Microsoft Corporation v. Amiri
Claim Number: FA1206001450119
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Amiri (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-iran.com>, registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com.
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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 22, 2012; the National Arbitration Forum received payment on June 22, 2012.
On June 24, 2012, Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the National Arbitration Forum that the <microsoft-iran.com> domain name is registered with Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the Directi Internet Solutions Pvt. Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On June 25, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 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@microsoft-iran.com. Also on June 25, 2012, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 24, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco 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
Complainant contends as follows:
Complainant has rights in the MICROSOFT mark and uses it in connection with software and other goods and services. Complainant is the owner of numerous registrations for the MICROSOFT mark throughout the world including but not limited to United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,200,236 registered July 6, 1982).
The <microsoft-iran.com> domain name is confusingly similar to the MICROSOFT mark.
Respondent is not commonly known by the <microsoft-iran.com> domain name.
Respondent has a Facebook page where it is promoting the <microsoft‑iran.com> website and provides a link to the disputed domain name.
Respondent registered and was using the <microsoft-iran.com> domain name in order to create an association with Complainant.
Respondent registered and began using the <microsoft-iran.com> domain name with knowledge of Complainant’s rights in the MICROSOFT mark.
The <microsoft-iran.com> domain name resolves to a website that contains an open source template for website management. The website also contains information related to products not manufactured by Microsoft.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complaint owns registered trademarks for MICROSOFT in the United States, and elsewhere throughout the world.
MICROSOFT is a famous trademark.
Respondent is not affiliated with Complainant and had not been authorized to use the MICROSOFT mark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired trademark rights in MICROSOFT.
The <microsoft‑iran.com> domain name resolves to a website that contains an open source template for website management from a competitor, promotes software, and contains information related to competing products.
Respondent has a Facebook page promoting the <microsoft-iran.com> website. There it represents itself as Microsoft and provides a link to the at‑issue domain name.
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.
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.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant uses the MICROSOFT mark in connection with software and related goods and services. Complainant owns trademark registrations for MICROSOFT with the USPTO as well as with numerous other registries worldwide. Complainant’s trademark registration with one or more recognized trademark authorities conclusively demonstrates Complainant’s rights in the MICROSOFT mark under Policy ¶ 4(a)(i). See Digi-Key Corp. v. Bei jing ju zhong cheng dian zi ji shu you xian gong si, FA 1213758 (Nat. Arb. Forum Oct. 1, 2008) (“The Panel finds these registrations [with the USPTO and SAIC] sufficiently establish Complainant’s rights in its DIGI-KEY mark pursuant to Policy ¶ 4(a)(i).”). The fact that Respondent may reside in a country other than where Complainant has registered MICROSOFT is immaterial. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence).
Respondent’s domain name is confusingly similar to Complainant’s MICROSOFT trademark. Respondent’s additions of a hyphen, the geographic term “iran,” and the generic top-level domain “.com” to form <microsoft-iran.com> fail to create any substantial difference between Complainant’s mark and the at‑issue domain name. See Hewlett-Packard Dev. Co. L.P. v. Reza Rasti, FA 1293423 (Nat. Arb. Forum Dec. 28, 2009) (finding <hp‑iran.com> and <compaq‑iran.com> confusingly similar to the HP and COMPAQ marks, noting that “the addition of a hyphen and a geographic term renders the disputed domain name confusingly similar to the mark”); see also, Dell, Inc. v. Mahmoud Dehghan, FA 870419 (Nat. Arb. Forum, Feb. 2, 2007) (finding the domain names <dell-iran.com> and <dell-iran.net> confusingly similar to the DELL trademark); see also Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy).
Respondent lacks rights and legitimate interests in respect of the <microsoft‑iran.com> domain name.
Under Policy ¶ 4(a)(ii) Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of the at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond, Complainant’s prima facie showing acts conclusively.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services, nor has Complainant otherwise authorized Respondent to use its MICROSOFT trademark. Furthermore, Respondent is identified in the at‑issue domain name’s WHOIS record as “Amiri.” These facts indicate that Respondent is not commonly known by the domain name pursuant to Policy ¶4(c)(ii). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Additionally, Respondent’s use of the disputed domain name does not give Respondent rights or legitimate interests in respect of the at‑issue domain name. The <microsoft-iran.com> domain name references a website that has promoted the services of a competitor of Complainant’s in the software industry. The website’s homepage erroneously shows it to be related to Microsoft Group of Iran; the website is also referenced on Respondent’s Facebook page. This manner of use constitutes passing off, and is not a legitimate. Therefore, the Panel concludes that Respondent’s use of the <microsoft-iran.com> 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. See Microsoft Corp. v. lijiuliang, FA 1300266 (Nat. Arb. Forum Feb. 11, 2010) (“Respondent’s attempt to pass itself off as Complainant by imitating Complainant’s official website … 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)”); see also Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”).
In light of Complainant’s uncontroverted evidence, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
Respondent registered and uses the at-issue domain names in bad faith.
Respondent registered a domain name that is confusingly similar to Complainant’s trademark and has used that domain name to promote the services of a competitor. Respondent’s use of the at-issue domain name creates confusion regarding the source and sponsorship of the <microsoft-iran.com> domain name and that of the referenced website. The confusion is augmented by the fact that content on Respondent’s <microsoft‑iran.com> website falsely implies that Complainant is trading in Iran contrary to the U.S. embargo. Use of the domain name in this manner demonstrates that Respondent registered and is using <microsoft-iran.com> in order to attract Internet users and take commercial advantage of their mistakes pursuant to Policy ¶ 4(b)(iv). See Dell, Inc. v. Mahmoud Dehghan, supra., (finding that customers might believe that Dell was affiliated with Respondent in connection with the domain name <dell-iran.com> in spite of the U.S. embargo on Iran); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”). Importantly, the false inference likely to be made by visitors to Respondent’s website that Complainant is doing business in Iran and thereby violating United States law, disparages and tarnishes Complainant’s famous trademark and further shows that Respondent registered and uses the at‑issue domain name in bad faith under Policy ¶4(a)(iii).
Finally, Respondent’s bad faith registration and use of the at‑issue domain name is also demonstrated by the fact that Respondent had knowledge of Complainant’s rights in the MICROSOFT mark before it registered the <microsoft‑iran.com> domain name. The famous MICROSOFT mark is known to countless consumers worldwide. Moreover, Respondent purports to be affiliated with Complainant on Respondent’s Facebook page as well as on the <microsoft‑iran.com> website. These circumstances make it crystal clear that Respondent had actual knowledge of Complainant and its trademark rights in MICROSOFT when it registered <microsoft-iran.com>. See Microsoft Corporation v. Lang Qing, FA1447828 (Nat Arb Forum July 8, 2012) ( finding that the MICROSOFT mark is so renowned that “it is near impossible to imagine anyone using the Internet, such as Respondent, being unaware of Complainant and its famous trademark.”); see also Radio & Records, Inc. v. Nat'l Voiceover, FA 665235 (Nat. Arb. Forum May 9, 2006) (finding that there are reasonable grounds to infer that Respondent had actual notice of Complainant's rights in the mark, and therefore registered the disputed domain name in bad faith, since Complainant's magazine covers an industry towards which Respondent's services are marketed).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoft-iran.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 26, 2012
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