Microsoft Corporation v. Diego Maylin
Claim Number: FA1208001457509
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Diego Maylin (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <microsoftsurfacetablets.com>, <microsoftsurfacetablets.info>, <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, <microsoftgalaxytab.info>, <surfacetypecovers.com>, and <surfacetypecovers.info>, registered with GoDaddy.com, 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on August 9, 2012; the National Arbitration Forum received payment on August 9, 2012.
On August 13, 2012, GoDaddy.com, LLC confirmed by e-mail to the National Arbitration Forum that the <microsoftsurfacetablets.com>, <microsoftsurfacetablets.info>, <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, <microsoftgalaxytab.info>, <surfacetypecovers.com>, and <surfacetypecovers.info> 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 August 14, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of September 4, 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@microsoftsurfacetablets.com, postmaster@microsoftsurfacetablets.info, postmaster@microsoftsurfacetab.com, postmaster@microsoftsurfacetab.info, postmaster@microsoftsurfacert.com, postmaster@microsoftsurfacert.info, postmaster@microsoftgalaxytab.com, postmaster@microsoftgalaxytab.info, postmaster@surfacetypecovers.com, and postmaster@surfacetypecovers.info. Also on August 14, 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 September 10, 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 names be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant registered the MICROSOFT, SURFACE, and MICROSOFT SURFACE marks with the United States Patent and Trademark Office (USPTO) including, MICROSOFT (e.g., Reg. No. 1,200,236 registered July 6, 1982); SURFACE (Reg. No. 3,581,342 registered February 24, 2009); and MICROSOFT SURFACE (Reg. No. 3,561,874 registered January 13, 2009).
Respondent’s <microsoftsurfacetablets.com>, <microsoftsurfacetablets.info>, <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, and <microsoftsurfacert.info> domain names are confusingly similar to the MICROSOFT SURFACE mark.
Respondent’s <microsoftgalaxytab.com> and <microsoftgalaxytab.info> domain names are confusingly similar to the MICROSOFT mark.
Respondent’s <surfacetypecovers.com> and <surfacetypecovers.info> domain names are confusingly similar to the SURFACE mark.
Respondent does not have rights or legitimate interests in the disputed domain names.
Respondent, Diego Maylin, is not commonly known by the MICROSOFT, SURFACE, or MICROSOFT SURFACE marks, and Complainant has not licensed Respondent to use those marks.
Respondent’s <microsoftsurfacetablets.com> domain name resolves to a website stating: “SURFACE. This site is under construction.”
Respondent’s <microsoftsurfacetablets.info> domain name resolves to a website that states: “MY SITE – This is my site description.”
Respondent’s <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, <microsoftgalaxytab.info>, <surfacetypecovers.com>, and <surfacetypecovers.info> domain names are parked at either <godaddy.com> or <sedo.com> and display links to third-party websites.
Respondent has listed the <surfacetypecovers.com> and <surfacetypecovers.info> domain names for sale through <sedo.com>.
Respondent registered and is using the disputed domain name in bad faith.
Respondent has attempted to sell the <surfacetypecovers.com> and <surfacetypecovers.info> domain names through <sedo.com> which is evidence of bad faith.
Respondent’s use of the <microsoftsurfacetablets.com> domain name is to create the false impression that the website is sponsored by Complainant and is evidence of bad faith under Policy ¶ 4(b)(iv).
Respondent’s failure to make an active use of the <microsoftsurfacetablets.info> domain name is evidence of bad faith. Respondent’s parking of the remaining disputed domain names for commercial gain is also evidence of bad faith registration and use.
Respondent registered the disputed domain names opportunistically and with actual knowledge of Complainant’s rights in the marks.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns trademark registrations with the USPTO for MICROSOFT, SURFACE, and MICROSOFT SURFACE.
Respondent is not authorized to use Complainant’s trademarks in any capacity.
Respondent registered the at‑issue domain names between June 18 and June 19, 2012.
Respondent was familiar with both Complainant and Complainant’s MICROSOFT, SURFACE and MICROSOFT SURFACE trademarks at the time it registered the domain names.
Respondent’s <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, <microsoftgalaxytab.info>, <surfacetypecovers.com>, and <surfacetypecovers.info> domain names are parked at either <godaddy.com> or <sedo.com> and display links to third-party websites.
Respondent has listed the <surfacetypecovers.com> and <surfacetypecovers.info> domain names for sale through <sedo.com>.
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.”).
Each at-issue domain name is confusingly similar to one or more trademarks in which Complainant has rights.
