Microsoft Corporation v Admin
Claim Number: FA1306001504015
Complainant is Microsoft Corporation (“Complainant”), represented by Jared M. Barrett of Seed Intellectual Property Law Group PLLC, Washington, USA. Respondent is Admin (“Respondent”), Republic of Korea.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <windowazure.com>, <windowgame.com>, <windowsgame.com>, <windowphones.com>, <windowsnow.com>, <windowxp.com>, <window7.com>, <window7.net>, <window7xp.com>, <window8.com>, <window9.com>, <window10.com>, and <microsoftbazaar.com>, registered with Megazone Corp. d/b/a Hosting.kr; Hanilnetworks Co., Ltd.; Inames 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.
Bruce E. Meyerson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on June 7, 2013; the National Arbitration Forum received payment on June 12, 2013. The Complaint was submitted in both English and Korean.
On June 10, 2013, June 12, 2013, and June 13, 2013, Megazone Corp. through its d/b/a Hosting.kr, Hanilnetworks Co., Ltd., and Inames Co., Ltd. confirmed by e-mail to the National Arbitration Forum that the <windowazure.com>, <windowgame.com>, <windowsgame.com>, <windowphones.com>, <windowsnow.com>, <windowxp.com>, <window7.com>, <window7.net>, <window7xp.com>, <window8.com>, <window9.com>, <window10.com>, and <microsoftbazaar.com> domain names are registered with Megazone Corp. d/b/a Hosting.kr; Hanilnetworks Co., Ltd.; Inames Co., Ltd. and that Respondent is the current registrant of the names. Megazone Corp. dba Hosting.kr; Hanilnetworks Co., Ltd.; Inames Co., Ltd. has verified that Respondent is bound by the Megazone Corp. dba Hosting.kr; Hanilnetworks Co., Ltd.; Inames 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 June 24, 2013, the Forum served the Korean language Complaint and all Annexes, including a Korean language Written Notice of the Complaint, setting a deadline of July 15, 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@windowazure.com, postmaster@windowgame.com, postmaster@windowsgame.com, postmaster@windowphones.com, postmaster@windowsnow.com, postmaster@windowxp.com, postmaster@window7.com, postmaster@window7.net, postmaster@window7xp.com, postmaster@window8.com, postmaster@window9.com, postmaster@window10.com, postmaster@microsoftbazaar.com. Also on June 24, 2013, the Korean 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.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On July 17, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Bruce E. Meyerson 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.
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Korean language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
· Complainant is the owner of various marks used to provide computer software products and services. Complainant has registered these marks with the United States Patent & Trademark Office (“USPTO”) for the WINDOWS mark (Reg. No. 1,872,264 registered on Jan. 10, 1995); WINDOWS XP (Reg. No. 2,640,353 registered on Oct. 22, 2002); WINDOWS AZURE (Reg. No. 4,209,318 registered Mar. 26, 2013 (filed Oct. 31, 2008)); and MICROSOFT (Reg. No. 1,200,236 registered on July 6, 1982).
· Respondent registered domain names using all of the aforementioned marks, each of which makes a minor misspelling of one of the marks, and some of the domain names including generic terms or numbers.
· Respondent is known as “Admin” in the WHOIS information. Respondent is not known by any of the domain names in dispute, and has not otherwise been permitted to use Complainant’s marks in any way.
· Respondent uses all of the domain names to shuttle Internet users to websites that host hyperlink advertisements.
· Respondent uses <windowazure.com> to engage in a “phishing scheme,” whereby Internet users are presented with menus similar to those found on Complainant’s login screens, and when the user logs on, their information is given to Respondent, who can resell this personal information for cash.
· Respondent’s registration of these various domain names that infringe on Complainant’s marks evidences a pattern of bad faith registration.
· Respondent uses the disputed domain names to redirect Internet users to various hyperlink farms hosted for the benefit of Respondent. Respondent has allowed these hyperlinks to include advertisements of Complainant’s primary market competitors. Respondent is therefore attracting commercial gains through the likelihood that confused Internet users will associate these domain names with Complainant.
· Respondent’s phishing scam through the <windowazure.com> domain name is evidence of bad faith.
