Microsoft Corporation v. SL, Cursos Luis Bonilla S.L.
Claim Number: FA1108001401432
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is SL, Cursos Luis Bonilla S.L. (“Respondent”), Spain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <cursopowerpoint.com>, registered with Network Solutions, LLC.
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.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 2, 2011; the National Arbitration Forum received payment on August 2, 2011.
On August 2, 2011, Network Solutions, LLC confirmed by e-mail to the National Arbitration Forum that the <cursopowerpoint.com> domain name is registered with Network Solutions, LLC and that Respondent is the current registrant of the name. Network Solutions, LLC has verified that Respondent is bound by the Network Solutions, LLC 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 August 3, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 23, 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@cursopowerpoint.com. Also on August 3, 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 August 29, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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:
Founded in 1975, Microsoft is a worldwide leader in software, services and solutions that help people and businesses realize their full potential.
Microsoft is the owner of numerous proprietary trademarks for its goods and services, including the famous trademark POWERPOINT which Microsoft has used since 1987 for its leading PowerPoint® presentation software. Microsoft also provides various training tools and courses under the POWERPOINT mark. The current version of PowerPoint software is known as PowerPoint 2010. Previous versions include PowerPoint 2007 and PowerPoint 2003. Microsoft has owned the domain name <powerpoint.com> since 1996 and uses this domain to promote its PowerPoint software.
POWERPOINT is registered in the United States and internationally. U.S. Registration No. 1,475,795 for POWERPOINT issued on February 9, 1988. POWERPOINT is also registered in the European Union, where Respondent purportedly resides (see CTM Registration No. 79657). These trademark registrations substantially predate Respondent’s registration of the disputed domain names.
Microsoft uses the [PowerPoint] logo [graphic omitted] to promote its PowerPoint software (the “PowerPoint Logo”). This logo is a registered trademark in the U.S. (Registration No. 3360915) and the European Union (Registration No. 5576558).
ICANN Rule 3(b)(viii).
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: ICANN Rule 3(b)(ix).
A. CONFUSINGLY SIMILAR DOMAIN NAME (ICANN Rule 3(b)(ix)(1) and ICANN Policy ¶4(a)(i)):
The disputed domain name is confusingly similar to Complainant’s well-known POWERPOINT trademark.
The disputed domain name incorporates Complainant’s distinctive POWERPOINT mark in its entirety, adding only a generic top-level domain and the word “curso” (meaning “course”). These added elements are insufficient to negate the confusing similarity between Respondent’s domain name and Complainant’s POWERPOINT mark, particularly where the added element “curso” relates directly to Complainant’s POWERPOINT software and training tools. See Hewlett-Packard Dev. Co. L.P. v. Surya Tech. c/o Manoj Kumar Allakattu, FA0708001059665 (Nat. Arb. Forum Oct. 2, 2007)(finding <hpsoftware.com> confusingly similar to HP and noting that “addition of a term that relates to the business in which Complainant engages and the addition of the gTLD are not sufficient to differentiate a domain name from a known mark”); Microsoft Corp. v. OzGrid Bus. Apps., FA0408000314308 (Nat. Arb. Forum Oct. 6. 2004)(finding <microsoftexceltraining.com> confusingly similar to MICROSOFT and noting, “the Panel may find that the confusing similarity of Complainant’s mark and Respondent’s domain name is heightened because both Respondent and Complainant are in the same industry, i.e. the provision of training programs for the EXCEL program”); Microsoft Corp. v. NA c/o Amber Lowery, FA0701000887609 (Nat. Arb. Forum Feb 26, 2007)(finding <microsoftcourseware.com> confusingly similar to MICROSOFT and awarding transfer); Microsoft Corp. v. Doug Goodman, FA0911001294422 (Nat. Arb. Forum Dec. 31, 2009)(finding <bingtutorials.com> confusingly similar to BING and awarding transfer); and Abbott Labs. v. Whois Service c/o Belize Domain WHOIS Service, FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”).
