Microsoft Corporation v. Brian Fisher
Claim Number: FA1203001436075
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Brian Fisher (“Respondent”), Arizona, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officelive365.com>, registered with Wild West Domains, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 23, 2012; the National Arbitration Forum received payment on March 23, 2012.
On March 23, 2012, Wild West Domains, Inc. confirmed by e-mail to the National Arbitration Forum that the <officelive365.com> domain name is registered with Wild West Domains, Inc. and that Respondent is the current registrant of the name. Wild West Domains, Inc. has verified that Respondent is bound by the Wild West Domains, 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 March 26, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@officelive365.com. Also on March 26, 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.
A timely Response was received and determined to be complete on April 16, 2012.
Complainant submitted an Additional Submission that was received and determined to be timely on April 16, 2011.
On April 23, 2012, pursuant to Complainant's request to have the dispute decid-ed by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant began using the MICROSOFT OFFICE mark as early as 1989 in connection with the marketing of its software for word processing, information management, presentations and other tasks.
In October of 2010, just prior to the registration of Respondent’s domain name <officelive365.com>, Complainant publicly announced its newest product, OFFICE 365, in a press release that also noted its upcoming launch of the <office365.com> domain name.
Complainant owns the <office365.com> domain name, by which it advertises its OFFICE 365 product throughout the world.
Complainant holds a registration for the OFFICE LIVE service mark, on file with the United States Patent and Trademark Office (Reg. No. 2,668,463, registered December 31, 2002).
Complainant has common law rights in the OFFICE 365 mark dating from October 19, 2010.
After Complainant’s announcement of its OFFICE 365 product, the product was made available for testing by thousands of organizations around the world.
Respondent’s <officelive365.com> domain name is confusingly similar to Com-plainant’s OFFICE LIVE and OFFICE 365 marks.
Respondent has not been commonly known by the disputed domain name.
Respondent is not affiliated with Complainant in any way.
Respondent is not licensed by Complainant to use any of its trademarks.
Respondent is not an authorized vendor, supplier or distributor of Complainant’s goods and services.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent uses the disputed domain name in connection with a website that appears, at first glance, to be a Complainant-sponsored website due to its use of Complainant’s marks and references to Complainant’s OFFICE 365 product.
Respondent uses the resolving website to distribute malware and may be attempting to collect information from unsuspecting Internet users who happen upon the malicious software offered there.
Respondent knew of Complainant’s OFFICE LIVE and OFFICE 365 marks at the time it registered the disputed domain name.
Respondent registered and uses the disputed domain name in bad faith to create confusion among Internet users and to perpetrate a fraud on the public.
B. Respondent
The <officelive365.com> domain name is not confusingly similar to Complain-ant’s OFFICE LIVE or OFFICE 365 marks.
The disputed domain name and resolving website do not claim to be Complain-ant or infringe on Complainant’s trademarks.
Respondent is using a catchy and descriptive domain name to build a Cloud-based business product, but the resolving website has never been officially launched and is still in the developmental stage.
There has never been any malware on the server on which the developmental site is being built.
Respondent is a legitimate, licensed, and experienced member of the technology community and is attempting to extend services into a specific market (cloud-based business solutions).
The disputed domain name was not registered for the purpose of selling, renting, or otherwise transferring it.
The disputed domain name was not intended to create an association with Com-plainant or its products or services or to disrupt Complainant’s business.
Respondent does not intend to create confusion among Internet users, or to in-fringe on Complainant’s marks, or to attempt to attract consumers to its resolving website for Respondent’s commercial gain.
Respondent would be willing to place an appropriate disclaimer on the resolving website after its official launch.
As a courtesy to Complainant, the developmental site has been taken offline until this issue is resolved.
C. Complainant’s Additional Submission
Respondent registered the disputed domain name less than 20 days after the public announcement of Complainant’s OFFICE 365 product in an effort to capitalize on the popularity and value of Complainant’s products and services.
Respondent’s resolving website was an active website at the time of filing of the Complaint in this proceeding, and that website contained a supposed customer testimonial about the OFFICE 365 product.
Upon being served with the Complaint in this proceeding, Respondent removed the existing content from its resolving website and redirected it to another site it owns which mentions “Partner Sites” that include OFFICE 365 and WINDOWS LIVE 365.
