Microsoft Corporation v. Growth Strategies Mktg. Inc.
Claim Number: FA1202001431194
Complainant is Microsoft Corporation (“Complainant”), represented by Kristina Rosette of Covington & Burling LLP, Washington, D.C., USA. Respondent is Growth Strategies Mktg. Inc. (“Respondent”), Virginia, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>, <w‑i‑n‑d‑o‑w‑s‑7.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com>, registered with GoDaddy.com, LLC.
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.
The Honourable Neil Anthony Brown QC as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on February 23, 2012; the National Arbitration Forum received payment on February 23, 2012.
On February 24, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>,<w-i-n-d-o-w-s-7.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, 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 February 27, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 19, 2012 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@buymicrosoft2010.com, postmaster@buynewmicrosoftoffice.com, postmaster@buyofficehomeandstudent.com, postmaster@microsoftoffice-2007.com, postmaster@microsoftoffice-2012.com, postmaster@w-i-n-d-o-w-s-7.com, postmaster@microsoftoffice-365.com, postmaster@microsoftoffice-download.com, postmaster@microsoftoffice2010formac.com, and postmaster@microsoftofficehomeandbusiness.com. Also on February 27, 2012, 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 March 29, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed The Honourable Neil Anthony Brown QC 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
Complainant makes the following contentions:
a) Complainant has rights in the MICROSOFT mark;
b) Complainant has rights in the MICROSOFT OFFICE mark;
c) Complainant has rights in the OFFICE XP mark;
d) Complainant has rights in the WINDOWS mark;
e) Complainant has registrations for the MICROSOFT mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 registered July 6, 1982);
f) Complainant has registrations for the MICROSOFT OFFICE mark through the USPTO (e.g., Reg. No., 3,625,391 registered May 26, 2009);
g) Complainant has registered the OFFICE XP mark through the USPTO (Reg. No. 2,940,644 registered April 12, 2005);
h) Complainant has registrations for the WINDOWS mark through the USPTO (e.g., Reg. No. 1,872,264 registered January 10, 1995);
i) Complainant uses its marks in connection with the manufacture, marketing, and sale of computer software and related products and services;
j) Respondent registered the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <microsoftofficehomeandbusiness.com>, <microsoftoffice2010formac.com>, and <buyofficehomeandstudent.com> domain names on September 16, 2010;
k) Respondent registered the <microsoftoffice-2007.com> and <microsoftoffice-download.com> domain names on July 28, 2010;
l) Respondent registered the <microsoftoffice-2012.com> domain name on June 29, 2010;
m) Respondent registered the <w-i-n-d-o-w-s-7.com> domain name on March 15, 2010;
n) Respondent registered the <microsoftoffice-365.com> domain name on July 8, 2011;
o) The <buymicrosoft2010.com> domain name is confusingly similar to Complainant’s MICROSOFT mark;
p) The <buynewmicrosoftoffice.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com> , <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names are confusingly similar to Complainant’s MICROSOFT OFFICE mark;
q) The <buyofficehomeandstudent.com> domain name is confusingly similar to Complainant’s OFFICE XP mark;
r) The <w-i-n-d-o-w-s-7.com> domain name is confusingly similar to Complainant’s WINDOWS mark;
s) Respondent has no rights or legitimate interests in the disputed domain names. In particular, Respondent is not commonly known by the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>,<w-i-n-d-o-w-s-7.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names;
t) The <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names resolve to a website offering downloads of Complainant’s products and services;
u) The <microsoftoffice-2012.com> and <microsoftoffice-365.com> domain names resolve to a website which displays advertisements for Complainant, Complainant’s competitors, and unrelated products and services;
v) The <w-i-n-d-o-w-s-7.com> domain name resolves to a website which offers numerous domain names for sale;
w) Respondent registered and has used the disputed domain names in bad faith. In particular, Respondent is targeting Complainant and attempting to prevent Complainant from reflecting its marks in domain names;
x) Respondent registered and is using the disputed domain names in order to take commercial advantage of Internet users’ confusion as to the source of the disputed domain names;
y) Respondent’s disclaimer at the bottom of each of the disputed domain names is insufficient to negate a finding of bad faith;
z) Respondent had actual knowledge of Complainant’s rights in its marks prior to the registration of the disputed domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant is a leading United States computer company and since 1975 it has manufactured, marketed, and sold computer software and related products and services.
