Microsoft Corporation v. Yaser Taheri / Nikrayan Parsian
Claim Number: FA1105001390681
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington, D.C., USA. Respondent is Yaser Taheri / Nikrayan Parsian (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co>, registered with Tucows 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 25, 2011; the National Arbitration Forum received payment on May 25, 2011.
On May 26, 2011, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows 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 May 27, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of June 16, 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@microsoftskype.mobi, postmaster@microskype.org, postmaster@microskype.mobi, and postmaster@microskype.co. Also on May 27, 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 June 21, 2011 pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Honorable Karl V. Fink (Ret.) 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co> domain names.
3. Respondent registered and used the <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has been using the MICROSOFT mark since 1975 to manufacture, market and sell computer software and related products. Complainant owns numerous worldwide trademark registrations for its MICROSOFT mark, including those with the United States Patent and Trademark Office ("USPTO") (e.g., Reg. No. 1,200,236 issued July 6, 1982). On May 10, 2011, Complainant announced publicly that it would acquire the Internet communications company, Skype.
Respondent, Yaser Taheri / Nikrayan Parsian, registered the disputed domain names on May 11, 2011. Respondent’s disputed domain names resolve to websites that offer the domain names for sale for a minimum bid of $50,000.
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.
First, the Panel finds that Complainant has demonstrated sufficient rights in its MICROSOFT mark through its submission of numerous trademark registrations worldwide, including those with the USPTO (e.g., Reg. No. 1,200,236 issued July 6, 1982). Further, the Panel notes that while Complainant owns many trademark registrations, it does not own a registration in Respondent’s country of Iran. However, the Panel also notes that Complainant need only establish rights in any jurisdiction to have rights in its mark under 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 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).
Second, the Panel must determine whether the disputed domain names are confusingly similar to Complainant’s mark. Complainant notes that the <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co> domain names contain variations and combinations of its MICROSOFT mark paired with the term and mark SKYPE, which is owned by a third-party. The Panel notes that previous UDRP decision have reflected the idea that merely abbreviating a mark while adding others’ marks to the domain name does not create a distinctive domain name. Rather, the Panel finds that Respondent’s disputed domain names are in fact confusingly similar to Complainant’s MICROSOFT mark, where some of the domain names abbreviate Complainant’s mark, and all add the third-party mark of SKYPE, and a generic top-level domain (“gTLD”), or the country-code top-level domain (“ccTLD”) “.co.” See Minn. State Lottery v. Mendes, FA 96701 (Nat. Arb. Forum Apr. 2, 2001) (finding that the <mnlottery.com> domain name was confusingly similar to the complainant’s MINNESOTA STATE LOTTERY mark under Policy ¶ 4(a)(i)); see also G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(i).
Complainant has alleged Respondent does not have rights or legitimate interests in the <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co> domain names. Once Complainant makes a prima facie case in support of its allegations, the burden shifts to Respondent to prove that it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). The Panel finds Complainant has made a sufficient prima facie case. Due to Respondent’s failure to respond to the Complaint, the Panel may assume that Respondent does not have rights or legitimate interests in the disputed domain names. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] respondent lacks rights and legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii), and then the burden shifts to [the] respondent to show it does have rights or legitimate interests.”); see also Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that failing to respond allows a presumption that the complainant’s allegations are true unless clearly contradicted by the evidence). However, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c).
Complainant argues that there is no evidence that Respondent is commonly known by the disputed domain names where the WHOIS information on record indicates that “Yaser Taheri” is the registrant of the domain names. Further, Complainant argues that it has not given Respondent permission to use its mark in any way, and that Respondent is not affiliated with Complainant. The Panel finds that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii) where there is no evidence on record indicating that Respondent is known by the domain names. 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 M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Lastly, Complainant argues, and submits evidence to show that Respondent is using the disputed domain names to resolve to a website that purports to be selling the domain names. Complainant notes that the resolving web pages indicate that Respondent is seeking a minimum offer of $50,000 for each domain name. Further, Complainant submits evidence that Respondent contacted Complainant and offered to sell Complainant the domain names at issue, also for $50,000 per domain name. The Panel finds that there is ample evidence suggesting that Respondent desires to rid itself of its rights to the domain names. In this instance the Panel finds that such behavior by Respondent is evidence that Respondent is not using the domain names for 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 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)); see also Hewlett-Packard Co. v. High Performance Networks, Inc., FA 95083 (Nat. Arb. Forum July 31, 2000) (finding no rights or legitimate interests where the respondent registered the domain name with the intention of selling its rights).
Therefore, the Panel also concludes that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
Complainant has argued and proven that Respondent registered and is using the disputed domain names in an attempt to sell each domain name either to Complainant or the public for a minimum of $50,000. Complainant argues that such use of the confusingly similar domain names is evidence of bad faith. The Panel agrees and finds that Respondent registered and is using the domain names in bad faith pursuant to Policy ¶ 4(b)(i), where Respondent has contacted Complainant to initiate a sale attempt, as well as having the domain names resolve to websites that identify the domain names as being for sale. See Campmor, Inc. v. GearPro.com, FA 197972 (Nat. Arb. Forum Nov. 5, 2003) (“Respondent registered the disputed domain name and offered to sell it to Complainant for $10,600. This demonstrates bad faith registration and use pursuant to Policy ¶ 4(b)(i).”); see also Nabisco Brands Co. v. Patron Group, D2000-0032 (WIPO Feb. 23, 2000) (finding that the respondent registered and used the domain names to profit where the respondent offered to sell the domain names for $2,300 per name).
Further, Complainant alleges that Respondent opportunistically registered the domain names, which it claims to be further evidence of Respondent’s bad faith. Complainant argues that it made a public announcement on May 10, 2011 that it would be acquiring the Skype Internet communications company, and that Respondent registered the domain names on May 11, 2011. Complainant contends that it is clear that Respondent only registered the domain names in response to Complainant’s announcement. The Panel agrees and finds that Respondent’s registration of the domain names containing Complainant’s MICROSOFT mark as well as a third-party’s SKYPE mark, the day after Complainant’s announced acquisition is evidence of bad faith under Policy ¶ 4(a)(iii). See Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the 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”); see also 3M Co. v. Jeong, FA 505494 (Nat. Arb. Forum Aug. 11, 2005) (“Respondent’s registration of the disputed domain name the same day that Complainant issued the press release regarding the acquisition constitutes opportunistic bad faith.”).
Therefore, the Panel finds that Complainant has satisfied the requirements of 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 <microsoftskype.mobi>, <microskype.org>, <microskype.mobi>, and <microskype.co> domain names be TRANSFERRED from Respondent to Complainant.
Karl V. Fink (Ret.), Panelist
Dated: June 24, 2011
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