Microsoft Corporation v. Yunus Emre Talay / Hosting Tc
Claim Number: FA1304001496212
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Yunus Emre Talay / Hosting Tc (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsofttranslation.com>, registered with ONLINENIC, INC.
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.
Hon. Karl V. Fink (Ret.), as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 24, 2013; the National Arbitration Forum received payment on April 24, 2013.
On April 26, 2013, ONLINENIC, INC. confirmed by e-mail to the National Arbitration Forum that the <microsofttranslation.com> domain name is registered with ONLINENIC, INC. and that Respondent is the current registrant of the name. ONLINENIC, INC. has verified that Respondent is bound by the ONLINENIC, INC. 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 April 29, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 20, 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@microsofttranslation.com. Also on April 29, 2013, 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 May 30, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Karl V. Fink (Ret.), 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
a) Complainant contends it has rights in the MICROSOFT trademark used in connection with software and other goods and services. Complainant has hundreds of trademark registrations throughout the world for the MICROSOFT trademark, including more than twenty-five with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 registered July 6, 1982). Additionally, Complainant owns a trademark registration for the MICROSOFT mark with the Turkish Patent Institute (“TPI”) (Reg. No. 156,935 registered Oct. 24, 1994) and with Albania’s General Directorate of Patents and Trademarks (Reg. No. 5,464 registered July 12, 1993).
b) Complainant was founded in 1975 and has continuously used its MICROSOFT mark since that time. Complainant is currently recognized as one of the most valuable brands in the world, and claims international fame in the mark.
c) The disputed domain name is confusingly similar to Complainant’s mark. Respondent’s <microsofttranslation.com> domain name incorporates Complainant’s famous MICROSOFT mark in its entirety while adding the descriptive term “translation” and the generic top-level domain “.com.” The addition of these elements does not distinguish the disputed domain name from Complainant’s mark.
d) Respondent does not own any rights or have any legitimate interests in the <microsofttranslation.com> domain name.
a. Respondent is not commonly known by Complainant’s MICROSOFT mark, nor is Respondent authorized by Complainant to use Complainant’s mark. Complainant notes that the WHOIS identifies the domain name’s registrant as “Yunus Emre Talay/Hosting Tc.”
b. Respondent has not used the disputed domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use.
i. Complainant alleges that Respondent is attempting to pass itself off as Complainant by making the disputed domain name look similar to Complainant’s “Bing Translator” page, which was previously known as <microsoftranslator.com>. Complainant’s <microsoftranslator.com> page now redirects Internet users to the “Bing Translator” page.
ii. The disputed domain name prominently displays the MICROSOFT mark and utilizes an interface that emulates Complainant’s translation services. Further, the disputed domain name contains a copyright notice with Complainant’s MISCROSOFT mark in it as well as the phrase “Powered by Microsoft.”
e) Respondent registered the disputed domain name in bad faith.
a. Respondent’s use of Complainant’s mark disrupts Complainant’s business by diverting Internet users to Respondent’s website believing it to be related to Complainant’s business. The disruption comes in the form of Respondent’s attempt to pass itself off as Complainant, which is evidence of bad faith use and registration.
b. Complainant contends that Respondent was familiar with Complainant’s famous mark, and Respondent’s attempt to pass itself off as Complainant is evidence of Respondent’s intent to use and register Complainant’s MICROSOFT mark in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
For reasons set forth below, the Panel finds Complainant is entitled to the relief requested.
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 contends it has rights in the MICROSOFT trademark used in connection with software and other goods and services. Complainant makes the assertion that it owns hundreds of trademark registrations throughout the world for the MICROSOFT trademark, including more than twenty-five with the USPTO (e.g., Reg. No. 1,200,236 registered July 6, 1982). Additionally, Complainant owns a trademark registration for the MICROSOFT mark with the TPI (Reg. No. 156,935 registered Oct. 24, 1994) and with Albania’s General Directorate of Patents and Trademarks (Reg. No. 5,464 registered July 12, 1993). Therefore, the Panel finds that Complainant has rights in the MICROSOFT mark under Policy ¶ 4(a)(i). See Miller Brewing Co. v. Miller Family, FA 104177 (Nat. Arb. Forum Apr. 15, 2002) (finding that the complainant had established rights to the MILLER TIME mark through its federal trademark registrations).