2. Complainant has registrations for the MICROSOFT mark through the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 registered July 6, 1982).
3. Complainant has registrations for the MICROSOFT OFFICE mark through the USPTO (e.g., Reg. No., 3,625,391 registered May 26, 2009);
4. Complainant has registered the OFFICE XP mark through the USPTO (Reg. No. 2,940,644 registered April 12, 2005);
5. Complainant has registrations for the WINDOWS mark through the USPTO (e.g., Reg. No. 1,872,264 registered January 10, 1995);
6. Respondent registered the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <microsoftofficehomeandbusiness.com>, <microsoftoffice2010formac.com>, and <buyofficehomeandstudent.com> domain names on September 16, 2010;
7. Respondent registered the <microsoftoffice-2007.com> and <microsoftoffice-download.com> domain names on July 28, 2010;
8. Respondent registered the <microsoftoffice-2012.com> domain name on June 29, 2010;
9. Respondent registered the <w-i-n-d-o-w-s-7.com> domain name on March 15, 2010;
10. Respondent registered the <microsoftoffice-365.com> domain name on July 8, 2011;
11. The disputed domain names <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> resolve to a website offering downloads of Complainant’s products and services ; the <microsoftoffice-2012.com> and <microsoftoffice-365.com> domain names resolve to a website which displays advertisements for Complainant, Complainant’s competitors, and unrelated products and services; and the <w-i-n-d-o-w-s-7.com> domain name resolves to a website which offers numerous domain names for sale. The Panel finds by inference that Respondent profits in some way from the use of each of these disputed domain names.
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."
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.
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.”).
Complainant contends that it has rights in the MICROSOFT mark. Complainant asserts that it has multiple registrations for the MICROSOFT mark through the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982). Panels have previously held that registration of a mark with a federal trademark authority is sufficient evidence of rights in a mark. 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 Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (finding that the complainant’s federal trademark registrations for the CHEAPTICKETS and CHEAPTICKETS.COM marks were adequate to establish its rights in the mark pursuant to Policy ¶ 4(a)(i)). Therefore, the Panel finds that Complainant has rights in the MICROSOFT mark under Policy ¶ 4(a) (i).
Complainant asserts that it has rights in the MICROSOFT OFFICE mark. Complainant has provided the Panel with evidence of its registrations for the MICROSOFT OFFICE mark (e.g., Reg. No. 3,625,391 registered May 26, 2009) with the USPTO. The Panel finds that registration of a mark is evidence of rights in that mark. See Miller Brewing Co. v. Miller Family, supra; see also Trip Network Inc. v. Alviera, supra. Therefore, the Panel finds that Complainant has rights in the MICROSOFT OFFICE mark pursuant to Policy ¶ 4(a) (i).
Complainant claims that it has rights in the OFFICE XP mark. Through the USPTO, Complainant registered the OFFICE XP mark (Reg. No. 2,940,644 registered April 12, 2005). Therefore, the Panel finds that Complainant has rights in the OFFICE XP mark pursuant to Policy ¶ 4(a) (i). See Miller Brewing Co. v. Miller Family, supra; see also Trip Network Inc. v. Alviera, supra.
Complainant next alleges that it has rights in the WINDOWS mark. Complainant asserts that it has multiple USPTO registrations for the WINDOWS mark (e.g., Reg. No. 1,872,264 registered January 10, 1995). The Panel finds that Complainant, by virtue of its trademark registrations, has rights in the WINDOWS mark pursuant to Policy ¶ 4(a) (i). See Miller Brewing Co. v. Miller Family, supra; see also Trip Network Inc. v. Alviera, supra.
