Microsoft Corporation v. Martin David
Claim Number: FA1404001553727
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Martin David (“Respondent”), Czech Republic.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windows-azure.net>, registered with Active 24 AS.
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.
Hon. Nelson A. Diaz (ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on April 11, 2014; the National Arbitration Forum received payment on April 11, 2014.
On April 14, 2014, Active 24 AS confirmed by e-mail to the National Arbitration Forum that the <windows-azure.net> domain name is registered with Active 24 AS and that Respondent is the current registrant of the name. Active 24 AS has verified that Respondent is bound by the Active 24 AS 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 15, 2014, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 5, 2014 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@windows-azure.net. Also on April 15, 2014, 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.
A timely Response was received and determined to be complete on May 4, 2014.
If applicable, enter date Additional Submission was received here – otherwise delete this point. If Additional Submission does not comply with Supplemental Rule 7, please address here.
On May 7, 2014, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Hon. Nelson A. Diaz (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.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant, Microsoft Corporation, alleges it is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant owns trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the WINDOWS mark (e.g., Reg. No. 2,005,901, registered October 8, 1996) and for the WINDOWS AZURE mark (Reg. No. 4,309,317, filed October 31, 2008, registered March 26, 2013).
Respondent’s <windows-azure.net> domain name incorporates Complainant’s famous WINDOWS AZURE mark and adds only a hyphen between the words along with the generic top-level domain (“gTLD”) “.net.” Complainant argues that Respondent has no rights or legitimate interests in the disputed domain name.
Respondent is not commonly known by the disputed domain name. The landing page for the disputed domain name purports to show the site as a blog site, however, it is replete with advertisements for products, including links to products that compete with Complainant’s products.
Respondent has listed the disputed domain name for sale at <sedo.com> for the sum of 10,000 GBP. Respondent has registered and is using the disputed domain names. Respondent is offering the disputed domain name for sale for over $15,000 USD. Respondent is using the disputed domain name in connection with pay-per-click advertising to promote third parties and products ot affiliated with Complainant, including competitors such as Sony and competing products such as Sony’s PlayStation 4.
Respondent registered the disputed domain name with knowledge of Complainant’s rights in the WINDOWS mark.
B. Respondent
Respondent registered the disputed domain name nearly one year and one month before Complainant received the WINDOWS AZURE mark. Respondent started his personal blog in June 2011 without any goal of domain speculation. Respondent was associated with Complainant in the past
Respondent has never sought to park the domain name for purposes of renting it or selling it to Complainant or anyone else.
Advertisements appearing on the blog are not for commercial gain but for paying webhosting costs and expenditure for blog promotion.
Respondent registered the <windows-azure.net> domain name on June 6, 2011.
C. Additional Submissions
On May 7,2014 Respondents submission was received on May 7, 2014, and that it was timely according to The Forum's Supplemental Rule #7. Respondent argues that the U.S. trademark registration for WINDOWS AZURE® issued on March 26, 2013 which was after the domain name was registered on June 6, 2011
Respondent violated Policy ¶ 4(a)(i), Policy ¶ 4(a)(ii), Policy ¶ 4(a)(iii), Policy ¶ 4(b)(i). Policy ¶ 4(b)(iv), Policy ¶ 4(c)(i), Policy ¶ 4(c)(iii) under the ICANN rules and requirements.
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 contends that it is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential. Complainant alleges that it owns trademark registrations with the USPTO for the WINDOWS mark (e.g., Reg. No. 2,005,901, registered October 8, 1996) and for the WINDOWS AZURE mark (Reg. No. 4,309,317, filed October 31, 2008, registered March 26, 2013). See Complainant’s Exhibit F. The Panel notes that Respondent resides in the Czech Republic. However, the Panel finds that Policy ¶ 4(a)(i) does not require Complainant to register its mark in the country in which Respondent resides. See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (finding that it is irrelevant whether the complainant has registered its trademark in the country of the respondent’s residence). Therefore, the Panel holds that Complainant’s filing and registration of the WINDOWS and WINDOWS AZURE marks with the USPTO shows that it has rights in the marks under Policy ¶ 4(a)(i). See Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”); see also Google, Inc. v. DktBot.org, FA 286993 (Nat. Arb. Forum Aug. 4, 2004) (finding that the complainant had established rights in the GOOGLE mark through its holding of numerous trademark registrations around the world).