· Respondent had knowledge of Complainant’s rights in the various WINDOWS and MICROSOFT marks when registering the domain names.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant holds trademark rights for the WINDOWS, WINDOWS XP, WINDOWS AZURE and MICROSOFT marks. Respondent’s domain names are confusingly similar to Complainant’s WINDOWS, WINDOWS XP, WINDOWS AZURE and MICROSOFT marks. Complainant has established that Respondent lacks rights or legitimate interests in the use of the <windowazure.com>, <windowgame.com>, <windowsgame.com>, <windowphones.com>, <windowsnow.com>, <windowxp.com>, <window7.com>, <window7.net>, <window7xp.com>, <window8.com>, <window9.com>, <window10.com>, and <microsoftbazaar.com> domain names, and that Respondent registered and uses the domain names 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 claims that it is the owner of various marks used to provide computer software products and services. Complainant notes that it has registered these marks with the USPTO. See WINDOWS (Reg. No. 1,872,264 registered on Jan. 10, 1995); WINDOWS XP (Reg. No. 2,640,353 registered on Oct. 22, 2002); WINDOWS AZURE (Reg. No. 4,209,318 filed Oct. 31, 2008, registered Mar. 26, 2013); MICROSOFT (Reg. No. 1,200,236 registered on July 6, 1982). Complainant’s USPTO registrations are adequate proof of its rights in the marks, even when Respondent dwells in Korea. See W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010) (stating that “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”).
Complainant next argues that Respondent registered all of the disputed domain names. Complainant explains that each of the domain names incorporates a minor misspelling of one of Complainant’s marks, and some of the domain names include generic terms or numbers.
In all of the disputed domain names, the deletion of spacing from the original mark, and the affixation of a generic top-level domain (“gTLD”) such as “.com” or “.net.” is irrelevant. 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.”).
The Panel first considers the <windowazure.com> domain name in regards to the WINDOWS AZURE mark. This particular domain name features the removal of the letter “s” from the mark. The Panel agrees that there is confusing similarity under Policy ¶ 4(a)(i) between the domain name and the mark when Respondent merely deleted the letter “s” from Complainant’s mark. See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006) (“The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <privelage.com> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”).
The Panel next considers the <windowgame.com>, <windowsgame.com>, <windowphones.com>, <windowsnow.com>, <window7.com>, <window7.net>, <window8.com>, <window9.com>, and <window10.com> domain names in comparison to the WINDOWS mark. Respondent employs a variety of generic terms such as “game,” “games,” “phones,” and “now” in these domain names. Respondent also affixes numerals to some of the domain names, and removes the letter “s” from the <windowgame.com>, <windowphones.com>, <window7.com>, <window7.net>, <window8.com>, <window9.com>, and <window10.com> domain names. Affixing numerals to these domain names may enhance the confusing similarity of these domain names, as these numerals may in fact be considered descriptive terms because Complainant offers WINDOWS products which bear the entire WINDOWS mark followed by a number such as “95,” “98,” “2000,” “7,” or “8.” 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). The Panel also agrees that removing a letter from the end of a mark, and adding generic terms to the domain names do nothing to make the domain names less confusing similar to Complainant’s mark. 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)).
The Panel next considers the <windowxp.com> and <window7xp.com> domain names in light of Complainant’s WINDOWS XP mark. Both domain names feature the deletion of the “s” from the mark, and the <window7xp.com> domain name includes the numeral “7.” These alterations show confusing similarity between the <windowxp.com> and <window7xp.com> domain names and the WINDOWS XP mark for the same reasons as expressed above. See also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004) (finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <shop4harrypotter.com> and <shopforharrypotter.com> domain names failed to alleviate the confusing similarity between the mark and the domain names).
The Panel finally considers the <microsoftbazaar.com> domain name in comparison with the MICROSOFT mark. Merely adding the term “bazaar” to Complainant’s mark does not avoid confusing similarity within the meaning of Policy ¶ 4(a)(i). See Dell Inc. v. Nelson laptopshoppe, FA 1469084 (Nat. Arb. Forum Dec. 5, 2012) (“Complainant contends that Respondent’s <delllaptopstore.com> domain name is . . . incorporates the DELL mark and adds the descriptive terms “laptop” and “store.” The Panel finds that the addition of descriptive terms does not distinguish Respondent’s disputed domain name from Complainant’s DELL mark.”).
Therefore the Panel concludes that the <windowazure.com>, <windowgame.com>, <windowsgame.com>, <windowphones.com>, <windowsnow.com>, <windowxp.com>, <window7.com>, <window7.net>, <window7xp.com>, <window8.com>, <window9.com>, <window10.com>, and <microsoftbazaar.com> domain names are confusingly similar to the respective marks owned by Complainant.
The Panel finds Complainant has satisfied Policy ¶ 4(a)(i).
Complainant alleges that Respondent holds no rights or legitimate interests in the disputed domain names. This allegation must be supported with a prima facie showing by Complainant under Policy ¶ 4(a)(ii). After a complainant successfully makes a prima facie case, a respondent is faced with the burden of proving it does have rights or legitimate interests in the domain name. In Swedish Match UK Ltd. v. Admin, Domain, FA 873137 (Nat. Arb. Forum Feb. 13, 2007), the panel held that when a complainant produces a prima facie case, the burden of proof then shifts to the respondent to demonstrate its rights or legitimate interests in the domain name under Policy ¶ 4(c). See also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”). The Panel holds that Complainant has made a prima facie case.