Respondent also holds a <windowslive365.com> domain name, of which Com-plainant was unaware until this Complaint was filed.
The <windowslive365.com> domain name, which is not a part of this proceed-ing, also references Complainant and its products and further exemplifies Re-spondent’s bad faith.
After initially redirecting the disputed domain name to another website owned by Respondent, Respondent later disabled the disputed domain name so that it now appears as unavailable and inactive.
Respondent’s actions in redirecting the disputed domain name to another busi-ness and then disabling it altogether also provide evidence that Respondent has used the disputed domain name in bad faith.
Respondent has attempted to attract consumers to its resolving website to bene-fit commercially from Complainant’s goodwill by employing that website to market Respondent’s own products and services.
(1) the domain name registered by Respondent is confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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."
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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed represent-ations 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 a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP 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 has rights in the OFFICE LIVE service mark under Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See Paisley Park Enters. v. Lawson, FA 384834 (Nat. Arb. Forum Feb. 1, 2005) (finding that a complainant had established rights in the PAISLEY PARK mark under Policy ¶ 4(a)(i) through registration of the mark with the USPTO); see also AOL LLC v. Interrante, FA 681239 (Nat. Arb. Forum May 23, 2006) (finding that where a complainant submitted evidence of its registration of a mark with the USPTO, “such evidence establishes complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”).
Complainant also relies upon common law rights in the OFFICE 365 mark, which, if adequately demonstrated, would make a trademark registration for that mark unnecessary in order to establish rights in the mark under the Policy. See SeekAmerica Networks Inc. v. Masood, D2000-0131 (WIPO Apr. 13, 2000) (finding that the Rules associated with the Policy do not require that a complainant's trademark or service mark be registered by a government authority or agency for common law rights in the mark to exist); see also Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark).
Complainant’s submissions in support of the Complaint show that the OFFICE 365 product was publicly announced as available for testing on October 19, 2010. The same submissions indicate that, promptly thereafter, testing of the OFFICE 365 product began in thousands of organizations around the world, and that Complainant simultaneously announced its intention to launch its website at the <office365.com> domain name to facilitate advertising its OFFICE 365 prod-uct. This is sufficient to establish secondary meaning underpinning common law rights in the OFFICE 365 mark under Policy ¶ 4(a)(i). See Enfinger Dev., Inc. v. Montgomery, FA 370918 (Nat. Arb. Forum Feb. 16, 2005) (finding that a com-plainant had common law rights in the McMULLEN COVE mark because that complainant provided sufficient evidence that the mark had acquired secondary meaning, including development plans, correspondence with government office-ials and newspaper articles featuring the mark).
Respondent’s <officelive365.com> domain name is confusingly similar to Com-plainant’s OFFICE LIVE and OFFICE 365 marks because it combines the two marks, while merely removing the spaces between the terms of the marks and adding the generic top-level domain (“gTLD”) “.com.” These alterations of the marks in creating the domain name do not avoid a finding of confusing similarity under Policy ¶ 4(a)(i). See Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) (finding that adding the suffixes "502" and "520" to the ICQ trademark of another in forming a contested domain name did not avoid confusing similarity); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding the <omnitel2000.com> domain name confusingly similar to the OMNITEL trademark); further see Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007) (finding that “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names. Therefore, the panel finds that the disputed domain name [<americangenerallifeinsurance.com>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”).
The Panel therefore finds that Respondent’s <officelive365.com> domain name is confusingly similar to Complainant’s OFFICE LIVE mark under Policy ¶ 4(a)(i).
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must first make out a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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.
