Microsoft Corporation v. can wei a/k/a shiliyuan
Claim Number: FA1106001395460
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington, D.C., USA. Respondent is shiliyuan / can wei (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftskype.info> and <microsoftskype.net>, 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.
Honorable Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 24, 2011; the National Arbitration Forum received payment on June 24, 2011.
On June 26, 2011, GoDaddy.com Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftskype.info> and <microsoftskype.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 30, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 20, 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.info and postmaster@microsoftskype.net. Also on June 30, 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 26, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <microsoftskype.info> and <microsoftskype.net> domain names are confusingly similar to Complainant’s MICROSOFT and SKYPE marks.
2. Respondent does not have any rights or legitimate interests in the <microsoftskype.info> and <microsoftskype.net> domain names.
3. Respondent registered and used the <microsoftskype.info> and <microsoftskype.net> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, owns the MICROSOFT mark. The MICROSOFT mark has multiple registrations with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 registered July 6, 1982). Complainant uses its marks in connection with the manufacture, marketing, and sale of computer software and related products and services. On May 10, 2011, Complainant announced its acquisition of Skype. The SKYPE mark has been registered several times with the USPTO (e.g., Reg. No. 3,005,039 registered April 10, 2005). The SKYPE mark is used in connection with online calling and video chat services.
Respondent, can wei a/k/a shiliyuan, registered the <microsoftskype.info> and <microsoftskype.net> domain names on May 10, 2011. Both domain names resolve to websites which display pay-per-click links for goods and services similar to those which Complainant provides in connection with the SKYPE mark.
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 has provided the Panel with evidence of registration of the MICROSOFT mark with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982). Complainant has additionally provided evidence of registration of its SKYPE mark with the USPTO (e.g., Reg. No. 3,005,039 registered April 10, 2005). According to past cases such as Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) and Lockheed Martin Corp. v. Hoffman, FA 874152 (Nat. Arb. Forum Jan. 31, 2007), the registration of a mark with a federal trademark authority such as the USPTO satisfies Complainant’s burden to demonstrate rights in a trademark. Given that Respondent is from China, it is important to note that the registration of a trademark does not need to be in the country Respondent is operating in for Complainant to maintain its rights in the mark. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence); see also Wal-Mart Stores, Inc. v. Stork, D2000-0628 (WIPO Aug. 11, 2000) (finding the complainant has rights to the name when the mark is registered in a country even if the complainant has never traded in that country). Complainant’s showing of registration of both of its marks leads the Panel to find that Complainant has rights in the MICROSOFT and SKYPE marks pursuant to Policy ¶ 4(a)(i).
Complainant contends that Respondent has registered confusingly similar domain names to its MICROSOFT and SKYPE marks. Both of Complainant’s marks are fully incorporated into both of the disputed domain names. The inclusion of two marks as opposed to one does not make the domain name so different from each of the marks that it is no longer subject to confusing similarity. See Nintendo of Am. Inc. v. Pokemon, D2000-1230 (WIPO Nov. 23, 2000) (finding confusing similarity where respondent combined the complainant’s POKEMON and PIKACHU marks to form the <pokemonpikachu.com> domain name); see also G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that the addition of other drug names does not create a distinct mark capable of overcoming a claim of confusing similarity, “it merely creates a domain name with severe potential to confuse Internet users as to the source, sponsorship and affiliation of the domain”). Furthermore, Respondent’s addition of a generic top-level domain (“gTLD”) to each of the domain names is irrelevant to a finding of confusing similarity because a top-level domain is a required element of every domain name. See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”); see also Isleworth Land Co. v. Lost in Space, SA, FA 117330 (Nat. Arb. Forum Sept. 27, 2002) (“[I]t is a well established principle that generic top-level domains are irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Respondent only added a second mark of Complainant’s and a gTLD to distinguish its <microsoftskype.info> and <microsoftskype.net> domain names from Complainant’s marks. The Panel thus finds that the domain names are confusingly similar to Complainant’s marks under Policy ¶ 4(a)(i).
The Panel finds that Policy ¶ 4(a)(i) is met.
Complainant’s who make a prima facie case in support of their allegations shift the burden of proof onto Respondent to provide evidence to the contrary. See Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007) (finding that once a prima facie case has been established by the complainant, the burden then shifts to the respondent to demonstrate its rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (finding that if the complainant satisfies its prima facie burden, “then the burden shifts to the respondent to show that it does have rights or legitimate interest in the subject domain names.”). Both Wild West Domains, Inc. v. Jung, D2004-0243 (WIPO May 18, 2004) and Eroski, So. Coop. v. Getdomains Ishowflat Ltd., D2003-0209 (WIPO July 28, 2003) (“It can be inferred that by defaulting Respondent showed nothing else but an absolute lack of interest on the domain name.”) support a finding that where a respondent fails to respond to a complaint, the panel reviewing the case may assume that the respondent does not have rights and legitimate interests in the disputed domain names.
