Microsoft Corporation v. Fundacion Private Whois / Domain Administrator
Claim Number: FA1209001462731
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Fundacion Private Whois / Domain Administrator (“Respondent”), Panama.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <techmicrosoft.com>, registered with INTERNET.BS CORP.
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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 14, 2012; the National Arbitration Forum received payment on September 14, 2012.
On September 17, 2012, INTERNET.BS CORP. confirmed by e-mail to the National Arbitration Forum that the <techmicrosoft.com> domain name is registered with INTERNET.BS CORP. and that Respondent is the current registrant of the name. INTERNET.BS CORP. has verified that Respondent is bound by the INTERNET.BS CORP. 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 September 18, 2012, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 9, 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@techmicrosoft.com. Also on September 18, 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 October 16, 2012, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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
i. Respondent, Fundacion Private Whois/Domain Administrator per the WHOIS information, is not commonly known by the disputed domain name and has not been licensed to use the MICROSOFT mark in any way.
ii. Respondent uses the disputed domain name to offer computer technical support services for monthly fees ranging from $10 to $159 for each computer. The use of a confusingly similar domain name to attract Internet users to Respondent’s commercial website in the same industry as Complainant 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).
i. Respondent’s registration and use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv). First, the use of the name “Techmicrosoft” implies a connection with Complainant, and Respondent’s statements on the resolving website that the services are provided by technicians from MICROSOFT creates greater confusion as to Complainant’s involvement with the website.
ii. Respondent had actual and constructive knowledge in the MICROSOFT mark, as the mark is well-known worldwide, and Respondent is offering computer services under the guise of being affiliated with Complainant, is evidence of bad faith registration and use under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
1. Complainant has rights in its MICROSOFT mark.
2. Respondent’s <techmicrosoft.com> domain name is confusingly similar to Complainant’s mark.
3. Respondent has no rights to or legitimate interests in the domain name.
4. Respondent registered and used the domain name 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:
(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.”).
Complainant states that it was founded in 1975, and has become a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant contends that it first used the MICROSOFT mark in 1975, and subsequently has registered the mark in jurisdictions around the world, including with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982) and the PIPO (e.g., Reg. No. 38,618 registered March 17, 1986). The Panel finds that Complainant has successfully established its rights in the MICROSOFT mark under Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (finding the complainant’s numerous registrations for its HONEYWELL mark throughout the world sufficient to establish the complainant’s rights in the mark under the Policy ¶ 4(a)(i)).
Further, Complainant argues that Respondent’s <techmicrosoft.com> domain name is confusingly similar to Complainant’s MICROSOFT mark, because the disputed domain name only adds a descriptive term “tech,” and the gTLD “.com.” The Panel notes that prior UDRP panels have held that a domain name is confusingly similar to a mark under Policy ¶ 4(a)(i) where the domain name contains the mark entirely and merely adds a term descriptive complainant’s products or service under the mark and a gTLD. See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005) (finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <duracellbatteries.com> from the complainant’s DURACELL mark). Therefore, the Panel finds that Respondent’s <techmicrosoft.com> domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).
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.”).
Complainant argues that Respondent, Fundacion Private Whois/Domain Administrator per the WHOIS information, is not commonly known by the disputed domain name and has not been licensed to use the MICROSOFT mark in any way. The Panel notes that Respondent has not countered this argument in a Response. Therefore, the Panel finds that the evidence on record indicates that Respondent is not commonly known by the disputed domain name under 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).
Complainant also contends that Respondent uses the disputed domain name to offer computer technical support services for monthly fees ranging from $10 to $159 for each computer. Complainant argues that Respondent’s use of a confusingly similar domain name to attract Internet users to Respondent’s commercial website in the same industry as Complainant 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). Complainant has supplied the Panel with several screenshots of Respondent’s resolving website that it claims to support its position. See Complainant’s Exhibit D. The Panel finds that Respondent’s competing commercial use of the disputed domain name 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 Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003) (finding that the respondent was not using the domain names for a bona fide offering of goods or services nor a legitimate noncommercial or fair use because the respondent used the names to divert Internet users to a website that offered services that competed with those offered by the complainant under its marks).
Complainant argues that Respondent’s registration and use of the disputed domain name is evidence of bad faith under Policy ¶ 4(b)(iv). Complainant asserts that Respondent’s use of the name “Techmicrosoft” implies a connection with Complainant, and Respondent’s statements on the resolving website that the services are provided by technicians from MICROSOFT creates greater confusion as to Complainant’s involvement with the website. The Panel notes that Complainant argued under Policy ¶ 4(a)(ii) that Respondent sells its technical support services for a monthly fee between $10 and $159 per computer. The Panel finds that Respondent has intentionally attempted to attract, for commercial gain, Internet users to Respondent’s website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website and services on Respondent’s website or location. The Panel find that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark).
Complainant also argues that Respondent had actual and constructive knowledge in the MICROSOFT mark, as the mark is well-known worldwide, and Respondent is offering computer services under the guise of being affiliated with Complainant, is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). The Panel declines to find bad faith based upon contentions relating to constructive knowledge as prior UDRP panels have determined that constructive knowledge is insufficient for such a finding. See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Nat. Arb. Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”). However, the Panel determines that Respondent had actual knowledge of Complainant’s rights in the MICROSOFT mark based upon Respondent’s use of the disputed domain name to offer competing services in the computer industry. The Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <techmicrosoft.com> domain name be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: October 30, 2012
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