The disputed domain name was plainly chosen by Respondent for its association with Complainant and is confusingly similar to the POWERPOINT mark.
B. NO RIGHTS OR LEGITIMATE INTERESTS IN DOMAIN NAME (ICANN Rule 3(b)(ix)(2) and ICANN Policy ¶4(a)(ii):
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by Complainant’s POWERPOINT trademark, nor has Respondent used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
WHOIS identifies Respondent as SL, Cursos Luis Bonilla S.L. Respondent is not commonly known by Complainant’s POWERPOINT trademark. Respondent is not affiliated with Complainant in any way. Respondent is not licensed by Complainant to use Complainant’s POWERPOINT trademark. Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. See Broadcom Corp. v. Ibecom PLC, FA 361190 (Nat. Arb. Forum Dec. 22, 2004) (finding no rights or legitimate interests where there was nothing in the record to indicate that Respondent was commonly known by the domain name); and Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (finding that the WHOIS information, and its failure to imply that Respondent is commonly known by the disputed domain name, is a factor in determining that Policy ¶4(c)(ii) does not apply).
The disputed domain name is currently inactive. “[O]ne does not engender rights or legitimate interests merely based on holding domain names without any active use or demonstrable preparations to use them in connection with 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).” Nike, Inc. v. Fang Wei et al., FA0907001272458 (Nat. Arb. Forum August 21, 2009)(citations omitted). In fact, failure to develop a site demonstrates a lack of genuine interest in the domain name. Flor-Jon Films, Inc. v. Larson, FA 94974 (Nat. Arb. Forum July 25, 2000). See also Sun Microsystems, Inc. v. Color Vivo Internet c/o David Carrero Fdez-Baillo, FA0909001282898 (Nat. Arb. Forum October 21, 2009)(noting that failure to make any active use of a domain name is not 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)); George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that a respondent had no rights or legitimate interests in a domain name under either Policy ¶4(c)(i) or Policy ¶4(c)(iii) where it failed to make any active use of the domain name); and HP v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s inactive use of a domain name that contains complainant’s mark is not 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)).
The disputed domain formerly resolved to a commercial web site that prominently displayed Complainant’s registered PowerPoint Logo and promoted Respondent’s instruction services on various topics, including topics unrelated to PowerPoint or Microsoft (e.g., courses on typing and accounting). This is not a legitimate or bona fide use. See Microsoft Corp. v. OzGrid Bus. Apps., FA 314308 (Nat. Arb. Forum, October 6, 2004)(“Respondent’s use of a domain name confusingly similar to Complainant’s MICROSOFT mark to redirect Internet users interested in Complainant’s services and products to a commercial website that offers unauthorized MICROSOFT EXCEL training services and products as well as offers to sell software, software templates, consulting services and publications 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 of the domain name pursuant to Policy ¶4(c)(iii)”); Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum, January 7, 2002) (finding no bona fide offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website); and Computerized Sec. Sys., Inc. v. Hu, FA157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services”).
Furthermore, Respondent’s highly prominent use of Complainant’s Logo is likely to cause confusion as to whether Respondent’s website is associated with Complainant. This constitutes passing off, and is not a legitimate use. See Microsoft Corp. v. Jean Pierre Lafont a/k/a Yasir Yasir, FA1009001349611 (Nat. Arb. Forum Nov. 9, 2010)(finding that the Respondent’s use of Complainant’s MSN mark and logo showed a lack of rights and legitimate interests according to Policy ¶4(a)(ii)); and Mulberry Company (Design) Ltd. v. ronld chen AKA chen, ronld, D2010-1718 (WIPO Nov. 26, 2010)(noting: “[the] disputed domain names are being used by the Respondent for websites which falsely appear to be affiliated, connected or associated with the Complainant. In this Panel’s view, such use and purpose of the disputed domain names without the authorization of the trade mark owner shows that the Respondent is not making a legitimate noncommercial or fair use of the disputed domain names or a bona fide offering of goods and services.”).
For the above reasons, the Respondent has no rights or legitimate interests in the disputed domain name.
