Microsoft Corporation v. Unknown Registrant
Claim Number: FA1301001479484
Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Unknown Registrant (“Respondent”) who is not represented in this matter.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windowsserver2012.com>, registered with eName Technology Co.,Ltd.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Darryl C. Wilson, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on January 9, 2013; the National Arbitration Forum received payment on January 9, 2013. The Complaint was submitted in both Chinese and English.
On January 10, 2013, eName Technology Co.,Ltd. confirmed by e-mail to the National Arbitration Forum that the <windowsserver2012.com> domain name is registered with eName Technology Co.,Ltd. and that Respondent is the current registrant of the name. eName Technology Co.,Ltd. has verified that Respondent is bound by the eName Technology Co.,Ltd. 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 January 15, 2013, the Forum served the Complaint and all Annexes, including a Chinese language Written Notice of the Complaint, setting a deadline of February 4, 2013 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@windowsserver2012.com. Also on January 15, 2013, the Chinese language 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 and determined to be complete on January 31, 2013.
On February 8, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Darryl C. Wilson 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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant’s allegations:
Complainant’s business was founded in 1975 as a software, service, and solution provider for businesses. Complainant owns marks for its WINDOWS mark, which it has used since 1983, and its WINDOWS SERVER mark. Complainant owns the <windows.com> domain name, which was registered in 1995. Complainant has trademark registrations for its WINDOWS mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,264 registered January 10, 1995). See Complainant’s Exhibit C. Complainant also has a trademark registration for its WINDOWS SERVER mark with the USPTO (Reg. No. 3,056,149 registered January 31, 2006). See Complainant’s Exhibit E. Complainant also owns multiple trademark registrations in various countries throughout the world, including with Thailand’s Department of Intellectual Property (Reg. No. Kor 9,613 registered September 8, 1992), Monaco’s Intellectual Property Division (Reg. No. R97 18,510), and the Israeli Patent Office (Reg. No. 83,965 registered April 1, 1995). Complainant uses its WINDOWS and WINDOWS SERVER mark to provide a Windows operating platform for servers, and the most current version of that platform is Windows Server 2012.
Respondent registered the <windowsserver2012.com> domain name, which is confusingly similar to Complainant’s WINDOWS SERVER mark, and Respondent is not commonly known by the <windowsserver2012.com> domain name. Respondent fails to show it has rights or legitimate interests in the disputed domain name because it uses the domain name to host a website that promotes Apple’s OS X Server, which competes with Complainant’s products and such use does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Respondent registered the <windowsserver2012.com> domain name in bad faith, shown by its use of Complainant’s marks in the domain name and the fact that Respondent was aware of Complainant’s rights in the domain name at the time of registration. By promoting a competing product at the resolving website, Respondent further demonstrates its bad faith registration and use of the <windowsserver2012.com> domain name. Respondent disrupts Complainant’s business by competing with Complainant in its use of the disputed domain name.
B. Respondent’s allegations:
The unknown Respondent did not submit a Response.
[Redacted] was initially identified as Respondent in this matter and filed pleadings accordingly. [Redacted] asserted that it does not presently own or control the <windowsserver2012.com> domain name, nor has it ever owned or controlled the domain. The true registrant falsified the WHOIS record in order to obscure its true identity. [Redacted] contended that it had no basis to dispute the remainder of the allegations Complainant sets forth. [Redacted] requested the Panel modify the proceeding to reflect that [Redacted] has nothing to do with the disputed domain name and is inaccurately identified as the domain name’s owner.
Preliminary Issue #1: Request to Recaption Case Name
[Redacted] contends that it has been the victim of identity theft and that it has no part in registering or using the disputed domain names. [Redacted] asserts that the true registrant of the <windowsserver2012.com> domain name used [Redacted] as a way to hide its true identity. Both Complainant and [Redacted] have concluded that the registrant falsely identified [Redacted] as the domain name registrant in the WHOIS information in order to obscure his identity. Complainant and [Redacted] jointly requested that the Panel restyle the complaint to reflect that [Redacted] is not the owner of the disputed domain name.
The Panel finds that [Redacted] is a victim of identity theft and chooses to redact [Redacted] name from the decision to prevent any further victimization. See Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellzfargo.com>, FA 362108 (Nat. Arb. Forum Dec. 30, 2004) and Wells Fargo & Co. v. John Doe as Holder of Domain Name <wellsfargossl>, FA 453727 (Nat. Arb. Forum May 19, 2005), (the panels omitted the respondents’ personal information from the decisions in an attempt to protect the respondents who claimed to be victims of identity theft from becoming aligned with acts the actual registrants appeared to have sought to impute to the respondents.), See also Nat’l Westminster Bank plc v. [Redacted], FA 1028337 (Nat. Arb. Forum July 25, 2007). (According to Policy ¶ 4(j), “[a]ll decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.”). “Respondent” in the proceeding refers to the Unknown Registrant and not to [Redacted].
Preliminary Issue: Language of the Proceedings
The Panel notes that the Registration Agreement is written in Chinese, thereby making the language of the proceedings in Chinese. However, both the Complaint and [Redacted] response were submitted to the Panel in English. Pursuant to Rule 11(a), the Panel finds that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification. Because the parties submitted pleadings in English and have demonstrated an understanding of English, the Panel determines that the remainder of the proceedings may be conducted in English and elects to issue a decision accordingly.