Complainant contends that the <buymicrosoft2010.com> domain name is confusingly similar to Complainant’s MICROSOFT mark. The Panel finds that Respondent’s addition of the generic term “buy” fails to distinguish the <buymicrosoft2010.com> domain name from the MICROSOFT mark, as it does no more than state that the MICROSOFT products of Complainant are available to be bought by the internet user. See Am. Online, Inc. v. Shanghaihangwei Packing Material Co. Ltd., D2001-0443 (WIPO May 22, 2001) (finding the <ouricq.com> domain name to be confusingly similar to the complainant’s ICQ mark); see also Westfield Corp. v. Hobbs, D2000-0227 (WIPO May 18, 2000) (finding the <westfieldshopping.com> domain name confusingly similar because the WESTFIELD mark was the dominant element). The Panel also finds that the addition of the number 2010 does not make the <buymicrosoft2010.com> domain name distinct from the MICROSOFT mark, as it does no more than state that the version of Complainant’s Microsoft products referable to the year 2010 are available to be bought by the internet user. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a) (i)); see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion). The Panel also holds that the addition of the generic top-level domain (“gTLD”) “.com” is irrelevant for a Policy ¶ 4(a) (i) determination. See 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); see also 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). The Panel therefore holds that Respondent’s <buymicrosoft2010.com> domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a) (i).
Complainant also contends that the <buynewmicrosoftoffice.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names are confusingly similar to Complainant’s MICROSOFT OFFICE mark. Respondent makes one or more of the following changes in each of these disputed domain names: the addition of one or more generic terms, the addition of a number, the addition of a hyphen, the deletion of spaces between words in the mark, and the addition of a gTLD. The Panel finds that Respondent’s addition of generic terms fails to distinguish the disputed domain names from the mark, as they do no more than state respectively that Complainant’s MICROSOFT OFFICE 2007, 2010 and 2012 products are available to be bought by internet users, that they may be bought new, that information may be obtained about them on 365 days of the year, that they may be downloaded, that they are compatible with Apple Mac computers and that they are available for use at home or in business, as the case may be. See Yahoo! Inc. v. Casino Yahoo, Inc., D2000-0660 (WIPO Aug. 24, 2000) (finding the domain name <casinoyahoo.com> is confusingly similar to the complainant’s mark); see also Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar). As part of the findings made, the Panel finds that the addition of numbers to the disputed domain name does not differentiate the disputed domain name from Complainant’s mark. See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark does little to reduce the potential for confusion); see also Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000) (finding that the domain name <hitachi2000.net> is confusingly similar to the complainant’s mark). The Panel also finds that the addition of a hyphen is not a substantial enough change to negate a finding of confusing similarity. See 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 Teleplace, Inc. v. De Oliveira, FA 95835 (Nat. Arb. Forum Dec. 4, 2000) (finding that the domain names <teleplace.org>, <tele-place.com>, and <theteleplace.com> are confusingly similar to the complainant’s TELEPLACE trademark). Finally, the Panel finds that Respondent’s deletion of spaces between words and addition of a gTLD is irrelevant to confusing similarity. See Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)); see also U.S. News & World Report, Inc. v. Zhongqi, FA 917070 (Nat. Arb. Forum Apr. 9, 2007) (“Elimination of punctuation and the space between the words of Complainant’s mark, as well as the addition of a gTLD does not sufficiently distinguish the disputed domain name from the mark pursuant to Policy ¶ 4(a)(i).”). The Panel therefore finds that the <buynewmicrosoftoffice.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names are confusingly similar to Complainant’s MICROSOFT OFFICE mark under Policy ¶ 4(a) (i).