Findings that a respondent is or is not commonly known by a disputed domain name are traditionally found through analysis of information complainant provides on the subject as well as the WHOIS listing for the disputed domain name. 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). Complainant has asserted that Respondent is not licensed to use either of its marks and that Respondent is not affiliated with Complainant. Respondent has used the MICROSOFT and SKYPE marks despite this. Respondent, if commonly known by these marks, may have rights or legitimate interests in the disputed domain name. However, nothing in the WHOIS information suggests to the Panel that this is the case. Therefore, the Panel finds that Respondent is not commonly known by the <microsoftskype.info> and <microsoftskype.net> domain names under Policy ¶ 4(c)(ii).
Cases such as Disney Enters., Inc. v. Kamble, FA 918556 (Nat. Arb. Forum Mar. 27, 2007) and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007), demonstrate that the use of disputed domain names to promote third-party websites which compete with Complainant is an impermissible use. Both of Respondent’s <microsoftskype.info> and <microsoftskype.net> domain names resolve to webpages that display third-party links that compete with Complainant’s software and online video-chat services. The Panels finds that this use is neither a Policy ¶ 4(c)(i) bona fide offering of goods and services or a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use.
The Panel finds that Policy ¶ 4(a)(ii) is met.
The registration and use of a domain name in a way which disrupts a complainant’s business is evidence of bad faith on the part of the respondent. See Am. Airlines, Inc. v. Tex. Int’l Prop. Assoc., FA 914854 (Nat. Arb. Forum Apr. 10, 2007) (holding that where the respondent’s website featured hyperlinks to competing websites and included a link to the complainant’s website, the respondent’s use of the <redeemaamiles.com> domain name constituted disruption under Policy ¶ 4(b)(iii)); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business). Complainant provides computer software and services. With its acquisition of Skype, Complainant also provides Internet users with a venue for making voice and video calls online. Respondent’s domain names resolve to sites which display links to third-party websites offering similar and competing services. The Panel therefore finds that Respondent registered and used the disputed domain names in bad faith under Policy ¶ 4(b)(iii).
Complainant contends that Respondent’s intent to attract Internet users to its domain names for commercial gain based on the confusion instilled by the domain names is further evidence of bad faith. The Panel finds that Respondent’s registration and use of the disputed domain names to display links to Complainant’s competitors, for which the Respondent presumably receives referral fees, is evidence of bad faith under Policy ¶ 4(b)(iv). See Univ. of Houston Sys. v. Salvia Corp., FA 637920 (Nat. Arb. Forum Mar. 21, 2006) (“Respondent is using the disputed domain name to operate a website which features links to competing and non-competing commercial websites from which Respondent presumably receives referral fees. Such use for Respondent’s own commercial gain is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iv).”); see also Red Hat, Inc. v. Haecke, FA 726010 (Nat. Arb. Forum July 24, 2006) (finding that the respondent engaged in bad faith registration and use pursuant to Policy ¶ 4(b)(iv) by using the disputed domain names to operate a commercial search engine with links to the products of the complainant and to complainant’s competitors, as well as by diverting Internet users to several other domain names).
Finally, Complainant alleges that Respondent’s registration and use of the <microsoftskype.info> and <microsoftskype.net> domain names is a product of opportunistic bad faith. Previous panels have held that the registration and use of a confusingly similar domain name following the announcement of events related to the marks incorporated in a domain name demonstrates a respondent’s opportunistic bad faith. 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 Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (“If there had been any doubt as to bad faith, the fact that registration was on the same day the news leaked about the merger, which was put in evidence, is a compelling indication of bad faith that [the] respondent has to refute and which he has failed to do. The panel finds a negative inference from this.”). Respondent registered and began using the disputed domains on the same day that Complainant announced its acquisition of Skype and the SKYPE marks. The near-immediate registration and use of the <microsoftskype.info> and <microsoftskype.net> domain names by Respondent shows the Panel that Respondent registered the disputed domain names as a result of Complainant’s announcement. As such, the Panel finds that Respondent’s registration and use was a result of opportunistic bad faith pursuant to Policy ¶ 4(a)(iii).
The Panel finds that Policy ¶ 4(a)(iii) is met.
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.info> and <microsoftskype.net> domain names be TRANSFERRED from Respondent to Complainant.
Honorable Karl V. Fink (Ret.), Panelist
Dated: July 27, 2011
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