Microsoft Corporation and Yammer, Inc. v. Whois Data Protection Sp. z o.o.
Claim Number: FA1507001626923
Complainant is Microsoft Corporation and Yammer, Inc. (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Whois Data Protection Sp. z o.o. (“Respondent”), Poland.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <yammerenterprise.com>, registered with NetArt Registrar Sp. z o.o..
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.
Ho Hyun Nahm, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 1, 2015; the Forum received payment on July 1, 2015. The Complaint was submitted in both Polish and English.
On July 2, 2015, NetArt Registrar Sp. z o.o. confirmed by e-mail to the Forum that the <yammerenterprise.com> domain name is registered with NetArt Registrar Sp. z o.o. and that Respondent is the current registrant of the name. NetArt Registrar Sp. z o.o. has verified that Respondent is bound by the NetArt Registrar Sp. z o.o. 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 July 8, 2015, the Forum served the Polish language Complaint and all Annexes, including a Polish language Written Notice of the Complaint, setting a deadline of July 28, 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@yammerenterprise.com. Also on July 8, 2015, the Polish language 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 July 31, 2015, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Ho Hyun Nahm, Esq. 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
(i) Complainant has rights in the YAMMER mark through registration with multiple trademark agencies including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 3,906,158, registered January 18, 2011). Respondent’s disputed <yammerenterprise.com> domain name is confusingly similar to Complainant’s YAMMER mark because the domain incorporates the entire YAMMER mark and merely adds the generic term “enterprise” and the generic top-level domain (“gTLD”) “.com.” These differences do not distinguish the disputed domain name from the YAMMER mark.
(ii) Respondent has no rights or legitimate interests in the disputed domain name. Respondent has not been authorized to use the YAMMER mark and there is no indication that Respondent has been commonly known by the disputed domain name. Further, Respondent’s use of the disputed domain name to redirect to a website that sells Complainant’s products without authorization, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name.
(iii) Respondent registered and is using the <yammerenterprise.com> domain in bad faith. Respondent’s use of Complainant’s YAMMER trademark in the disputed domain and on the website which resolves from the disputed domain shows that Respondent intends to confuse and attract Internet users and does so for commercial gain. In addition, based on Respondent’s domain and the use of the disputed domain it is clear that Respondent had actual or constructive knowledge of Complainant’s rights in the YAMMER mark at the time of registration.
B. Respondent
Respondent has failed to submit a Response in this proceeding. The record reflects that Respondent registered the <yammerenterprise.com> domain name on December 3, 2013.
The Panel notes that the Registration Agreement is written in Polish, thereby making the language of the proceedings in Polish. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Polish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings shall be conducted in English.
Complainant established that it had rights in the mark contained in the disputed domain name. 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 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 claims to have rights in the YAMMER mark through registration of the mark with multiple trademark agencies including the USPTO (e.g., Reg. No. 3,906,158, January 18, 2011). Panels have routinely held that registration of a mark with the USPTO is an acceptable means to establish a complainant’s rights in a mark, even considering the difference of location of the parties. 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)); see also Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). The Panel therefore finds that Complainant has rights in the YAMMER mark under Policy ¶ 4(a)(i).
Complainant also contends that Respondent’s disputed <yammerenterprise.com> domain name is confusingly similar to the YAMMER mark which Complainant believes it has rights. Respondent’s <yammerenterprise.com> domain includes the YAMMER mark in its entirety and adds the generic term “enterprise” and the gTLD “.com.” Panels have found that adding a generic term and a gTLD to a mark does not differentiate the domain from the mark. See Whitney Nat’l Bank v. Easynet Ltd, FA 944330 (Nat. Arb. Forum Apr. 30, 2007) (“The additions of generic words with an obvious relationship to Complainant’s business and a gTLD renders the disputed domain name confusingly similar to Complainant’s mark pursuant to Policy ¶ 4(a)(i).”). The Panel finds that Respondent’s disputed <yammerenterprise.com> is confusingly similar to the YAMMER mark.
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 contends that Respondent has not been commonly known by the disputed domain and is not affiliated with Complainant in any way that would allow for use of the YAMMER mark. Although WHOIS information indicates that Respondent used a privacy shield when registering the domain, there is correspondence between the registrar of the domain and the Forum indicating that Respondent is one “Aneta Górka-Sip.” Accordingly, based on information in the record, the Panel determines that Respondent is not commonly known by the disputed domain name. See Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response).
Complainant argues that Respondent’s use of the disputed domain name, redirecting to another website owned by Respondent which attempts to solicit sales of Complainant’s products illegitimately, is not a bona fide offering of goods or services or a legitimate noncommercial or fair use of the disputed domain name. Panels have found that use of a confusingly similar domain name to redirect users to a Respondent’s website for Respondent’s own commercial benefit is not a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat. Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). The Panel finds that Respondent’s use of the disputed <yammerenterprise.com> domain does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and 4(c)(iii).
Complainant claims that Respondent’s bad faith is shown from the prominent use of the YAMMER mark to attract users who are then offered products associated with the mark. Previous panels have found a respondent to have registered and used a domain in bad faith where a respondent diverted users searching for a complainant’s website to its own website. See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) (finding that the respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because the respondent was using the confusingly similar domain name to attract Internet users to its commercial website). The Panel therefore finds that Respondent has registered and uses the disputed domain in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant argues that Respondent had actual and/or constructive knowledge of Complainant's rights in the YAMMER mark. Complainant argues that Respondent's offering of Complainant's own products and the prominent display of the YAMMER mark and other marks associated with Complainant at the resolving website indicates that Respondent had actual knowledge of Complainant's mark and rights. Although panels have not generally regarded constructive notice to be sufficient for a finding of bad faith, the Panel infers due to the manner of use of the disputed domain name that Respondent had actual knowledge of Complainant's mark and rights and therefore determine that Respondent registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii). See Nat'l Patent Servs. Inc. v. Bean, FA 1071869 (Nat. Arb. Forum Nov. 1, 2007) ("[C]onstructive notice does not support a finding of bad faith registration."); see also Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <yammerenterprise.com> domain name be TRANSFERRED from Respondent to Complainant.
Ho Hyun Nahm, Esq., Panelist
Dated: August 11, 2015
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