Microsoft Corporation v. Muhammad Imtiaz
Claim Number: FA1504001613776
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Muhammad Imtiaz (“Respondent”), Washington, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windowskeys.co>, registered with ENOM, INC.
The undersigned certifies that she has acted independently and impartially and that to the best of her knowledge she has no known conflict in serving as Panelist in this proceeding. Hon. Carolyn Marks Johnson sits as Panelist.
Complainant submitted a Complaint to the Forum electronically April 9, 2015; the Forum received payment April 9, 2015.
On April 10, 2015, ENOM, INC. confirmed by e-mail to the Forum that the <windowskeys.co> domain name is registered with ENOM, INC. and that Respondent is the current registrant of the name. ENOM, INC. verified that Respondent is bound by the ENOM, INC. registration agreement and 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 10, 2015, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 30, 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@windowskeys.co. Also on April 10, 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 May 12, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum 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’s Contentions in this Proceeding:
Complainant owns the WINDOWS mark through registration with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,872,264, registered January 10, 1995). Complainant uses the WINDOWS mark in connection with its software, services, and solutions. The <windowskeys.co> domain name is confusingly similar to the WINDOWS mark. The domain name incorporates the mark in full, inserts the generic word “keys,” and adds the country code top-level domain (“ccTLD”) “.co” 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 WINDOWS mark. Respondent is not licensed or permitted by Complainant to use Complainant’s mark; Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. 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 resolves to a website that prominently displays Complainant’s mark and a replica of Complainant’s logo. See Compl., at Attached Ex. G. Further, Respondent purports to offer “genuine” activation keys; however, such keys are counterfeit. Also, the resolving website features an offer for users to participate in a fraudulent survey. Additionally, Complainant suspects that Respondent’s links are connected to malicious software.
Respondent engaged in bad faith registration and use of the <windowskeys.co> domain name. Respondent’s disputed domain name is connected to both malware and a fraudulent survey scheme, which is evidence to support findings of bad faith pursuant to Policy ¶ 4(b)(iv). Further, Respondent registered the disputed domain name with knowledge of Complainant’s rights in the WINDOWS mark.
Respondent’s Contentions in this Proceeding:
Respondent did not submit a Response. The Panel notes that Respondent registered this <windowskeys.co> domain name January 30, 2015.
Complainant established rights to and legitimate interests in the mark contained in its entirety within the disputed domain name.
The disputed domain name is confusingly similar to Complainant’s protected mark.
Respondent has no rights to or legitimate interests in the disputed domain name.
Respondent registered and used the disputed domain name 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 Complainant to 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.
Given 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 will draw such inferences as the Panel 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.”).
Identical or Confusingly Similar:
Complainant owns the WINDOWS mark through registration with the USPTO (e.g., Reg. No. 1,872,264, registered January 10, 1995). Complainant has shown that it uses the WINDOWS mark in connection with its software, services, and solutions programs. A complainant whose mark is registered through federal authorities has sufficient rights in the mark pursuant to Policy ¶ 4(a)(i). See Reebok Int’l Ltd. v. Santos, FA 565685 (Nat. Arb. Forum Dec. 21, 2005) (holding that a trademark registration with the USPTO was adequate to establish rights pursuant to Policy ¶ 4(a)(i)).
Complainant further asserts the <windowskeys.co> domain name is confusingly similar to the WINDOWS mark. The domain name incorporates the mark in full, inserts the generic word “keys,” and adds the ccTLD “.co” to the domain name. Previous panels have found that inserting a generic word, such as “keys,” does not sufficiently differentiate the domain name from the otherwise incorporated mark. See Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). Further, past panels have held that the addition of a ccTLD does nothing to negate confusing similarity. See Crocs, Inc. v. [Registrant], FA 1043196 (Nat. Arb. Forum Sept. 2, 2007) (determining that “the addition of a ccTLD is irrelevant to the Policy ¶ 4(a)(i) analysis, as a top-level domain is required of all domain names”). Therefore, this Panel finds that the <windowskeys.co> domain name is confusingly similar to the Complainant’s registered WINDOWS mark pursuant to Policy ¶ 4(a)(i).
Respondent makes no contentions relative to Policy ¶ 4(a)(i).