Complainant alleges that the <buyofficehomeandstudent.com> domain name is confusingly similar to Complainant’s OFFICE XP mark. The Panel finds that OFFICE when used as a trademark and product name has become virtually synonymous with Complainant’s OFFICE XP mark and that Respondent’s addition of generic terms fails to make the <buyofficehomeandstudent.com> domain name distinct from Complainant’s mark, as they do no more than state that Complainant’s OFFICE XP products are available for sale and that they are suitable for use in the home and by students. See Quixtar Inv., Inc. v. Smithberger, D2000-0138 (WIPO Apr. 19, 2000) (finding that because the domain name <quixtar-sign-up.com> incorporates in its entirety the complainant’s distinctive mark, QUIXTAR, the domain name is confusingly similar); see also Magnum Piering, Inc. v. Mudjackers, D2000-1525 (WIPO Jan. 29, 2001) (finding that the generic term “INC” does not change the confusing similarity). The Panel finds also that Respondent’s deletion of “XP” from Complainant’s mark is insufficient to escape a negative Policy ¶ 4(a) (i) finding. See Granarolo S.p.A. v. Dinoia, FA 649854 (Nat. Arb. Forum Apr. 17, 2006) (finding that the <granarolo.com> domain name was confusingly similar to the complainant’s registered G GRANAROLO mark); see also CEC Entm’t, Inc. v. Peppler, FA 104208 (Nat. Arb. Forum Mar. 21, 2002) (finding that the <chuckcheese.com> domain name was confusingly similar to the complainant’s CHUCK E. CHEESE mark because the domain name only differed from the mark by one letter). The Panel lastly finds that the addition of a gTLD is irrelevant for the purposes of a confusing similarity determination. See 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); 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.”). Therefore, the Panel finds that the <buyofficehomeandstudent.com> domain name is confusingly similar to Complainant’s OFFICE XP mark under Policy ¶ 4(a) (i).
Complainant asserts that Respondent’s <w-i-n-d-o-w-s-7.com> domain name is confusingly similar to Complainant’s WINDOWS mark. Complainant contends that Respondent simply makes the following additions to Complainant’s mark in order to make the disputed domain name: hyphens, the number 7, and the gTLD “.com.” The Panel finds that Respondent’s addition of hyphens to the disputed domain name fails to make the <w-i-n-d-o-w-s-7.com> domain name distinct from the WINDOWS mark. See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)); see also Sports Auth. Mich. Inc. v. Batu 5, FA 176541 (Nat. Arb. Forum Sept. 23, 2003) (“The addition of a hyphen to Complainant's mark does not create a distinct characteristic capable of overcoming a Policy ¶ 4(a) (i) confusingly similar analysis.”). The Panel also finds that Respondent’s addition of the number 7 fails to distinguish the <w-i-n-d-o-w-s-7.com> domain name from the WINDOWS mark. See Am. Online, Inc. v. Oxford Univ., FA 104132 (Nat. Arb. Forum Mar. 19, 2002) (finding several domain names that added the numeral “7” or the term “seven” to the complainant’s AOL mark were confusingly similar to the mark under Policy ¶ 4(a)(i)); see also Am. Online, Inc. v. iDomainNames.com, FA 93766 (Nat. Arb. Forum Mar. 24, 2000) (finding that the respondent’s domain name <go2AOL.com> was confusingly similar to the complainant’s AOL mark). Finally, the Panel finds that the addition of a gTLD is irrelevant. See 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); see also 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.”). Therefore, the Panel finds that Respondent’s <w-i-n-d-o-w-s-7.com> domain name is confusingly similar to Complainant’s WINDOWS mark under Policy ¶ 4(a) (i).
With respect to each of the disputed domain names, Complainant has thus made out its case on the first of the three elements that it must establish.
It is now well established 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. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a) (ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”).
Applying that principle, the Panel finds that Complainant has made out a prima facie case as required. The prima facie case is based on the following considerations:
(a) Respondent has chosen for inclusion as part of each of the disputed domain names , the essence of one of Complainant’s trademarks, namely MICROSOFT, MICROSOFT OFFICE, OFFICE XP or WINDOWS , with only such variations as do not negate a finding of confusing similarity between the respective domain name and the relevant trademark, so that it is plain to the internet user that each of the domain names is referring to one of Complainant’s MICROSOFT, MICROSOFT OFFICE, OFFICE XP or WINDOWS products, adding only the generic Top Level Domain “.com”;
(b) Respondent has then linked the domain names to websites that give the false impression to internet users that they are official domain names of Complainant leading to official websites or websites sponsored or approved by Complainant.