Complainant states Respondent is known as “Admin” and is not known by any of the domain names, and has not otherwise been permitted to use Complainant’s marks in any way. Respondent listed itself simply as “Admin” on the registration information for all of the domain names. The Panel therefore finds that there is no basis for concluding that Respondent has ever been commonly known by any of these disputed domain names under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark).
Complainant claims that Respondent uses all of the domain names to shuttle Internet users to websites that host hyperlink advertisements. Each of the <windowazure.com>, <windowgame.com>, <windowsgame.com>, <windowsnow.com>, <window7.net>, <window7xp.com>, <window10.com>, and <microsoftbazaar.com> domain names appears to resolve to websites hosted by the <information.com> domain name, which promotes hyperlinks that are wholly unrelated from Complainant’s mark. The <windowphones.com>, <windowxp.com>, <window7.com>, <window8.com>, and <window9.com> domain names resolve to landing pages that advertise various goods sold by Complainant and its competitors. Using these domain names to promote hyperlinks for Respondent’s own profit 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 also claims that Respondent uses <windowazure.com> to engage in a phishing scheme whereby Internet users are presented with menus similar to Complainant’s login screens, and when the user logs on, their information is given to Respondent, who can then resell this personal information for a profit. Although the designs between Complainant’s website and the <windowazure.com> domain name differ, Respondent has included the header “Windows Security” along with a login screen that uses Complainant’s software design. Because the Panel believes that Respondent is seeking to illegitimately obtain the personal information of Internet users, the Panel finds that Respondent lacks Policy ¶ 4(a)(ii) rights or legitimate interests in regards to the <windowazure.com> domain name. See HOPE worldwide, Ltd. v. Jin, FA 320379 (Nat. Arb. Forum Nov. 11, 2004) (holding that a domain name that “is confusingly similar to Complainant’s mark, redirects Internet users to a website that imitates Complainant’s website, and is used to acquire personal information from Complainant’s potential associates” does not fall within the parameters of Policy ¶¶ 4(c)(i) or (iii)).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant claims that Respondent’s registration of these various domain names that infringe on Complainant’s marks evidences a pattern of bad faith registration. The presence of 13 infringing domain names in this single UDRP proceeding is sufficient evidence of Policy ¶ 4(b)(ii) bad faith use and registration. See EPA European Pressphoto Agency B.V. v. Wilson, D2004-1012 (WIPO Feb. 9, 2005) (finding that the respondent’s registration of the <epa-photo.com>, <epaphoto.com> and <epaphotos.com> domain names was sufficient to constitute a pattern pursuant to Policy ¶ 4(b)(ii)).
Complainant also argues that Respondent uses these domain names to redirect Internet users to various hyperlink farms hosted for the benefit of Respondent. Complainant claims Respondent is therefore attracting commercial gains through the likelihood that confused Internet users will associate these domain names with Complainant. The Panel again notes that the various domain names resolve to a website that features both generic and competing hyperlinks. Respondent’s bad faith is evident under Policy ¶ 4(b)(iv), as Respondent seeks to confuse Internet users into mistakenly associating the domain names with Complainant’s legitimate business, all so that Respondent may accrue advertising revenue for itself. See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting).
Complainant also claims that Respondent’s phishing scam through the <windowazure.com> domain name is evidence of bad faith. Complainant has provided a login screen that purports to be from “Windows Security” on the <windowazure.com> domain name’s website. The Panel finds that this login screen is evidence of a Policy ¶ 4(a)(iii) bad faith attempt to phish for the personal information of innocent Internet users. See Capital One Fin. Corp. v. Howel, FA 289304 (Nat. Arb. Forum Aug. 11, 2004) (finding bad faith registration and use because the respondent used the domain name to redirect Internet users to a website that imitated the complainant’s website and to fraudulently acquire personal information from the complainant’s clients).
Complainant also argues that Respondent had knowledge of Complainant’s rights in the various WINDOWS and MICROSOFT marks when registering the domain names. Due to the fame of Complainant's mark, the Panel concludes that Respondent had actual knowledge of the mark and Complainant's rights. Thus, the Panel holds that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also 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).
The Panel finds Complainant has satisfied Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windowazure.com>, <windowgame.com>, <windowsgame.com>, <windowphones.com>, <windowsnow.com>, <windowxp.com>, <window7.com>, <window7.net>, <window7xp.com>, <window8.com>, <window9.com>, <window10.com>, and <microsoftbazaar.com> domain names be TRANSFERRED from Respondent to Complainant.
Bruce E. Meyerson, Panelist
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