Complainant owns USPTO trademark registrations for MICROSOFT, SURFACE, and MICROSOFT SURFACE. These registrations conclusively demonstrate Complainant’s rights in the aforementioned trademarks for the purposes of Policy ¶ 4(a)(i). See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO).
Six of the at‑issue domain names incorporate and combine the MICROSOFT and SURFACE trademarks in their entireties, adding only the terms “RT”, Tab” or “Tablets” along with the generic TLD, “.com” or “.info.” Two of the disputed domain names combine the MICROSOFT mark with the terms “Galaxy Tab” (which is a tablet device made by an unrelated entity, Samsung) along with the generic TLD “.com” or “.info”. The domain names <surfacetypecovers.com> and <surfacetypecovers.info> combine the SURFACE trademark with the term “type covers” which is a prominent and unique feature of Microsoft’s SURFACE® product.
These changes to Complainant’s trademarks are insufficient to distinguish any of Respondent’s at‑issue domain names from Complainant’s trademarks for the purposes of Policy ¶4(a)(i). See Microsoft Corp. v. a zhong GG Ltd, FA0912001297546 (Nat. Arb. Forum Jan 20, 2010)(combining MICROSOFT with the Microsoft product name ONEAPP did not distinguish the disputed domain name from MICROSOFT or ONEAPP); See Microsoft Corp. v. Duan Xiang Wang, FA0906001269201 (Nat. Arb. Forum August 11, 2009)(finding <microsoftranslator.com> confusingly similar to MICROSOFT and awarding transfer, where Complainant also offered a service under the name “Microsoft Translator”); see also Victoria's Secret Stores Brand Mgmt, Inc. v. Speedeenames.com, FA1005001325862 (Nat. Arb. Forum June 25, 2010)(finding that <secret-victorias.com> is confusingly similar to VICTORIA’S SECRET and noting “The Panel finds that reversing the order of the words in Complainant’s mark does not create a new domain name that is distinct from Complainant’s mark”); see also Abbott Labs v. Whois Svc. c/o Belize Domain WHOIS Svc., FA0903001254682 (Nat. Arb. Forum May 14, 2009)(“the addition of a gTLD is irrelevant in distinguishing a disputed domain name from a registered mark”). Therefore, the Panel concludes that each of the at‑issue domain names is confusingly similar to one or more of Complainant’s trademarks.
Respondent lacks either rights or legitimate interests in respect of each of the at‑issue domain names. Respondent is not authorized to use Complainant’s trademarks in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in any the at‑issue domain names.
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 an 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.
WHOIS information shows Respondent is Diego Maylin and there is no evidence in the record tending to prove that Respondent is commonly known by any of the at‑issue domain names. The Panel therefore concludes that under Policy ¶ 4(c)(ii) Respondent is not commonly known by any of the at‑issue domain names. See M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record).
Respondent’s <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, , and <microsoftgalaxytab.info> domain names are parked at either <godaddy.com> or <sedo.com>. Each of these domain names references a website and each referenced website displays links to third-party websites. Some of the linked third parties appear to be to companies offering competing products, while other seem be to unrelated businesses and products. Using the at‑issue domain names in this manner 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). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use).
Respondent’s <microsoftsurfacetablets.com> domain name resolves to a website stating: “SURFACE. This site is under construction.” The site also shows an image of what appears to be Complainant’s recently announced Surface® tablet device running either Microsoft’s RT or Windows 8 operating system. Respondent’s thereby uses the domain name with the intent of making the referenced website appear to be controlled by Complainant when it is not. The use constitutes passing off. This disruption to Complainant’s business in violation of the Policy constitutes neither a bona fide use nor a legitimate noncommercial or fair use of the domain name. 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)”)
Respondent’s <microsoftsurfacetablets.info> domain name resolves to a website that states: “MY SITE – This is my site description.” Respondent’s failure to make an active use of the <microsoftsurfacetablets.info> domain name is evidence that Respondent is not using the domain name for 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). See Broadcom Corp. v. Wirth, FA 102713 (Nat. Arb. Forum Jan. 11, 2002) (finding that the respondent’s use of the disputed domain name to display an “under construction” page did not constitute a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); 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)).
Additionally, Respondent has listed the <surfacetypecovers.com> and <surfacetypecovers.info> domain names for sale through <sedo.com> for $599.00 and $279.00, respectively. Respondent’s offer to sell these confusingly similar domain names domain names is yet more evidence that Respondent does not have rights or legitimate interests in the domain names under Policy ¶ 4(a)(ii). See Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“UDRP precedent is clear that auctioning domains does not constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of domains.”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain names pursuant to Policy ¶4(a)(ii).