The Panel finds that the disputed domain name is confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights and Legitimate Interests:
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 of proof shifts to Respondent to show it does have such 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 asserts that Respondent has no rights or legitimate interests in the disputed domain name. Complainant argues that Respondent is not commonly known by the disputed domain name nor by Complainant’s WINDOWS mark. The Panel notes that the WHOIS information for the disputed domain name lists “Muhammad Imtiaz” as the registrant of record. See Compl., at Attached Ex. A. Further, Complainant contends that Respondent is not licensed nor permitted to use Complainant’s mark, and that Respondent is not an authorized vendor, supplier, or distributor of Complainant’s goods and services. The Panel notes that Respondent did not submit a response to rebut any of Complainant’s contentions. Given the lack of evidence to permit an inference otherwise, the Panel finds that Respondent is not commonly known by the disputed domain name as required 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).
Further, Complainant alleges that 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. Complainant argues that Respondent’s disputed domain name resolves to a website that prominently displays Complainant’s mark and a replica of Complainant’s logo. See Compl., at Attached Ex. G. Complainant contends that Respondent purports to offer “genuine” activation keys; however, Complainant believes that such keys are counterfeit. Past panels have found that a respondent’s use of a confusingly similar domain name to sell counterfeit versions of a complainant’s product is not a bona fide offering of goods or services, or a legitimate noncommercial or fair use. See Hewlett-Packard Co. v. Inversiones HP Milenium C.A., FA 105775 (Nat. Arb. Forum Apr. 12, 2002) (“Respondent’s use of the confusingly similar domain name [<hpmilenium.com>] to sell counterfeit versions of Complainant’s [HP] products is not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i).”). The Panel thus finds that Respondent’s use of the disputed domain name to offer counterfeit versions of Complainant’s products does not convey rights or legitimate interests in a domain name under Policy ¶ ¶ 4(c)(i) or 4(c)(iii).
Also, Complainant states that the resolving website features an offer for users to participate in a survey that may result in a prize, and which in turn results in Internet users entering personal information. Additionally, Complainant suspects that Respondent’s links are connected to malicious software. The Panel is reminded of Complainant’s Exhibit G. Previous panels have found that respondents lack rights and legitimate interests in a disputed domain name when the resolving website features fraudulent schemes or malicious software. See Blackstone TM L.L.C. v. Mita Irelant Ltd., FA 1314998 (Nat. Arb. Forum Apr. 30, 2010) (“The Panel finds that Respondent’s attempt to “phish” for users’ personal information is neither a bona fide offering of goods and services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii).”); see also 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)). Thus, the Panel finds that Respondent’s alleged involvement with fraudulent surveys and malware indicates that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii).
Respondent makes no contentions relative to Policy ¶ 4(a)(ii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain name; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant alleges that Respondent’s disputed domain name is connected to both malware and a fraudulent survey scheme, which is evidence of bad faith pursuant to Policy ¶ 4(b)(iv). See Compl., at Attached Ex. G. Previous panels have found that both the use of phishing surveys and the use of malware can be proscribed under Policy ¶ 4(b)(iv). See Juno Online Servs., Inc. v. Nelson, FA 241972 (Nat. Arb. Forum Mar. 29, 2004) (“The domain name <billing-juno.com> was registered and used in bad faith by using the name for fraudulent purposes.”); see also 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)). Therefore, the Panel finds that Respondent engaged in bad faith registration and use of the disputed domain name, in violation of Policy ¶ 4(b)(iv).
Further, Complainant argues that Respondent registered the disputed domain name with actual and/or constructive knowledge of Complainant’s rights in the WINDOWS mark. Complainant argues that Respondent’s disputed domain name resolves to a website that prominently displays Complainant’s mark and a replica of Complaint’s logo, and purports to offer “genuine” versions of Complainant’s products. See Compl., at Attached Ex. G. The Panel here finds that any arguments of bad faith based on constructive notice are irrelevant because UDRP case precedent declines to find bad faith as a result of constructive knowledge. 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."). The Panel agrees with Complainant, however, that Respondent shows that it had actual knowledge of Complainant's rights in the mark prior to registering and using the disputed domain name as shown by the name containing Complainant’s mark in its entirety and the misuse. Actual knowledge and misuse supports findings of bad faith registration and use 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).”); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith).
Respondent makes no contentions relative to Policy ¶ 4(a)(iii).
The Panel finds that Respondent registered and used the disputed domain name in bad faith; Complainant satisfied the elements of ICANN 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 <windowskeys.co> domain name BE TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: May 22, 2015
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