C. REGISTRATION AND USE IN BAD FAITH (ICANN Rule 3(b)(ix)(3) and ICANN Policy 4(a)(iii)):
Respondent registered the disputed domain name in bad faith.
At the time Respondent registered the disputed domain name, Complainant’s POWERPOINT mark was well-known and famous. It is abundantly clear from Respondent’s former web site, which prominently featured Complainant’s PowerPoint Logo, that Respondent registered the disputed domain name with knowledge of Complainant’s rights, and intended to create an association with Complainant and its products and services. Respondent’s registration of the disputed domain name with knowledge of Complainant’s rights is evidence of bad faith registration and use with regard to Policy ¶4(a)(iii). See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (holding that “there is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively”); Microsoft Corp. v. Cedric Thompson, Case No. D2004-1097 (WIPO, April 14, 2005)(“It is thus inconceivable to the Panel that [Respondent] is not familiar with the Complainant’s ubiquitous MICROSOFT computer products or that his placement of that trademark in the disputed domain name is coincidental”); Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); Yahoo!, Inc. v. Ashby, D2000-0241 (WIPO June 14, 2000)(finding that the fame of the YAHOO! mark negated any plausible explanation for Respondent’s registration of the <yahooventures.com> domain name); and Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18, 2000)(finding that Respondent had actual and constructive knowledge of Complainant’s EXXON mark given the worldwide prominence of the mark and thus Respondent registered the name in bad faith).
Furthermore, by offering competing or unrelated services under a confusingly similar trade and domain name, Respondent has attempted to commercially benefit, unfairly and opportunistically, from the goodwill associated with Complainant’s famous POWERPOINT mark, and this conduct of diversion shows bad faith registration and use pursuant to Policy ¶4(b)(iv). V Secret Catalogue, Inc. v. Bryant Little, FA 301728 (Nat. Arb. Forum Sept. 2, 2004). See also Microsoft Corp. v. Jean Pierre Lafont a/k/a Yasir Yasir, FA1009001349611 (Nov. 9, 2009)(“intentional appropriation of Complainant’s mark to mislead Internet users and subsequently profit from them reveals bad faith registration and use under Policy ¶4(b)(iv)”). In addition, using Complainant’s well-known POWERPOINT trademark to sell competing training tools disrupted Complainant’s business and falls under Policy ¶4(b)(iii).
By incorporating Complainant’s well-known POWERPOINT mark in its domain and trade name, and prominently displaying Complainant’s PowerPoint Logo at its web site, Respondent created the false impression of a site originating with or sponsored by Complainant. “This is precisely the sort of conduct that falls under Policy ¶4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.” MetroPCS v. Robertson. See also Hunter Fan Co. v. MSS, FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the respondent used the disputed domain name to sell the complainant’s products without permission and mislead Internet users by implying that the respondent was affiliated with the complainant). See also Am. Online, Inc. v. Miles, FA 105890 (Nat. Arb. Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Furthermore, the sheer number of POWERPOINT-based domains registered by Respondent shows a pattern of bad faith domain name registration. Concurrent NAF Proceeding FA1108001401141, Microsoft Corp. v. Cursos Luis Bonilla S.L. aka Cursos Luis Bonilla S.L. c/o Luis Bonilla, involves ten POWERPOINT domains registered by Respondent, eight of which were filed on the same day. Until recently Respondent owned another nineteen domains containing POWERPOINT, all registered on the same day. Registering multiple infringing domain names within a short period of time is evidence of bad faith registration and use under Policy ¶4(b)(ii)). Microsoft Corp. v. August Communication, FA1106001394983 (Nat. Arb. Forum July 22, 2011). Furthermore, Respondent’s registration of a total of thirty domains containing Complainant’s trademark reflects a pattern of registering infringing domains. Microsoft Corp. v. Eliran Mishal, FA1101001370342 (Nat. Arb. Forum March 16, 2011)(registration of nine domain names incorporating Complainant’s mark is evidence of a pattern of bad faith registration and use under Policy ¶4(b)(ii)); and Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000) (finding that one instance of registration of several infringing domain names satisfies the burden imposed by the Policy ¶4(b)(ii)).