Complainant has made a sufficient prima facie showing under this head of the Policy. Therefore, and because Respondent has failed to respond to the alle-gations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in the contested domain name. See BIC Deutschland GmbH & Co. KG v. Tweed, D2000-0418 (WIPO June 20, 2000), and Am. Online, Inc. v. AOL Int'l, D2000-0654 (WIPO Aug. 21, 2000), both holding that, where a respondent fails to respond to a UDRP Com-plaint, a panel may draw the inference that that respondent does not have rights to or legitimate interests in a disputed domain name. Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant alleges, and Respondent does not deny, that Respondent is not commonly known by the <officelive365.com> domain name, and that Respondent is not affiliated with Complainant in any way, is not licensed by Complainant to use Complainant’s marks, and is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. Moreover, the WHOIS information for the disputed domain name identifies the registrant only as “Brian Fisher,” which does not resemble the disputed domain name. On this record, we conclude that Respondent has not been commonly known by the <officelive365.com> domain name, and so has no rights to or legitimate interests in the domain name under Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. Domain-Works Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that a re-spondent was not commonly known by the domain name <thirteen.com>, and so had no rights to or legitimate interests in that domain name under Policy ¶ 4(c)(ii), based on all evidence in the record); see also Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that a respondent did not have rights in a domain name under Policy ¶ 4(c)(ii) where that respondent was not commonly known by that domain name).
We next observe that Complainant contends that, as of the date of the Complaint filed in this proceeding, Respondent was using the disputed domain name to operate a website that appeared at first glance to be sponsored by Complainant by reason of its use of Complainant’s marks and its references to the OFFICE LIVE 365 products, and, further, that the same website was actually used to distribute “malware” ( short for “malicious software,” generally defined as software intended to disrupt computer operations, gather sensitive information from Internet users or gain unauthorized access to the computer systems of others), by which Respondent may be attempting to collect personal information from un-suspecting Internet users. Respondent denies these assertions, but its denial is unconvincing in light of the evidence of record. Respondent’s use of the resolving website is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of the domain name under Policy ¶ 4(c)(iii). Respondent protests that the resolving website has not yet been launched and is still under development. This is unavailing where the website has been made accessible to the public. See Dell Inc. v. Grilth, FA 1400620 (Nat. Arb. Forum Sept. 1, 2011) (finding that a respondent was not engaging in a bona fide offering of goods or services or a legitimate noncommercial or fair use of a domain name where a resolving website offers malware and malicious downloads and may be attempting to collect private Internet user information); see also Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that a respondent was not using domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use because that respondent used the domain names to divert Internet users to a website that offered services competing with those offered by a complainant under its marks).
The Panel thus finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent has used the <officelive365.com> domain name to operate a web-site that appeared to be associated with Complainant due to its use of Complain-ant’s marks and its references to the OFFICE LIVE 365 product. Respondent has plainly intended to trade upon the goodwill in Complainant’s mark to drive traffic to its own website for its own commercial benefit. That Respondent has done this in order to operate a platform for the delivery of malware, as alleged in the Complaint, is evidence of bad faith registration and use of the contested domain name under Policy ¶ 4(b)(iv). See Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Nat. Arb. Forum Aug. 21, 2000) (finding bad faith where a respondent directed Internet users seeking a complainant’s website to its own website for its commercial gain); see also Google Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum Sept. 23, 2010) (finding bad faith registration and use of a contested domain name under Policy ¶ 4(b)(iv) where the domain name resolved to a website that distributed malware).
It now appears that Respondent has recently disabled the disputed domain name so that the resolving website appears inactive. This post-Complaint change in Respondent’s employment of the domain name does not save Respondent from the implications of its initial bad faith behavior. See Telstra Corp. v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000):
[I]t is possible, in certain circumstances, for inactivity by the Respondent to amount to the domain name being used in
bad faith.
There remains, for example, the risk that Respondent will, as it has implicitly declared its intention to do, reinstate its former operations in competition with the business of Complainant if this Panel fails to act. The available evidence, and, in particular, the evidence that Respondent registered the disputed domain name within days of the announcement of the product upon which the domain name is based, persuades us that Respondent can, if permitted, be expected to continue to function in bad faith. See, for example, Sota v. Waldron, D2001-0351 (WIPO June 18, 2001) (finding that the respondent’s registration of the domain name <seveballesterostrophy.com> 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 respondent has to refute and which he has failed to do. The panel finds a negative inference from this.
Complainant’s evidence that Respondent has acquired another domain name, (<windowslive365.com>) that in a similar fashion incorporates another of Com-plainant’s marks, is likewise convincing on the point of Respondent’s continuing bad faith.
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <officelive365.com> domain name be forthwith TRANSFERRED from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 4, 2012
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