Complainant is Microsoft Corporation who list its address as Redmond, WA, USA. Microsoft is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant was founded in 1975 and uses, and has registered, various well-known marks in conjunction with its business, including WINDOWS and WINDOWS SERVER. Complainant used, and domestically and internationally registered, the above marks long before the registration date for the disputed domain name.
Respondent is unknown. Respondent improperly appropriated [Redacted] for use in the WHOIS directory in order to hide its true identity. Respondent’s registrar information list its location as Xiamen Fujuan, China.
The Respondent registered the <windowsserver2012.com> domain name on December 7, 2010.
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.
Complainant alleges that it owns rights in the WINDOWS SERVER mark through its registration with the USPTO (Reg. No. 3,056,149 registered January 31, 2006). Complainant also states that it owns trademark registrations throughout the world and provides such evidence, including registrations with Thailand’s Department of Intellectual Property (Reg. No. Kor 9,613 registered September 8, 1992), Monaco’s Intellectual Property Division (Reg. No. R97 18,510), and the Israeli Patent Office (Reg. No. 83,965 registered April 1, 1995). In Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006), the panel stated that the complainant had established rights in its various marks through its trademark registrations with the USPTO. In Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004), the panel held that the complainant’s rights in its mark were shown by its various trademark registrations around the world. The Panel finds that Complainant’s USPTO trademark registration, as well as its numerous global trademark registrations, serve to demonstrate Complainant’s rights in the WINDOWS SERVER mark under Policy ¶ 4(a)(i).
Complainant alleges that the <windowsserver2012.com> domain name is confusingly similar to its WINDOWS SERVER mark, due to the use of the WINDOWS SERVER mark in its entirety in the trademark and the generic top-level domain (“gTLD”) “.com.” The Panel notes that the disputed domain name does not include the space that appears between the words of the mark, and the domain name includes the number “2012.” The Panel finds that the differences in the <windowsserver2012.com> domain name are not enough to overcome its confusing similarity to Complainant’s WINDOWS SERVER mark under Policy ¶ 4(a)(i). 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.”); see also Am. Online, Inc. v. Tullo, FA 150811 (Nat. Arb. Forum Apr. 15, 2003) (finding that the <3daol.com> domain name is confusingly similar to the complainant’s AOL mark because “…the addition of the prefix ‘3d’ does nothing to ‘distinguish’ Respondent’s domain name from Complainant’s registered trademarks.”).
Respondent makes no contentions with regards to Policy ¶ 4(a)(i).
The Complainant has proven this element.
The Panel recognizes that 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). The Complainant has met this burden.
Complainant alleges that Respondent is not commonly known by the <windowsserver2012.com> domain name, as the WHOIS information shows the registrant as “DNS Admin/[Redacted]” See Exhibit A. The panel in M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006), stated that the WHOIS record did not show that respondent was commonly known by the disputed domain name, and thus the respondent did not have rights or legitimate interests in the domain name. Furthermore the Complainant and [Redacted] agree that the name reflected in the WHOIS is inaccurate and improperly listed in an attempt to hide the true identity of the Respondent. The Panel finds that Respondent is not commonly known by the <windowsserver2012.com> domain name under Policy ¶ 4(c)(ii) due to the WHOIS information associated with the domain name.
Complainant argues that Respondent uses the <windowsserver2012.com> domain name to host a website that advertises Apple’s OS X Server, and claims that the product competes with Complainant’s products offered under the WINDOWS SERVER mark. The Panel finds that Respondent does not use the <windowsserver2012.com> domain name to make 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) because Respondent uses the domain name to maintain a website that offers another entity’s competing goods. See Coryn Group, Inc. v. Media Insight, FA 198959 (Nat. Arb. Forum Dec. 5, 2003), (the respondent did not use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use due to the respondent’s use of the domain names to lead Internet users to a website offing services in competition to those offered by the complainant.).
Respondent makes no contentions with regards to Policy ¶ 4(a)(ii).
Because the Respondent has not provided a response to this action the Respondent has failed to meet its burden regarding proof of any rights or legitimate interest in the disputed domain.
The Complainant has proven this element.
Complainant argues that Respondent’s bad faith registration and use is shown by its disruptive operation of the <windowsserver2012.com> domain name, which diverts consumers to a website that promotes a competitor’s products. Complainant alleges that Respondent’s promotion of Apples OS X server in competition with the Windows Server operating platform disrupts its business. The Panel finds that promoting a competing product at the resolving website is evidence of Respondent’s bad faith registration and use under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”).
Complainant alleges that Respondent’s use of the <windowsserver2012.com> domain name to feature products in competition with Complainant is motivated by Respondent’s attempt to make a commercial gain. Complainant argues that Respondent endeavors to unfairly benefit from its use of the disputed domain name by diverting Internet consumers to its website. The Panel finds that Respondent registered the <windowsserver2012.com> domain name in bad faith under Policy ¶ 4(b)(iv) by confusing consumers to attract them to the resolving website and thereby making a commercial profit. 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).
Respondent makes no contentions with regards to Policy ¶ 4(a)(iii).
The Complainant has proven this element.
Because the Complainant has established all three elements required under the ICANN Policy, the Panel concludes that Complainant’s requested relief shall be GRANTED.
Accordingly, it is Ordered that the <windowsserver2012.com> domain name be TRANSFERRED from Respondent to Complainant.
Darryl C. Wilson, Panelist
Dated: February 22, 2013
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