respondent is not commonly known by the <microsoft-tag.info> domain name, and so has no rights to or legitimate interests in the contested domain name which may be recognized under Policy ¶ 4(c)(ii). See M. Shanken Commc’ns v. WORLDTRAVELERS-ONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that a respondent was not commonly known by the <cigaraficionada.com> domain name, and so failed to demonstrate that it had rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on the relevant WHOIS information and other evidence in the record); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that a respondent was not commonly known by the <lilpunk.com> domain name, and therefore had no rights to or legitimate interests in that domain name, where there was no evidence in the record showing that that respondent was commonly known by that domain name, and where a complainant asserted that it did not authorize or license that respondent’s use of its mark in a domain name.
We also note that Complainant asserts, without objection from Respondent, that, previously, Respondent used the disputed domain name to operate a website displaying information about Complainant’s “Microsoft Tag” system. This use of a domain name confusingly similar to Complainant’s mark is an attempt by Respondent to pass itself off as Complainant. It is therefore not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use of the subject domain name under Policy ¶ 4(c)(iii). 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 blatant unauthorized use of that complainant’s mark, was evidence that that respondent had no rights to or legitimate interests in the disputed domain name); see also Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003):
It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .
Respondent’s website currently resolves to an inactive site with no content other than the words “Website Disabled.” Such inactive holding of the contested domain name is itself evidence that Respondent lacks rights to and legitimate interests in the <microsoft-tag.info> domain name pursuant to Policy ¶ 4(a)(ii). See TMP Int’l, Inc. v. Baker Enters., FA 204112 (Nat. Arb. Forum Dec. 6, 2003):
[T]he Panel concludes that Respondent's [failure to make an active use] of the domain name does not establish rights or legitimate interests pursuant to Policy ¶ 4(a)(ii).
See also Nike, Inc. v. Crystal Int’l, D2001-0102 (WIPO Mar. 19, 2001) (finding no rights or legitimate interests where a respondent made no active use of contested domain names).
The Panel thus finds that Policy ¶ 4(a)(ii) has been satisfied.
Before Complainant’s contact with Respondent, the <microsoft-tag.info> domain name resolved to Respondent’s website offering information on Complainant’s “Microsoft Tag” software. Internet users searching for Complainant online may have found Respondent’s website because of the confusing similarity between the disputed domain name and Complainant’s MICROSOFT mark. The resolving website containing Complainant’s MICROSOFT mark likely created the impression that Complainant was affiliated with the content. In the circumstances here presented, we may comfortably presume that Respondent attempted to profit from this confusion. Such registration and use of the disputed domain name constitutes bad faith under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where a respondent diverted Internet users searching for a complainant’s website to its own website, likely profiting in the process); see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad faith where the domain name in question was obviously connected with a complainant’s marks, thus creating a likelihood of confusion for a respondent’s evident commercial gain).
Presently, Respondent’s website does not contain any active content other than the words “Website Disabled.” Respondent’s failure to make any active use of the disputed domain name is reflective of bad faith use and registration under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that a respondent’s failure to make an active use of a contested domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith).
For these reasons, the Panel finds that the proof requirements of Policy ¶ 4(a)(iii) have been met.
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <microsoft-tag.info> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 10, 2011
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