Microsoft Corporation v. Salih Talha Bulut
Claim Number: FA1106001393570
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington D.C., USA. Respondent is Salih Talha Bulut (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoft-skype.com>, <microsoft-skype.net>, <skypemicrosoft.com>, and <skypemicrosoft.net>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 14, 2011; the National Arbitration Forum received payment on June 14, 2011.
On June 15, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoft-skype.com>, <microsoft-skype.net>, <skypemicrosoft.com>, and <skypemicrosoft.net> 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 June 17, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 7, 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-skype.com, postmaster@microsoft-skype.net, postmaster@skypemicrosoft.com, and postmaster@skypemicrosoft.net. Also on June 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 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 July 12, 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 name be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsoft-skype.com>, <microsoft-skype.net>, <skypemicrosoft.com>, and <skypemicrosoft.net> domain names are confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoft-skype.com>, <microsoft-skype.net>, <skypemicrosoft.com>, and <skypemicrosoft.net> domain names.
3. Respondent registered and used the <microsoft-skype.com>, <microsoft-skype.net>, <skypemicrosoft.com>, and <skypemicrosoft.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is a global provider of software solutions for a wide variety of industries. Complainant owns a large trademark registration portfolio for the MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 issued 1982). Complainant uses the mark as its global brand name.
Respondent, Salih Talha Bulut, registered the disputed domain names on May 10, 2011. The disputed domain names all resolve to a website offering the disputed domain names 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 contends that it has established its rights in the MICROSOFT mark by registering that mark with the USPTO. Prior panels have determined that registering a mark with the USPTO satisfies the requirement under Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Therefore, the Panel finds that Complainant has established its rights in the MICROSOFT mark under Policy ¶ 4(a)(i) by registering the mark with the USPTO (e.g., Reg. No. 1,200,236 issued 1982).
Complainant also contends Respondent’s <microsoft-skype.com>, <microsoft-skype.net>, <skypemicrosoft.com>, and <skypemicrosoft.net> domain names are confusingly similar to its MICROSOFT mark. All of the disputed domain names include the entire mark and the fanciful term “skype,” which is a product now offered by Complainant. The disputed domain names also include the generic top-level domains “.com” and “.net.” Two of the disputed domain names also include hyphens. The Panel finds that the addition of a gTLD, hyphens, and a term descriptive of Complainant’s products do not sufficiently differentiate the disputed domain names from Complainant’s own MICROSOFT mark. Therefore, Respondent’s disputed domain names are confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i). See Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) (finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar); see also Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
Policy ¶ 4(a)(i) has been established.
The Panel finds Complainant has met its initial burden of proof by offering submisisons which indicate Respondent lacks rights and legitimate interests in the disputed domain names. Complainant has submitted the WHOIS information and multiple screen prints of the website to which the disputed domain names resolve. As a result, the Panel finds Complainant has met its prima facie burden and Respondent now bears the burden of proving its rights or legitimate interests in the disputed domain names under Policy ¶ 4(a)(ii). 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.”). Although the Panel may assume Respondent lacks rights or legitimate interests in the disputed domain names due to its failure to file a response, the Panel will still examine the entire record before making such a detemination according to the factors listed in Policy ¶ 4(c). See Am. Express Co. v. Fang Suhendro, FA 129120 (Nat. Arb. Forum Dec. 30, 2002) (“[B]ased on Respondent's failure to respond, it is presumed that Respondent lacks all rights and legitimate interests in the disputed domain name.”).
Complainant alleges Respondent is not commonly known by the disputed domain names. Respondent has offered no evidence to support a finding to the contrary and the WHOIS information also lacks any information that may support such a finding. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶ 4(c)(ii). See 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); see also Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Complainant further alleges Respondent is not making a bona fide offering of goods or services through the disputed domain names nor is it making a legitimate noncommercial or fair use of the disputed domain names. Respondent’s disputed domain name resolves to a site which merely contains an offer to sell the disputed domain names. The Panel finds that the primary purpose of registering the disputed domains was to sell either to Complainant or another entity which does not constitute a bona fide offer of goods or services or a legitimate noncommercial or fair use of the disputed domain names under Policy ¶ 4(c)(i) and 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 Cruzeiro Licenciamentos Ltda v. Sallen, D2000-0715 (WIPO Sept. 6, 2000) (finding that rights or legitimate interests do not exist when one holds a domain name primarily for the purpose of marketing it to the owner of a corresponding trademark).
Policy ¶ 4(a)(ii) has been established.
Complainant alleges Respondent was attempting to capitalize on the disputed domain names by registering each one for the sole purpose of selling them. Respondent’s disputed domain names resolve to a site which prominently offers the domain names for sale. The Panel finds that the sole purpose of registering the disputed domain names was to turn around and sell them providing affirmative evidence of Respondent’s 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 Banca Popolare Friuladria S.p.A. v. Zago, D2000-0793 (WIPO Sept. 3, 2000) (finding bad faith where the respondent offered the domain names for sale).
Complainant also alleges Respondent registered the disputed domain names at an opportunistic time indicating bad faith registration use. Complainant contends Respondent registered the disputed domain name immediately after Complainant purchased a company operating under the trade name Skype. As the disputed domain names all include the term “skype” along with Complainant’s MICROSOFT mark there appears to be a definite relationship between the disputed domain names and the timing of their registration. The Panel finds that Respondent has opportunistically registered the disputed domain names indicating bad faith registration and use 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 Tech. Props., Inc. v. Hussain, FA 95411 (Nat. Arb. Forum Sept. 14, 2000) (“The Respondent took advantage of the public announcement that Tandy Corporation was changing its name to RadioShack by registering the domain names on the same day as a public announcement of a company’s name change. This is also evidence of bad faith.”).
Policy ¶ 4(a)(ii) has been established.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoft-skype.com>, <microsoft-skype.net>, <skypemicrosoft.com>, and <skypemicrosoft.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 13, 2011
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