(c) the use by Respondent of Complainant’s trademarks and the names of its products in the manner just described way has clearly been undertaken without the knowledge or approval of Complainant.
(d) Complainant also argues that Respondent is not commonly known by the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>, <w-i-n-d-o-w-s-7.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names. Complainant contends that Respondent is not licensed or otherwise authorized by Complainant to use Complainant’s marks and is in no way affiliated with Complainant. Additionally, the WHOIS record for the disputed domain names lists “Growth Strategies Mktg. Inc.” as the domain name registrant. Panels have previously held that a lack of authorization from complainant to use a mark and a WHOIS record not suggesting a nominal relationship indicates that a respondent is not commonly known by a disputed domain name. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c) (ii) does not apply); see also 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). Therefore, the Panel finds that Respondent is not commonly known by the disputed domain names pursuant to Policy ¶ 4(c) (ii).
(e) Complainant also argues that Respondent’s use of the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>, <w-i-n-d-o-w-s-7.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names does not give rise to conferring rights or legitimate interests in the disputed domain names on Respondent. Complainant asserts that Respondent uses the disputed domain names as follows: the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names resolve to a website offering downloads of Complainant’s products and services from which Respondent profits through a referral system; the <microsoftoffice-2012.com> and <microsoftoffice-365.com> domain names resolve to a website which displays advertisements for Complainant, Complainant’s competitors, and unrelated products and services; and the <w-i-n-d-o-w-s-7.com> domain name resolves to a website which offers numerous domain names for sale. The Panel accepts those submissions and the evidence in support of them and finds that Respondent’s use of each of the disputed domain names 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. See Caterpillar Inc. v. Huth, FA 169056 (Nat. Arb. Forum Sept. 2, 2003) (“Respondent lacks rights in the disputed domain names because Respondent competes with Complainant by selling Complainant's used parts without a license from Complainant to do so.”); see also TM Acquisition Corp. v. Sign Guards, FA 132439 (Nat. Arb. Forum Dec. 31, 2002) (finding that the respondent’s diversionary use of the complainant’s marks to send Internet users to a website which displayed a series of links, some of which linked to the complainant’s competitors, was not a bona fide offering of goods or services); see also 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).
Those matters go to prove the prima facie case against Respondent. As Respondent has not filed a Response or attempted by any other means to rebut the prima facie case against him, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name. Complainant has thus made out the second of the three elements that it must establish.
Complainant contends that Respondent registered and is using the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>, <w-i-n-d-o-w-s-7.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names in bad faith.
It is clear that to establish bad faith for the purposes of the Policy, Complainant must show that the disputed domain names were registered in bad faith and that they have also been used in bad faith. It is also clear that the criteria set out in Policy ¶ 4(b) for establishing bad faith are not exclusive, but that Complainants in UDRP proceedings may also rely on conduct that is bad faith within the generally accepted meaning of that expression.
Having regard to those principles, the Panel finds that the disputed domain names were registered and used in bad faith. That is so for the following reasons.
First, Complainant asserts that Respondent’s registration of ten domain names which infringe upon Complainant’s trademark rights clearly demonstrates that Respondent is attempting to prevent Complainant from reflecting its marks in domain names in a pattern of bad faith registration. Panels have found that the registration of multiple disputed domain names which all infringe on a single complainant’s marks is evidence of bad faith pattern of domain name registration attempting to prevent the complainant from registering its marks in domain names. See 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)); see also Albertson's, Inc. v. Bennett, FA 117013 (Nat. Arb. Forum Sept. 5, 2002) (finding bad faith registration and use pursuant to Policy ¶ 4(b) (ii) in the respondent’s registration of the <albertsonscoupons.com> and <albertsons-coupons.com> domain names because the respondent “registered the domain names in order to prevent Complainant from registering its common law ALBERTSON’S COUPON mark in a corresponding domain name”). Therefore, the Panel finds that Respondent, in bad faith, registered the disputed domain names in a bad faith pattern in order to prevent Complainant from reflecting its marks in the domain names pursuant to Policy ¶ 4(b) (i).
