Microsoft Corporation v. Tran Van Thong
Claim Number: FA1312001533611
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Tran Van Thong (“Respondent”), Vietnam.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft247.com>, registered with eNom, Inc.
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.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on December 9, 2013; the National Arbitration Forum received payment on December 9, 2013.
On December 10, 2013, eNom, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoft247.com> domain name is registered with eNom, Inc. and that Respondent is the current registrant of the name. eNom, Inc. has verified that Respondent is bound by the eNom, 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 December 10, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of December 30, 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@microsoft247.com. Also on December 10, 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 January 3, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Sandra J. Franklin 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.
Complainant owns more than 25 registrations for its famous MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 registered July 6, 1982). Complainant also owns hundreds of registrations for the MICROSOFT mark internationally, including one with the
National Office of Intellectual Property of Vietnam (“NOIP”)(e.g., Reg. No. 9,722 registered March 19, 1993.)
Respondent registered the <microsoft247.com> domain name on May 10, 2013, and uses it display products that purport to be Complainant’s products, in addition to other products not made by Complainant.
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.”).
Previous panels have consistently found that providing evidence of a registration with a recognized authority for a given mark establishes rights in the 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 Australia &New Zealand Banking Group Ltd. v. Nguyen The Anh / Cong ty CP Duoc Pham ANZ Tai Viet Nam, FA 1010001351993 (Nat. Arb. Forum December 1, 2010) (Finding that complainant’s registration with Vietnam’s NOIP was sufficient evidence to establish complainant’s rights in the ANZ mark under Policy ¶ 4(a)(i)). The Panel finds that Respondent has rights in the MICROSOFT mark under Policy ¶ 4(a)(i) through its various registrations around the world.
Respondent’s <microsoft247.com> domain name incorporates Complainant’s MICROSOFT mark in its entirety and adds the numbers “247,” a common numeric expression for “twenty-four hours, seven days a week.” Respondent also adds the insignificant gTLD “.com” to Complainant’s mark. Previous panels have found that adding numbers and gTLDs to a Complainant’s mark does not overcome a finding of confusingly similar under Policy ¶ 4(a)(i). See Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark); see also Omnitel Pronto Italia S.p.A. v. Bella, D2000-1641 (WIPO Mar. 12, 2001) (finding that the contested <omnitel2000.com> domain name is confusingly similar to the OMNITEL trademark). Therefore, the Panel finds that Respondent’s <microsoft247.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), 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 has no rights or legitimate interests in the <microsoft247.com> domain name under Policy ¶ 4(c)(ii) because Respondent is not commonly known by the disputed domain name. Complainant further asserts that Respondent is not licensed by Complainant to use the MICROSOFT mark. The WHOIS information for the disputed domain name lists “Tran Van Thong” as registrant of the disputed domain name. Prior panels have concluded that a respondent is not commonly known by a disputed domain name, and thus has no rights in that domain name, where there is no evidence on the record or in the WHOIS information indicating that respondent is commonly known by that domain name. 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). Thus, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name because it is not commonly known by the domain name under Policy ¶ 4(c)(ii).
Complainant asserts that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). Complainant claims that the disputed domain name resolves to a website displaying the words “MICROSOFT KEY Online Store,” along with products that purport to be Complainant’s products, and third-party products. The Panel notes that the website displays headings such as “Microsoft Office Home and Business 2013- PC- License,” “Microsoft Visio Standard 2010-PC- English,” “Apple Inc.,” “Case iPhone,” and “Otterbox Commuter Series F/iPhone® 4/4S- Deep Tea/Light.” Prior panels have routinely found that attracting Internet users to a website by confusing them with a complainant’s famous mark, and promoting competing goods and services, does not reflect a bona fide offering of goods or services under Policy ¶ 4(c)(i) or ¶ 4(c)(iii). See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (finding that use of the complainant’s mark to sell the complainant’s perfume, as well as other brands of perfume, is not bona fide use). The Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶ 4(c)(i) or ¶ 4(c)(iii) because Respondent is not using the disputed domain name to make a bona fide offering of goods or services or a legitimate noncommercial or fair use.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Respondent is using the <microsoft247.com> domain name to promote third-party products and sell products that are allegedly Complainant’s products, disrupting Complainant’s business. Prior UDRP panels have found bad faith under Policy ¶ 4(b)(iii) where a respondent uses a disputed domain name for the purpose of disrupting a complainant’s business by offering competing products on respondent’s resolving website. See Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) (transferring the <fossilwatch.com> domain name from the respondent, a watch dealer not otherwise authorized to sell the complainant’s goods, to the complainant). The Panel thus finds that Respondent’s use of the disputed domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iii).
Respondent is also using the disputed domain name to resolve to a website selling what appear to be Complainant’s products. Prior panels have concluded that using a confusingly similar domain name to sell a complainant’s products indicates bad faith use and registration. See Compaq Info. Techs. Group, L.P. v. Waterlooplein Ltd., FA 109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the <compaq-broker.com> domain name to sell the complainant’s products “creates a likelihood of confusion with Complainant's COMPAQ mark as to the source, sponsorship, or affiliation of the website and constituted bad faith pursuant to Policy ¶ 4(b)(iv)”). Therefore, Panel finds that Respondent also registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant contends that, in light of the fame and notoriety of Complainant's MICROSOFT mark, it is inconceivable that Respondent could have registered the <microsoft247.com> domain name without actual and/or constructive knowledge of Complainant's rights in the mark. Complainant argues that Respondent’s knowledge is demonstrated by Respondent’s use of the heading “Microsoft Key” on the resolving website. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the mark prior to registering the disputed domain name, further evidence of bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Nat. Arb. Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name).
The Panel finds that 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 <microsoft247.com> domain name be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: January 9, 2014
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