Microsoft Corporation v. dehghanibros / milad dehghani
Claim Number: FA1206001450188
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is dehghanibros / milad dehghani (“Respondent”), Iran.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain names at issue are <microsoftiran.com> and <msnfarsi.com>, registered with Directi Internet Solutions PVT. LTD. d/b/a Publicdomain-registry.com.
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 June 22, 2012; the National Arbitration Forum received payment on June 22, 2012.
On June 27, 2012, Directi Internet Solutions PVT. LTD. d/b/a Publicdomain-registry.com. confirmed by e-mail to the National Arbitration Forum that the <microsoftiran.com> and <msnfarsi.com> domain names are registered with Directi Internet Solutions PVT. LTD. d/b/a Publicdomainregistry.com. and that Respondent is the current registrant of the names. 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 Publicdomainreg-istry.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 28, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 18, 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@microsoftiran.com and postmaster@msn-farsi.com. Also on June 28, 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.
A timely Response was received by the national Arbitration forum and determined to be complete on July 19, 2012.
On July 26, 2012, pursuant to Complainant's request to have the dispute decided 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant holds registrations, on file with the United States Patent and Trademark Office (“USPTO”), for the MICOSOFT trademark and service mark (including Reg. No. 1,200,236, registered July 6, 1982), which it uses in connection with the marketing of software and related goods and services.
Complainant is the owner of registrations, on file with the USPTO, for the MSN trademark (including Reg. No. 2,153,763, registered April 28, 1998), which it uses in connection with the marketing of an Internet search engine, as well as news, e-mail, instant messaging, and other services.
Respondent registered the <microsoftiran.com> domain name on June 10, 2012, and the <msnfarsi.com> domain name on June 16, 2012.
The <microsoftiran.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
The <msnfarsi.com> domain name is confusingly similar to the MSN mark.
Respondent has not been commonly known by either of the <microsoftiran.com> or <msnfarsi.com> domain names.
Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services and is not licensed by Complainant to use either of the MICROSOFT or MSN marks.
Respondent has no rights to or legitimate interests in either of the disputed domain names.
The <microsoftiran.com> and <msnfarsi.com> domain names resolve to websites that display Complainant’s marks and content similar to that carried on Complainant’s official websites, in an attempt by Respondent to pass itself off as Complainant.
Respondent registered and uses the <microsoftiran.com> and <msnfarsi.com> domain names in bad faith and with knowledge of Complainant’s rights in the MICROSOFT and MSN marks.
B. Respondent
The <microsoftiran.com> and <msnfarsi.com> domain names are used to inform people about topics that might interest them.
The <microsoftiran.com> and <msnfarsi.com> domain names were chosen be-cause Respondent believed that using a domain name incorporating well-known marks would increase its Internet traffic.
Respondent registered the domain names without knowing trademark law.
Respondent initially believed that the correspondence received from Complainant regarding this dispute was a prank, and so it did not respond to it.
(1) the domain names registered by Respondent are confusingly similar to trademarks and a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) the same domain name have been registered and are 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 can-celled 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.
Complainant has rights in the MICROSOFT and MSN marks under Policy ¶ 4(a)(i) by virtue of its registration of the marks with a national trademark authority, the USPTO. See Thermo Electron Corp. v. Xu, FA 713851 (Nat. Arb. Forum July 12, 2006) (finding that a complainant had established rights in marks where the marks were registered with a national trademark authority).
This is true without regard to whether Complainant’s rights in its marks arise from registration of the marks in a jurisdiction other than that in which Respondent re-sides or does business. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant, for purposes of the Policy, whether a complainant has registered its trademark in the country of a respond-ent’s residence).
Turning then to the central question under this head of the Policy, we conclude from our review of the record that the <microsoftiran.com> domain name is confusingly similar to the MICROSOFT mark under Policy ¶ 4(a)(i). The domain name contains Complainant’s entire mark, with the addition only of a geographic term and the generic top-level domain (“gTLD”) “.com.” These alterations of the mark, made in creating the disputed domain name, fail to distinguish the domain name from the mark under the standards of the Policy. See Ticketmaster Corp. v. Kumar, FA 744436 (Nat. Arb. Forum Aug. 17, 2006) (finding the domain name <indiaticketmaster.com> confusingly similar to a complainant’s TICKETMASTER mark); see also 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).
We likewise conclude that the <msnfarsi.com> domain name is confusingly similar to Complainant’s MSN mark under Policy ¶ 4(a)(i). As with the other domain name here under examination, the <msnfarsi.com> domain name contains Complainant’s entire MSN mark with the addition of a generic term and the generic top-level domain (“gTLD”) “.com.” 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 a complainant’s ICQ mark). And again, the addition of the gTLD “.com” does not avoid a finding of confusing similarity as between the domain name and the mark from which it was derived. See 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.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent 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 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 allegations of the Complaint filed in this proceeding, we are free to conclude that Respondent has no rights to or legitimate interests in either of the contested domain names. 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 Complaint, 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 either of the disputed domain names 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 either of the <microsoftiran.com> and <msnfarsi.com> domain names, that Respondent is not an authorized vendor, supplier or distributor of Complainant’s goods and services, and is not licensed by Complainant to use the MICROSOFT or MSN marks. Moreover, the pertinent WHOIS records for the <microsoftiran.com> and <msnfarsi.com> domain names identify the domain name registrants only as “dehghanibros / milad dehghani,” which does not resemble either of the domain names. On this record, we conclude that Respondent has not been commonly known by either of the disputed domain names so as to have acquired rights to or legitimate inter-ests in either of them within the contemplation of Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating that the fact that “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” is a factor in determining that Policy ¶ 4(c)(ii) does not apply).
We next observe that Complainant asserts, without objection from Respondent, that Respondent’s use of the <microsoftiran.com> and <msnfarsi.com> domain names evidences Respondent’s lack of rights to and legitimate interests in either of the domain names in that they resolve to websites prominently featuring Com-plainant’s MICROSOFT and MSN marks and related content, such as news post-ings, while appearing to be operated by or affiliated with Complainant. This effort by Respondent to pass itself off as Complainant, presumably for its own financial gain, 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, for ex-ample, Mortgage Research Ctr. LLC v. Miranda, FA 993017 (Nat. Arb. Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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 Panel therefore finds that Complainant has satisfied Policy ¶ 4(a)(ii).
We are persuaded from the evidence presented that Respondent registered and uses the contested <microsoftiran.com> and <msnfarsi.com> domain names in bad faith under Policy ¶ 4(b)(iv), in that Respondent employs the domain names misleadingly to pass itself off as being affiliated with Complainant, for Respond-ent’s presumed financial gain, by displaying on its resolving websites Complain-ant’s marks and content similar to that found on Complainant’s official websites. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding, under Policy ¶ 4(b)(iv), bad faith registration and use of a domain name which was confusingly similar to the mark of another, where a respondent was diverting Internet users searching for a complainant’s website to its own website, likely profiting in the process).
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 <microsoftiran.com> and <msnfarsi.com> domain names be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: August 7, 2012
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