Complainant also argues that Respondent registered and is using the disputed domain names in order to cause confusion as to the source of the disputed domain names and then to take commercial advantage of Internet users’ mistakes regarding the source of the disputed domain names. Complainant asserts that the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain names resolve to a website offering downloads of Complainant’s products and services from which Respondent profits through a referral system; the <microsoftoffice-2012.com> and <microsoftoffice-365.com> domain names resolve to a website which displays advertisements for Complainant, Complainant’s competitors, and unrelated products and services; and the <w-i-n-d-o-w-s-7.com> domain name resolves to a website which offers numerous domain names for sale. The Panel infers that Respondent profits in some way from the use of each of these disputed domain names, either through the commercial sale of products or domain names or advertisement-related referral or pay-per-click fees. The Panel finds bad faith under Policy ¶ 4(b) (iv) as it finds that Respondent attempted to take commercial advantage of Internet users’ mistakes regarding the source of the disputed domain names due to confusion caused by Respondent. 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 Fossil Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (finding that the respondent acted in bad faith by registering the <fossilwatch.com> domain name and using it to sell various watch brands where the respondent was not authorized to sell the complainant’s goods); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb. Forum May 19, 2006) (holding that the respondent registered and used the <myspacebot.com> domain name in bad faith by diverting Internet users seeking the complainant’s website to its own website for commercial gain because the respondent likely profited from this diversion scheme).
Complainant contends that Respondent’s inclusion of a disclaimer on each of the disputed domain names does not prevent the Panel from finding bad faith. Complainant asserts that Respondent includes the following disclaimer on its disputed domain names: “Note: We are an independent referral company and not affiliated with Microsoft Corp. Microsoft and Microsoft Images are Trademarks of Microsoft.” Complainant claims, however, that this disclaimer is buried at the bottom of the disputed domain names’ resolving websites and the Panel agrees with this submission. Therefore, the Panel finds that Respondent registered and is using the disputed domain names in bad faith despite Respondent’s inclusion of a disclaimer. See Continental Airlines, Inc. v. Vartanian, FA 1106528 (Nat. Arb. Forum Dec. 26, 2007) (“Respondent’s use of a disclaimer does note mitigate a finding of bad faith under Policy ¶ 4(a) (iii)”); see also Auxilium Pharm., Inc. v. Patel, FA 642141 (Nat. Arb. Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a) (iii).”).
Complainant also asserts that, due to its extensive list of trademark registrations, Respondent must have had constructive knowledge of Complainant's rights in its marks when Respondent registered the disputed domain names. Complainant further argues that Respondent’s inclusion of a disclaimer stating that MICROSOFT and MICROSOFT IMAGES are trademarks owned by Complainant proves that Respondent had actual knowledge of Complainant and its rights. The Panel agrees with Complainant’s submission regarding Respondent's actual knowledge and concludes that Respondent registered the disputed domain names in bad faith according to Policy ¶ 4(a) (iii). See Immigration Equality v. Brent, FA 1103571 (Nat. Arb. Forum Jan. 11, 2008) ("That Respondent proceeded to register a domain name identical to, and with prior knowledge of Complainant's mark is sufficient to prove bad faith registration and use under Policy ¶ 4(a)(iii).").
In addition and having regard to the totality of the evidence, the Panel finds that Respondent registered and used the disputed domain names in bad faith within the generally accepted meaning of that expression.
Complainant has thus made out the third of the three elements that it must establish.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <buymicrosoft2010.com>, <buynewmicrosoftoffice.com>, <buyofficehomeandstudent.com>, <microsoftoffice-2007.com>, <microsoftoffice-2012.com>, <w-i-n-d-o-w-s-7.com>, <microsoftoffice-365.com>, <microsoftoffice-download.com>, <microsoftoffice2010formac.com>, and <microsoftofficehomeandbusiness.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honourable Neil Anthony Brown QC
Panelist
Dated: April 2, 2012
Click Here to return to the main Domain Decisions Page.
Click Here to return to our Home Page