Based on the foregoing, Respondent has registered the disputed domain name in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant Microsoft Corporation is the owner of the POWERPOINT mark. Complainant uses this mark in connection with its presentation software, training tools and courses in the software. Complainant has registrations with the United States Patent and Trademark Office (“USPTO”) for the POWERPOINT mark (e.g., Reg. No. 1,475,795 registered February 9, 1988). Additionally, Complainant has multiple registrations for the POWERPOINT mark (e.g., Reg. No. 79657 registered February 25, 1998) in the European Union, where Respondent resides, with the Office for Harmonization in the Internal Market (“OHIM”).
Respondent SL, Cursos Luis Bonilla S.L. registered the <cursopowerpoint.com> domain name on September 10, 2008. The disputed domain name currently resolves to an inactive website. The disputed domain name previously resolved to Respondent’s commercial website promoting instructional services for a variety of topics, including both those which are competing and unrelated to Complainant.
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 argues it has rights in the POWERPOINT mark. Complainant has provided the panel with documentation of its registrations with the USPTO for the POWERPOINT mark (e.g., Reg. No. 1,475,795 registered February 9, 1988). Complainant has also provided the Panel with evidence of its registrations with the OHIM for the POWERPOINT mark (e.g., Reg. No. 79657 registered February 25, 1998). Therefore, the Panel finds Complainant has established its rights in the POWERPOINT mark pursuant to Policy ¶4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations); see also 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.”).
Complainant argues the <cursopowerpoint.com> domain name is confusingly similar to its POWERPOINT mark. Panels in the past have found the addition of a generic top-level domain (“gTLD”) and descriptive terms is insufficient to distinguish a domain name from the mark incorporated within it. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark); see also Sutton Group Fin. Servs. Ltd. v. Rodger, D2005-0126 (WIPO June 27, 2005) (finding that the domain name <suttonpromo.com> is confusingly similar to the SUTTON mark because the addition of descriptive or non-distinctive elements to the distinctive element in a domain name is immaterial to the analysis under Policy ¶4(a)(i)). Respondent fully-incorporated Complainant’s POWERPOINT mark in the disputed domain name. Respondent added the gTLD “.com” and the descriptive term “curso” (meaning “course”). Given Respondent’s failure to respond and the fact the additional word does not sufficiently distinguish it under the facts of this case, the Panel finds Respondent’s <cursopowerpoint.com> domain name is confusingly similar to Complainant’s POWERPOINT mark pursuant to Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant argues Respondent has neither rights nor legitimate interests in the <cursopowerpoint.com> domain name. The Panel finds Complainant has made a prima facie case in support of this claim. Therefore, the burden shifts to Respondent to prove to the Panel Complainant’s assertions are not true. 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 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.”). Respondent chose not to submit a response. Therefore, the Panel finds that it may infer the truth of Complainant’s arguments. 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.”); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“[Rule 14(b)] expressly provide[s] that the Panel ‘shall draw such inferences’ from the Respondent’s failure to comply with the rules ‘as it considers appropriate.”). Out of an abundance of caution, the Panel will review the record for some indication Respondent does have rights or legitimate interests in the disputed domain name.
Complainant contends Respondent is not commonly known by the disputed domain name. According to cases such as Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003), and Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006), the Panel ought to look to the WHOIS record for the <cursopowerpoint.com> domain name as well as any additional, pertinent information available. The WHOIS record for the disputed domain name lists “SL, Cursos Luis Bonilla S.L.” as the domain name registrant. The Panel finds the listing does not reflect the domain name or Complainant’s mark. Complainant claims Respondent is not affiliated in any way with Complainant, and Respondent is not authorized by Complainant to use the POWERPOINT mark. Accordingly, the Panel finds Respondent is not commonly known by the disputed domain name pursuant to Policy ¶4(c)(ii).
