Microsoft Corporation v. YUNFENG LAN / INDIVIDUAL
Claim Number: FA1608001687600
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is YUNFENG LAN / INDIVIDUAL (“Respondent”), Peoples Republic of China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windows10appstore.net>, registered with eNom, Inc.
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.
Hon. Karl V. Fink (Ret.) as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 9, 2016; the Forum received payment on August 9, 2016.
On August 10, 2016, eNom, Inc. confirmed by e-mail to the Forum that the <windows10appstore.net> 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 August 11, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 31, 2016 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@windows10appstore.net. Also on August 11, 2016, 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 September 12, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Karl V. Fink (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 registered the WINDOWS mark with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,872,264, registered Jan. 10, 1995), and holds rights to the mark that it uses for marketing software. Respondent’s domain name, <windows10appstore.net>, is confusingly similar to Complainant’s mark, because it merely adds the descriptive terms “10” and “app store” to the Complainant’s entire WINDOWS mark, plus the “.net” generic top-level domain (“gTLD”) suffix.
Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not granted Respondent any sort of permission to use its WINDOWS mark, and the Respondent is not commonly known as <windows10appstore.net>. Respondent is attempting to pass itself off as Complainant and prominently displays several of Complainant’s WINDOWS marks on its website. Such use cannot constitute a bona fide offering of goods and services or a legitimate noncommercial or fair use of the disputed domain name under Policy ¶¶ 4(c)(i) or (iii).
Respondent registered and has been using the disputed domain name in bad faith. Respondent presumably receives revenue for referring mistaken Internet users to third-party websites, and is commercially gaining by the confusion as to the source, sponsorship, affilliation, or endorsement of the resolving page of the disputed domain name. Further, Respondent had actual notice of the world famous WINDOWS mark, and engaged in opportunistic bad faith when it registered the <windows10appstore.net> domain name one day after Complainant’s announcement of the launch of its “Windows 10” product. Respondent’s conduct is thus in violation of Policy ¶ 4(a)(iii).
B. Respondent
Respondent failed to submit a Response in this proceeding.
For the reasons set forth below, the Panel finds Complainant is entitled to the requested relief of transfer of the windows10appstore.net> domain name.
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(f), 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 (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 contends that it has rights in the WINDOWS mark based on its registration with the USTPO (Reg. No. 1,872,264, Registered Jan. 10, 1995). Prior panels have found that such a registration confers rights in a mark pursuant to Policy ¶ 4(a)(i). See Humor Rainbow, Inc. v. James Lee, FA 1626154 (Forum Aug. 11, 2015) (stating, “There exists an overwhelming consensus amongst UDRP panels that USPTO registrations are sufficient in demonstrating a complainant’s rights under Policy ¶ 4(a)(i) and its vested interests in a mark. . . . Due to Complainant’s attached USPTO registration on the principal register the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). The Panel finds that Complainant has demonstrated rights in the WINDOWS mark.
Complainant further contends that Respondent’s domain name, <windows10appstore.net>, is confusingly similar to its WINDOWS mark. Complainant argues that Respondent’s domain name merely adds the descriptive terms “10” and “appstore” to the fully incorporated WINDOWS mark, plus the “.net” gTLD suffix. Complainant states these terms describe the “Windows 10” product and the associated apps that Complainant sells. Panels have found that the addition of terms to a disputed domain name can lead to a finding of confusingly similarity if the terms describe the complainant’s business. See Kohler Co. v. Curley, FA 890812 (Forum Mar. 5, 2007) (finding confusing similarity where <kohlerbaths.com>, the disputed domain name, contained the complainant’s mark in its entirety adding “the descriptive term ‘baths,’ which is an obvious allusion to complainant’s business.”); see also Katadyn N. Am. v. Black Mountain Stores, FA 520677 (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.”). The Panel agrees with Complainant that the disputed domain name is confusingly similar to the WINDOWS mark under Policy ¶ 4(a)(i).
Complainant has proved this element.
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 (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 (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 no rights or legitimate interests in the <windows10appstore.net>, domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its WINDOWS mark in any fashion, and that Respondent is not commonly known by the disputed domain name. The Panel notes that the WHOIS information for the domain name in question lists “YUNFENG LAN” as the registrant, and “INDIVIDUAL” as the organization. Previous panels have inferred that a respondent is not commonly known by a domain name from the WHOIS information and lack of contradicting evidence in the record. See Google Inc. v. Domain Admin / Whois Privacy Corp., FA1502001605239 (Forum Mar. 22, 2015) (“WHOIS information for the at-issue domain name lists ‘Domain Admin / Whois Privacy Corp.’ as the domain name’s registrant and there is nothing in the record that otherwise suggests Respondent is commonly known by the <google-status.com> domain name. Therefore, the Panel finds that Respondent is not commonly known by the at-issue domain name pursuant to Policy ¶ 4(c)(ii).”). Thus, the Panel finds that Respondent is not commonly known by <windows10appstore.net>.