Complainant argues that Respondent’s <windows-azure.net> domain name incorporates Complainant’s famous WINDOWS mark and adds only a hyphen between the words along with the gTLD “.net.” The Panel holds that Respondent’s inclusion of a hyphen and a gTLD is irrelevant under a Policy ¶ 4(a)(i) confusingly similar analysis. See Health Devices Corp. v. Aspen S T C, FA 158254 (Nat. Arb. Forum July 1, 2003) (“[T]he addition of punctuation marks such as hyphens is irrelevant in the determination of confusing similarity pursuant to Policy ¶ 4(a)(i).”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (Nat. Arb. Forum Sept. 7, 2005) (“[T]he addition of the generic top-level domain (gTLD) “.net” is irrelevant for purposes of determining whether a domain name is identical to a mark.”). Accordingly, the Panel finds that Respondent’s <windows-azure.net> domain name is confusingly similar to Complainant’s WINDOWS AZURE mark under Policy ¶ 4(a)(i).
The 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 alleges that Respondent is not commonly known by the <windows-azure.net> domain name. Complainant argues that Respondent is not affiliated with Complainant in any way, nor is Respondent licensed by Complainant to use the WINDOWS or WINDOWS AZURE mark. Complainant contends that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods or services. Complainant claims that the WHOIS record identifies Respondent as “Martin David.” See Complainant’s Exhibit A. In Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006), the panel found that respondent was not commonly known by the disputed domain names because the WHOIS information listed “Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't” as the registrant and there was no other evidence in the record to suggest that respondent was commonly known by the domain names in dispute. Thus, the Panel concludes that Respondent is not commonly known by the <windows-azure.net> domain name pursuant to Policy ¶ 4(c)(ii).
Complainant claims that the landing page for the <windows-azure.net> domain name purports to show the site as a blog site, however, it is replete with advertisements for products, including links to products that compete with Complainant’s products. See Complainant’s Exhibit F. Complainant argues that Respondent is presumably receiving some revenues when a user clicks through on the links on its website. Past panels have held that a respondent’s use of a domain name to provide competing advertisements is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (finding that, because the “[r]espondent’s disputed domain names resolve to a website featuring a series of advertising links to various third-parties, many of whom offer products and services in direct competition with those offered under [the complainant’s] mark,” the respondent is not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use). Accordingly, the Panel finds that Respondent is not using the <windows-azure.net> domain name in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).
Complainant asserts that Respondent has listed the <windows-azure.net> domain name for sale at <sedo.com> for the sum of 10,000 GBP (which is equivalent to approximately $16,764 USD). See Complainant’s Exhibit G. In Drown Corp. v. Premier Wine & Spirits, FA 616805 (Nat. Arb. Forum Feb. 13, 2006), the panel found that “Respondent’s offer to sell the domain name registration for $100,000 as evidence that Respondent lacks rights and legitimate interests in the disputed domain name pursuant to Policy ¶ 4(a)(ii).” Thus, the Panel holds that Respondent’s offer to sell the disputed domain name evidences a lack of rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii).
Complainant alleges that Respondent is offering the <windows-azure.net> domain name for sale for over $15,000 USD. See Complainant’s Exhibit G. If the Panel finds that Respondent has offered the disputed domain name for sale to the public, the Panel concludes that Respondent has registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(i). See World Wrestling Fed’n Entm’t., Inc. v. Bosman, D99-0001 (WIPO Jan. 14, 2000) (finding that the respondent used the domain name in bad faith because he offered to sell the domain name for valuable consideration in excess of any out-of-pocket cost).
Complainant asserts that Respondent is using the <windows-azure.net> domain name in connection with pay-per-click advertising to promote third parties and products not affiliated with Complainant, including competitors such as Sony and competing products such as Sony’s PlayStation 4. See Complainant’s Exhibit F. Complainant argues that Respondent presumably receives revenue from Respondent’s use of the disputed domain name. In Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003), the panel determined that “Respondent's prior use of the <mailonsunday.com> 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.’” Accordingly, the Panel finds that Respondent has registered and is using the <windows-azure.net> domain name in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant claims that Respondent registered the <windows-azure.net> domain name with knowledge of Complainant’s rights in the WINDOWS mark. Complainant argues that Complainant’s WINDOWS mark was famous at the time Respondent registered the disputed domain name. Complainant further asserts that the content of the disputed domain name shows that Respondent was familiar with Complainant’s WINDOWS and WINDOWS AZURE marks. Although panels have previously concluded that constructive notice is not enough to support a bad faith finding, the Panel finds that, due to the fame of Complainant's mark, Respondent had actual knowledge of the WINDOWS and WINDOWS AZURE mark and Complainant's rights. Thus, the Panel holds that Respondent registered the <windows-azure.net> 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).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windows-azure.net> domain name be TRANSFERRED from Respondent to Complainant
Hon. Nelson A. Diaz (ret.), Panelist
Dated: May 12, 2014
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