Complainant argues Respondent has not used the disputed domain name for a bona fide offering of goods or services nor a legitimate noncommercial or fair use. The <cursopowerpoint.com> domain name is apparently not in active use now. The <cursopowerpoint.com> domain name used to resolve to a commercial website which previously promoted Respondent’s instructional courses in a variety of topics, both related and unrelated to Complainant’s business. The Panel finds Respondent’s prior use of the disputed domain name was neither a bona fide offering of goods or services nor a legitimate noncommercial or fair use under Policy ¶¶4(c)(i) and 4(c)(iii). See The Vanderbilt Univ. v. U Inc., FA 893000 (Nat. Arb. Forum Feb. 19, 2007) (holding that the respondent did not have rights or legitimate interests in a domain name where it was redirecting Internet users to its own website promoting the respondent’s books unrelated to the complainant); see also Carey Int’l, Inc. v. Kogan, FA 486191 (Nat. Arb. Forum July 29, 2005) (holding that the respondent’s use of disputed domain names to market competing limousine services was not a bona fide offering of goods or services under Policy ¶4(c)(i), as the respondent was appropriating the complainant’s CAREY mark in order to profit from the mark).
Respondent’s <cursopowerpoint.com> domain name currently resolves to an inactive webpage. Panels traditionally hold the use of a disputed domain name to resolve to an inactive website is evidence of a lack of rights and legitimate interests in the domain name. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that the respondent’s non-use of the disputed domain names demonstrates that the respondent is not using the disputed domain names for a bona fide offering of goods or services under Policy ¶4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶4(c)(iii)). Therefore, the Panel finds Respondent’s current use of the disputed domain name is neither a Policy ¶4(c)(i) bona fide offering of goods or services nor a Policy ¶4(c)(iii) legitimate noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant contends Respondent’s registration and prior use of the disputed domain name disrupts its business enterprises. Panels have found in the past that disputed domain names were disruptive where the respondent had registered and was using them to resolve to websites offering competing goods. See also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding that the respondent registered the domain name in question to disrupt the business of the complainant, a competitor of the respondent). Respondent registered and previously used the <cursopowerpoint.com> domain name to resolve to its own website which offers both competing and noncompeting goods and services. Therefore, the Panel finds Respondent’s <cursopowerpoint.com> domain name was registered and used in a disruptive manner pursuant to Policy ¶4(b)(iii).
Complainant also contends Respondent’s registration and previous use of the disputed domain name was done to confuse Internet users into believing the domain name was associated with Complainant so they would make purchases, from which Respondent presumably garners income, of the services on Respondent’s website. The <cursopowerpoint.com> domain name is confusingly similar to Complainant’s POWEREPOINT mark. Once being diverted to Respondent’s website, Internet users used to be faced with products and services offered that are similar to those which Complainant offers. Therefore, the Panel finds the likelihood of confusion is unduly high and Respondent sought to profit from taking advantage of this confusion pursuant to Policy ¶4(b)(iv). See Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (finding that the respondent’s use of the <saflock.com> domain name to offer goods competing with the complainant’s illustrates the respondent’s bad faith registration and use of the domain name, evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv)); see also Nokia Corp. v. Private, D2000-1271 (WIPO Nov. 3, 2000) (finding bad faith registration and use pursuant to Policy ¶4(b)(iv) where the domain name resolved to a website that offered similar products as those sold under the complainant’s famous mark).
The <cursopowerpoint.com> domain name currently resolves to an inactive website. Past panels have found, in cases such as Caravan Club v. Mrgsale, FA 95314 (Nat. Arb. Forum Aug. 30, 2000), and Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000), that the registration and holding of an inactive website is grounds for a finding of bad faith. Thus, the Panel finds Respondent’s registration and use of the disputed domain name was done in bad faith under Policy ¶4(a)(iii) as evidenced by its maintaining of an inactive, infringing website.
It also appears Respondent has registered some thirty domain names containing Complainant’s mark. That certainly suggests a pattern or practice of infringing on Complainant’s mark. Respondent is clearly choosing to market itself that way.
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <cursopowerpoint.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: August 30, 2011
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page