Complainant further asserts that Respondent is not using the disputed domain name to make a bona fide offering of goods and services under Policy ¶ 4(c)(i), or using it to make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). Complainant argues that Respondent is using Complainant’s marks on the resolving website of the disputed domain name to pass itself off as the Complainant, and to divert mistaken internet users to click on one of the links that Respondent presumably receives click-through revenue from. Complainant has submitted screen shots of the website that resolves from Respondent’s domain. Panels have held that a respondent attempting to pass itself off as a complainant does not constitute an acceptable use under Policy ¶ 4(c)(i) or (iii). See Kmart of Mich., Inc. v. Cone, FA 655014 (Forum Apr. 25, 2006) (The panel found the respondent’s attempt to pass itself off as the complainant was 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) when the respondent used the disputed domain name to present users with a website that was nearly identical to the complainant’s website). As such, the Panel finds that Respondent does not have any rights or legitimate interests in the disputed domain name.
Complainant has proved this element.
Registration and Use in Bad Faith
Complainant states that Respondent has registered and is using the <windows10appstore.net> domain name in bad faith. Complainant argues that Respondent is purportedly attempting to pass itself off as Complainant in a bad faith attempt to attract Internet users for commercial gain under Policy ¶ 4(b)(iv). Complainant argues that Respondent’s use of their WINDOWS mark, in conjunction with the confusingly similar domain name, creates a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name. Complainant presumes that Respondent is commercially gaining when mistaken Internet users click one of the links and get referred to a third party website. The Panel agrees that Respondent is attempting to pass itself off as Complainant and finds bad faith under Policy ¶ 4(b)(iv). See Am. Online, Inc. v. Miles, FA 105890 (Forum May 31, 2002) (“Respondent is using the domain name at issue to resolve to a website at which Complainant’s trademarks and logos are prominently displayed. Respondent has done this with full knowledge of Complainant’s business and trademarks. The Panel finds that this conduct is that which is prohibited by Paragraph 4(b)(iv) of the Policy.”).
Complainant further contends that Respondent had actual notice of its rights in the WINDOWS mark when it registered the <windows10appstore.net> domain name, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant cites the worldwide fame that the WINDOWS mark has achieved, the descriptive nature of the domain name, and the fact that Respondent’s website uses Complainant’s actual marks all as evidence that Respondent had actual notice of their rights in the mark. Although the UDRP does not recognize constructive notice as sufficient grounds to find bad faith under Policy ¶ 4(a)(iii), the Panel may infer actual notice from any of Complainant’s three factors. See Google Inc. v. Ahmed Humood, FA1411001591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to an in competition with Complainant.”); see also University of Rochester v. Park HyungJin, FA1410001587458 (Forum Dec. 9, 2014) (“. . .the Panel infers Respondent’s actual knowledge here based on Respondent’s complete use of the PERIFACTS mark in the <perifacts.com> domain name to promote links related to the field of obstetrics, where Complainant’s mark is used.”); see also Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). The Panel finds that Respondent had actual notice of Complainant’s rights in the WINDOWS mark pursuant to Policy ¶ 4(a)(iii).
Finally, Complainant alleges that Respondent’s opportunistic behavior when registering the domain name constitutes bad faith under Policy ¶ 4(a)(iii). Complainant contends that it announced the launch of its “Windows 10” product on Sept. 30, 2014, and that Respondents registration of the disputed domain name the next day is evidence of opportunistic behavior. The Panel notes the WHOIS information for <windows10appstore.net> lists Oct. 1, 2014 as the creation date. Panels have found the timely registration of a domain name after an announcement by a complainant to be in bad faith. See Amazon Technologies, Inc. v. harshit dhingaun, FA1505001619696 (Forum June 10, 2015) (holding that the respondent had demonstrated opportunistic bad faith according to Policy ¶ 4(a)(iii), when it registered the <amazonfashionindia.com> and <amazonindiafashion.com> domain names within days after the announcement of the complainant’s sponsorship of India Fashion Week). Therefore, the Panel finds Respondent to have engaged in opportunistic behavior in violation of Policy ¶ 4(a)(iii).
Complainant has proved this element.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windows10appstore.net> domain name be TRANSFERRED from Respondent to Complainant.
Hon. Karl V. Fink (Ret.) Panelist
Dated: September 14, 2016
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