Complainant next alleges that the disputed domain name is confusingly similar to Complainant’s mark. Complainant argues that Respondent <microsofttranslation.com> domain name contains Complainant’s mark in its entirety, along with the descriptive term “translation” and the gTLD “.com” and that the addition of these elements does not distinguish the disputed domain name. First, the Panel finds that the addition of a descriptive term does not negate a finding of confusing similarity. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)). Next, the Panel finds that the addition of a gTLD is irrelevant to Policy ¶ 4(a)(i)) analysis. See 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). Therefore, the Panel finds that Respondent’s <microsofttranslation.com> domain name is confusingly similar to Complainant’s MICROSOFT mark under Policy ¶ 4(a)(i).
Complainant has proven this element.
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 does not own any rights or have any legitimate interest in the <microsofttranslation.com> domain name. Complainant points to the WHOIS information, which identifies “Yunus Emre Talay/Hosting Tc” as the registrant of the disputed domain name. The Panel inTercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) held that the WHOIS record is often determinative of whether a respondent is known by a domain name. Therefore, the Panel finds that the Respondent is not commonly known by the <microsofttranslation.com> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <microsofttranslation.com> domain name. Complainant alleges that Respondent is attempting to pass itself off as Complainant by creating a resolving website that looks similar to Complainant’s “Bing Translator” page, which was previously known as <microsoftranslator.com>. Complainant points to Respondent’s use of Complainant’s mark and the presence of a copyright notice using Complainant’s MICROSOFT mark as well the phrase “Powered by Microsoft” at the resolving website as evidence of Respondent’s lack of rights or legitimate interests in the domain name. Panels have found that a respondent attempting to pass itself off as a complainant is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Crow v. LOVEARTH.net, FA 203208 (Nat. Arb. Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Therefore, the Panel finds that Respondent’s use of the <microsofttranslation.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.
Complainant has proven this element.
Complainant sets forth the allegation that Respondent disrupts Complainant’s business by giving a false and misleading impression of having an association with Complainant, which provides evidence of Respondent’s bad faith. Complainant asserts that Internet users visit Complainant’s website under the mistaken belief that it belongs to Complainant because it offers translation services under the MICROSOFT mark. The Panel notes that Complainant does not specifically allege that Respondent competes with Complainant’s business; however, the Panel infers that the likeness between Complainant’s and Respondent’s websites results in a competitive relationship between the parties. The Panel finds that by hosting a website that appears substantially similar to Complainant’s website, and offering substantially similar services thereon, Respondent demonstrates registration and use in bad faith 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 contends that Respondent’s attempt to pass itself off as Complainant disrupts Complainant’s business by diverting Internet users to Respondent’s website believing it to be related to Complainant’s business. Such conduct has been found by previous panels to be evidence of bad faith use and registration under Policy ¶ (4)(b)(iv). See Microsoft Corp. v. QUHO Publicidad, FA 1484290 (Nat. Arb. Forum, Mar. 28, 2013) (finding that Respondent’s use of <xboxmexico.com> which appeared like an official site disrupted Complainant’s business and was evidence of bad faith and further that Respondent’s attempt to pass itself off as Complainant evidenced bad faith use and registration under Policy ¶ 4(b)(iv)). Therefore, the Panel finds that Respondent’s attempt to pass itself off as Complainant, thereby disrupting Complainant’s business, amounts to bad faith use and registration under Policy ¶ 4(b)(iv).
Complainant alleges that Respondent must have known of Complainant's rights in the MICROSOFT mark prior to registration of the domain names because of the fame and recognition associated with Complainant’s mark, and Respondent’s attempt to pass itself off as Complainant demonstrates prior knowledge. The Panel concludes that Respondent had actual notice of Complainant's mark, as shown by its use of Complainant’s mark at the resolving website, and thus finds that Respondent registered 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).
Complainant has proven this element.
Complainant having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is ORDERED that the <microsofttranslation.com> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.), Panelist
Dated: June 6, 2013
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