Each at‑issue domain names was registered and is being used in bad faith. As discussed below, several of the Policy ¶4(b) enumerated bad faith circumstances are present and there is ample other evidence to conclude that Respondent acted in bad faith under Policy ¶4(a)(ii) regarding each of the at‑issue domain names.
As mentioned above, Respondent has attempted to sell the <surfacetypecovers.com> and <surfacetypecovers.info> domain names through <sedo.com>. Respondent’s attempt to sell the these domain names for $599.00 and $279.00 respectively, demonstrates that Respondent registered and is using each domain name in bad faith pursuant to Policy ¶ 4(b)(i). See Am. Online, Inc. v. Avrasya Yayincilik Danismanlik Ltd., FA 93679 (Nat. Arb. Forum Mar. 16, 2000) (finding bad faith where the respondent offered domain names for sale).
Respondent uses the <microsoftsurfacetablets.com> domain name to create the false impression that its referenced website is sponsored by Complainant. The website’s homepage displays an image of what appear to be Complainant’s newly announced proprietary Surface® device running either Complainant’s RT or Windows 8 OS. There is also a note that the site is “under construction.” Using a domain name in this manner evidences bad faith under Policy ¶ 4(a)(iii) even though there is no showing that the domain name is being used commercially, and even though such use does not fall within the express scope of Policy 4(b)(iv). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“[T]he examples [of bad faith] in Paragraph 4(b) are intended to be illustrative, rather than exclusive.”). Respondent’s failure to make an active use of the <microsoftsurfacetablets.info> domain name is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (concluding that the respondent’s failure to make active use of its domain name in the three months after its registration indicated that the respondent registered the disputed domain name in bad faith).
Respondent’s parking of the remaining <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, <microsoftgalaxytab.info>, <surfacetypecovers.com>, and <surfacetypecovers.info> domain names for commercial gain shows each of these domain names be registered and used in bad faith. As noted above, Complainant claims that Respondent resolves each of the aforementioned disputed domain names to either <godaddy.com> or <sedo.com> parking pages. These pages each contain various third-party links. The links are implemented so as to generate revenue for the relevant domain name’s registrant and registrar. Therefore, Respondent has attempted to commercially benefit, “unfairly and opportunistically, from the goodwill associated with Complainant’s famous trademarks . . .” and has registered and uses the domain names in bad faith registration under Policy ¶ 4(b)(iv). 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).”). Additionally, with regard to <surfacetypecovers.com> and <surfacetypecovers.info> Respondent has done little more with the disputed domain names other than to acquire them and display them for sale. Acquiring a confusingly similar domain name for the purpose of selling it supports a finding of bad faith registration and use under Policy ¶ 4 (b)(i). See 3M Company v. Ravindra Bala, FA 1303167 (Nat. Arb. Forum, Feb. 23, 2010)(finding that the acquisition of domain names for the purpose of selling them supports a finding of bad faith registration and use); see also AOL, LLC v. Ravindra Bala, FA 1224757 (Nat. Arb. Forum, Oct. 30, 2008)(finding that the Respondent’s failure to use the domain names other than to offer them for sale supports an inference of bad faith registration and use under the Policy); see also Microsoft Corporation v. S.H., Inc. FA 1284612 (Nat. Arb. Forum, November 3, 2009) (finding that the use of the domain name <msvirus.com> to resolve to a page where the domain is listed for sale supports a finding of bad faith registration and use under the Policy).
Finally, the notoriety of Complainant’s trademarks and the manner in which the at‑issue domain names are used indicates that Respondent registered <microsoftsurfacetablets.com>, <microsoftsurfacetablets.info>, <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, <microsoftgalaxytab.info>, <surfacetypecovers.com>, and <surfacetypecovers.info> with actual knowledge of Complainant and Complainant’s rights in the relevant trademarks. Registering a domain name with knowledge of another’s rights in such domain name is further evidence of bad faith under Policy ¶ 4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name"). The Panel additionally notes that Respondent registered the disputed domain names at, or about, the same time as Complainant’s announced its Surface® tablets. The conjunction of Complainant’s announcement and Respondent’s registration of multiple domain names containing Complainant’s marks shows opportunistic bad faith registration and use under Policy ¶ 4(a)(iii). 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 <microsoftsurfacetablets.com>, <microsoftsurfacetablets.info>, <microsoftsurfacetab.com>, <microsoftsurfacetab.info>, <microsoftsurfacert.com>, <microsoftsurfacert.info>, <microsoftgalaxytab.com>, <microsoftgalaxytab.info>, <surfacetypecovers.com>, and <surfacetypecovers.info> domain names be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: September 12, 2012
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