Microsoft Corporation v. Domain Privacy Group
Claim Number: FA1306001507433
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas. Respondent is Domain Privacy Group (“Respondent”), Massachusetts.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windows8appstore.com>, registered with DOMAIN.COM, LLC.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electron-ically on June 28, 2013; the National Arbitration Forum received payment on June 28, 2013.
On June 28, 2013, DOMAIN.COM, LLC confirmed by e-mail to the National Arbi-tration Forum that the <windows8appstore.com> domain name is registered with DOMAIN.COM, LLC and that Respondent is the current registrant of the name. DOMAIN.COM, LLC has verified that Respondent is bound by the registration agreement of DOMAIN.COM, LLC 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 July 1, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 22, 2013 by which Re-spondent 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@windows8appstore.com. Also on July 1, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respond-ent via post and fax, to all entities and persons listed on Respondent’s registra-tion 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 25, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Terry F. Peppard 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 Not-ices, 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
Complainant has rights in the WINDOWS trademark, which it uses in connection with the marketing of a computer operating platform.
Complainant holds registrations for the WINDOWS trademark, on file with the United States Patent and Trademark Office (“USPTO”), (including Reg. No. 1,872,264, registered January 10, 1995).
Respondent registered the <windows8appstore.com> domain name on Septem-ber 26, 2012.
The <windows8appstore.com> domain name is confusingly similar to Complain-ant’s WINDOWS mark.
Respondent has never been known by the term WINDOWS or by the disputed domain name.
Respondent is not affiliated with Complainant in any way.
Respondent is not licensed or otherwise authorized to use Complainant’s WINDOWS mark.
Respondent is not making a bona fide offering of goods or services or a legiti-mate noncommercial or fair use of the <windows8appstore.com> domain name.
The website resolving from the contested domain name contains advertising for products unrelated to Complainant.
Respondent presumably receives click-through fees tracing to visits by Internet users to the websites associated with the links displayed on the website resolving from the disputed domain name.
Respondent does not own any rights to or legitimate interests in the disputed domain name.
The website resolving from the contested domain name prominently displays the WINDOWS mark and Complainant’s business logos.
Respondent is attempting to pass off the resolving website as an official website of Complainant.
Respondent’s employment of the contested domain name thus disrupts Com-plainant’s business.
Respondent misleads and confuses consumers by incorporating the WINDOWS mark in the disputed domain name.
Respondent knew of Complainant and its rights in the WINDOWS mark at the time Respondent registered the disputed domain name.
Respondent registered and is using the <windows8appstore.com> domain name in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the same domain name was registered and is being used by Respondent 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 can-celled or transferred:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. 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 representa-tions 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 Verti-cal Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that a respondent’s failure to respond allows all reason-able inferences of fact in the allegations of a UDRP 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 has rights in the WINDOWS trademark for purposes of Policy ¶ 4(a)(i) by virtue of its registration of the mark with a national trademark authority, the USPTO. See, for example, Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (finding that a trademark registration with the USPTO was adequate to establish rights in that mark pursuant to Policy ¶ 4(a)(i)).
Turning to the core question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that the <windows8appstore.com> domain name is confusingly similar to Complainant’s WINDOWS trademark. The domain name contains the mark in its entirety, along with the terms “appstore” and the number “8,” each of which relates to an aspect of Complainant’s business, and the generic Top Level Domain (“gTLD”) “.com.” These alterations of the mark, made in forming the domain name, do no not distinguish the domain name from the mark under the standards of the Policy. See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding a respondent’s <amextravel.com> do-main name confusingly similar to a UDRP 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)). See also Am. Online Inc. v. Chinese ICQ Network, D2000-0808 (WIPO Aug. 31, 2000) (finding that inclusion of the numeral 4 in the domain name <4icq.com> did nothing to distinguish that domain name from the mark ICQ, therefore rendering the domain name confusingly similar to the mark).
Further see Nev. State Bank v. Modern Ltd. – Cayman Web Dev., FA 204063 (Nat. Arb. Forum Dec. 6, 2003):
It has been established that the addition of a generic top-level domain is irrelevant when considering whether a domain name is identical or confusingly similar under the Policy.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Re-spondent lacks rights to and legitimate interests in the disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that a complainant must make a prima facie case that a respondent lacks rights to and legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that re-spondent to show that it does have such rights or interests); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006):
Complainant must first make a prima facie showing that Respond-ent 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 has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO Dec. 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to deter-mine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the disputed domain name which are cognizable under the Policy.
We begin by noting that Complainant asserts, and Respondent does not deny,
that Respondent has never been known by the term WINDOWS or the domain name <windows8appstore.com>, that Respondent is not affiliated with Complain-ant in any way, and that Respondent is not licensed or otherwise authorized to use Complainant’s WINDOWS mark. Moreover, the WHOIS information for the disputed domain name identifies Respondent only as “Domain Privacy Group,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the disputed domain name so as to have acquired rights to or legitimate interests in it within the meaning of Policy ¶ 4(c)(ii). See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding, based on all evidence in the record, that a respondent was not commonly known by the <thirteen.com> domain name and so had failed to show that it had rights to or legitimate interests in that domain name as provided in Policy ¶ 4(c)(ii).
We next observe that Complainant contends, without objection from Respond-ent, that Respondent is not making a bona fide offering of goods or services or a legitimate noncommercial or fair use of the <windows8appstore.com> domain name, in that the website resolving from the domain name contains advertising for products unrelated to Complainant, that Respondent presumably receives click-through revenue from visits by Internet users to the links displayed on the resolving website, and that Respondent is attempting to pass itself off as Com-plainant by displaying the WINDOWS mark and logos on that website. This use of the domain name is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Microsoft Corporation v. Omer Yurttas, FA 1499149 (Nat. Arb. Forum June 28, 2013) (finding the domain name <windows8apps.com> to be confusingly similar to the mark of a UDRP complainant , and that a respondent’s attempt to employ that domain name to attract Internet traffic did not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use pur-suant to Policy ¶¶ 4(c)(i) or (iii)). See also Am. Int’l Group, Inc. v. Busby, FA 156251 (Nat. Arb. Forum May 30, 2003) (finding that a respondent’s employment of a disputed domain name in an attempt to pass itself off online as a UDRP complainant, in an unauthorized use of that complainant’s mark, was evidence that that respondent had no rights to or legitimate interests in the domain name).
Therefore, the Panel finds that Complainant has satisfied the requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the domain name <windows8appstore.com>, as alleged in the Complaint, disrupts Complainant’s business, and therefore stands as proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iii). See Jerie v. Burian, FA 795430 (Nat. Arb. Forum Oct. 30, 2006) (concluding, under Policy ¶ 4(b)(iii), that a respondent registered and used the <sportlivescore.com> domain name in bad faith to disrupt a UDRP complainant’s business under the LIVESCORE mark).
We are also convinced by the evidence that Respondent uses the disputed do-main name, which is confusingly similar to Complainant’s WINDOWS mark, to mislead and confuse consumers with regard to the possibility of Complainant’s association with that domain name, and that Respondent does this for commer-cial gain. This is proof of bad faith registration and use of the domain name under Policy ¶ 4(b)(iv). See Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003):
Respondent's … use of the … domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’
For these reasons, the Panel finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the <windows8appstore.com> domain name be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: July 31, 2013
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