Microsoft Corporation v. Some Trouble / Some Trouble
Claim Number: FA1502001603793
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Some Trouble / Some Trouble (“Respondent”), Hong Kong.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <outlookssl.com>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on February 6, 2015; the Forum received payment on February 6, 2015.
On February 9, 2015, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <outlookssl.com> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com 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 February 9, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of March 2, 2015, 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@outlookssl.com. Also on February 9, 2015, 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 Forum transmitted to the parties a Notification of Respondent Default.
On March 10, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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 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 owns the OUTLOOK mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,188,125, registered Sept. 8, 1998). Complainant uses the OUTLOOK mark in connection with several products including Microsoft Outlook desktop email client, the online email client <outlook.com>, and the Microsoft outlook mobile email app. The <outlookssl.com> domain name is confusingly similar to the OUTLOOK mark. The domain name incorporates the mark in full, adds the generic term “ssl,” and inserts a generic top-level domain “.com” to the domain name.
Respondent has no rights or legitimate interests in the disputed domain name. Respondent is not commonly known by the disputed domain name nor by Complainant’s OUTLOOK mark. Respondent is not licensed by Complainant to use the OUTLOOK mark. Further, Respondent is not using the disputed domain name for a bona fide offering of goods or services, or for a legitimate noncommercial or fair use. Respondent’s disputed domain name does not resolve to an active website. Moreover, the <outlookssl.com> domain name has been used as a vehicle for delivery of malware.
Respondent has engaged in bad faith registration and use of the <outlookssl.com> domain name pursuant to Policy ¶ 4(a)(iii). Respondent has registered the disputed domain name with knowledge of Complainant’s rights in the OUTLOOK mark, which is evidence of bad faith registration. Further, the disputed domain name does not resolve to an active website. Additionally, Respondent’s involvement with malware attacks through the disputed domain name is evidence of bad faith under Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, has rights in the OUTLOOK mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 2,188,125, registered Sept. 8, 1998). Complainant uses the OUTLOOK mark in connection with several products including Microsoft Outlook desktop email client, the online email client <outlook.com>, and the Microsoft outlook mobile email app.
Respondent, Some Trouble / Some Trouble, registered the <outlookssl.com> domain name on Feb. 28, 2013. Respondent uses the disputed domain name to deliver malware to Internet users computers.
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 has rights in the OUTLOOK mark under Policy ¶ 4(a)(i) through registration with the USPTO (e.g., Reg. No. 2,188,125, registered Sept. 8, 1998). See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i).”).
Respondent’s <outlookssl.com> domain name is confusingly similar to the OUTLOOK mark under Policy ¶ 4(a)(i). The domain name incorporates the mark in full, adds the generic term “ssl,” and inserts a generic top-level domain “.com” to the domain name. SSL encryption is the most common type of encryption for data transferred over the Internet. The addition of a generic word or acronym to an otherwise incorporated mark does not adequately distinguish the disputed domain name from the mark, particularly when the chosen word or acronym describes complainant’s business. See Chanel, Inc. v. Cologne Zone, D2000-1809 (WIPO Feb. 22, 2001) (“CHANEL, the salient feature of the Domain Names, is identical to a mark in which Complainant has shown prior rights. The addition of the generic term, “perfumes” is not a distinguishing feature, and in this case seems to increase the likelihood of confusion because it is an apt term for Complainant’s business.”).
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).
Respondent has no rights or legitimate interests in the <outlookssl.com> domain name. Respondent is not licensed by Complainant to use the OUTLOOK mark. The WHOIS information lists “Some Trouble” as the registrant of record. Respondent is not commonly known by the disputed <outlookssl.com> domain name. See Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
Respondent is not using the disputed domain name for a bona fide offering of goods or services under Policy ¶ 4(c)(i), or for a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Respondent’s disputed domain name does not resolve to an active website. See Hewlett-Packard Co. v. Shemesh, FA 434145 (Nat. Arb. Forum Apr. 20, 2005) (finding that a respondent’s non-use of a domain name that is identical to a complainant’s mark is not 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)).
Moreover, Respondent uses the <outlookssl.com> domain name to deliver malware. The <outlookssl.com> domain name has been reported as a domain that is used to upload malicious code into legitimate sites unbeknown to the administrator or user of the site. Such use is neither a bona fide offering of goods or services, nor a legitimate noncommercial or fair use. See Baker v. J M, FA 1259254 (Nat. Arb. Forum June 12, 2009) (concluding that the hosting of a virus that activates when an Internet user accesses the resolving website does not demonstrate rights and legitimate interests in a disputed domain name under Policy ¶ 4(a)(ii)).
Respondent has engaged in bad faith registration and use of the <outlookssl.com> domain name pursuant to Policy ¶ 4(a)(iii). Since Respondent’s domain name incorporates Complainant’s famous OUTLOOK mark along with the generic term “ssl,” Respondent had knowledge of Complainant’s rights in the mark when registering the disputed domain name. Actual knowledge is evidence of bad faith under Policy ¶ 4(a)(iii). See Victoria’s Secret Stores Brand Mgmt., Inc. v. Michael Bach, FA 1426668 (Nat. Arb. Forum Mar. 2, 2012) (“Although Complainant has not submitted evidence indicating actual knowledge by Respondent of its rights in the trademark, the Panel finds that, due to the fame of Complainant’s [VICTORIA’S SECRET] mark, Respondent had actual notice at the time of the domain name registration and therefore registered the domain name in bad faith under Policy ¶ 4(a)(iii).”).
Further, the disputed domain name does not resolve to an active website even though it was registered for nearly two years. Respondent’s inactive use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Nat. Arb. Forum Apr. 12, 2007) (holding that non-use of a confusingly similar domain name for over seven months constitutes bad faith registration and use).
Also, Respondent’s involvement with malware attacks through the <outlookssl.com> domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See Google, Inc. v. Petrovich, FA 1339345 (Nat. Arb. Forum September 23, 2010) (finding that disputed domain names which distribute malware to Internet users’ computers demonstrate Respondent’s bad faith under Policy ¶ 4(b)(iv)).
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 <outlookssl.com> domain name be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: March 24, 2015
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