Microsoft Corporation v. Hussain Abuidrees
Claim Number: FA1611001702290
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Hussain Abuidrees (“Respondent”), Bahrain.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftdesign.com>, registered with Tucows Domains Inc.
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.
John J. Upchurch as Panelist.
Complainant submitted a Complaint to the Forum electronically on November 10, 2016; the Forum received payment on November 10, 2016.
On November 10, 2016, Tucows Domains Inc. confirmed by e-mail to the Forum that the <microsoftdesign.com> domain name is registered with Tucows Domains Inc. and that Respondent is the current registrant of the name. Tucows Domains Inc. has verified that Respondent is bound by the Tucows Domains 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 November 10, 2016, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 30, 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@microsoftdesign.com. Also on November 10, 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 December 6, 2016, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed John J. Upchurch 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
1. Complainant has registered its MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236, registered July 6, 1982), and has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. D. Respondent’s <microsoftdesign.com> domain name is confusingly similar to Complainant’s MICROSOFT mark because it merely adds a generic top-level domain (“gTLD”) and the term “design,” which is descriptive of Complainant’s software design business, to the fully incorporated MICROSOFT mark.
2. Respondent has no rights or legitimate interests in the disputed domain name. Complainant has not licensed or otherwise formed any relationship with Respondent to use its MICROSOFT mark, and Respondent is not commonly known by “Microsoft Design.” Respondent had been using <microsoftdesign.com> to fraudulently mislead Internet users to believing it had an affiliation with Complainant, and Respondent has since taken down the website and fails to make any active use of the disputed domain name. See Compl., at Attached Exs. E–F. This conduct cannot be said to be a bona fide offering of goods and services or a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii).
3. Respondent has registered and is using the <microsoftdesign.com> domain name in bad faith. Complainant’s MICROSOFT mark has achieved such substantial notoriety that Respondent surely had actual notice of it. See Compl., at Attached Ex. C. Respondent’s notice can further be inferred by the attempt it made to create confusion with the MICROSOFT mark to commercially gain in bad faith. See Compl., at Attached Ex. E. After Complainant contacted Respondent about transferring the disputed domain name, Respondent took down his website and has since failed to make any active use of it. See Compl., at Attached Ex. F.
B. Respondent
1. Respondent registered the <microsoftdesign.com> domain name on April 3, 2010, and has not submitted a Response to this Complaint.
1. Respondent’s <microsoftdesign.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.
2. Respondent does not have any rights or legitimate interests in the <microsoftdesign.com> domain name.
3. Respondent registered or used the <microsoftdesign.com> 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(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 it has registered its MICROSOFT mark with the USPTO (e.g., Reg. No. 1,200,236, registered July 6, 1982), and that it has rights in the mark under Policy ¶ 4(a)(i). See Compl., at Attached Ex. D, p.32. Panels have found that USPTO registration confers rights in a mark, even when the registration is not from the governmental authority of the country in which the respondent is operating or residing. See Advance Auto Parts, Inc. d/b/a Advance Auto Innovations, LLC v. Privacy Ltd. Disclosed Agent for YOLAPT / Domain Admin, FA 1625582 (Forum July 23, 2015) (holding that Complainant’s USPTO registration is sufficient under Policy ¶ 4(a)(i), even though Respondent reportedly resides in the Isle of Man). Thus, the Panel finds that Complainant has rights in its MICROSOFT mark.
Complainant additionally contends that Respondent’s <miscrosoftdesign.com> domain name is confusingly similar to its MICROSOFT mark. Complainant argues that Respondent has merely added the term “design,” which is descriptive of Complainant’s software design business. See Compl., at Attached Ex. B. Panels have held that a domain name can be confusingly similar to a complainant’s mark under Policy ¶ 4(a)(i) where the disputed domain name has only added a descriptive term and a gTLD to the Complainant’s entire mark. See Novell, Inc. v. Taeho Kim, FA 167964 (Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Accordingly, the Panel holds that Respondent’s <microsoftdesign.com> domain name is confusingly similar to Complainant’s MICROSOFT 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 (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 <microsoftdesign.com> domain name. Complainant asserts that it has not licensed or otherwise authorized Respondent to use its MICROSOFT 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 “Hussain Abuidrees” as the registrant. See Compl., at Attached Ex. A. 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 State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding that because the WHOIS record lists “Dale Anderson” as the registrant of the disputed domain name, the respondent was not commonly known by the <statefarmforum.com> domain name pursuant to Policy ¶ 4(c)(ii)). Thus, the Panel finds that Respondent is not commonly known by <microsoftdesign.com>.
Complainant alleges 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 not currently making any active use of the domain name, and that Respondent was previously using the domain name to fraudulently misrepresent having a relationship with Complainant. The Panel notes Complainant’s submission of the current resolving page at <microsoftdesign.com>. See Compl., at Attached Ex. F. The Panel also notes the alleged screenshots of Respondent’s domain name before it was contacted by Complainant. See Compl., at Attached Ex. E. Panels have held that a respondent does not have rights or legitimate interests in a domain name when they fail to make an active use of it, and that a respondent misrepresenting itself as having an affiliation with the complainant is not a bona fide offering of goods and services or a legitimate noncommercial or fair use. See Am. Broad. Cos., Inc. v. Sech, FA 893427 (Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name); cf. Crow v. LOVEARTH.net, FA 203208 (Forum Nov. 28, 2003) (“It is neither a bona fide offerings [sic] of goods or services, nor an example of a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) & (iii) when the holder of a domain name, confusingly similar to a registered mark, attempts to profit by passing itself off as Complainant . . . .”). Accordingly, the Panel finds that Respondent has no rights or legitimate interests in the disputed domain name under Policy ¶¶ 4(c)(i) and (iii).
Complainant argues that Respondent has registered and is using the <microsoftdesign.com> domain name in bad faith. Complainant argues prior to Complainant contacting Respondent, Respondent was attempting to capitalize on the good-will of Complainant’s MICROSOFT mark, by causing confusion as to the source, sponsorship, affiliation, or endorsement of its resolving website. The Panel notes the alleged website of the disputed domain name as of June 2016. See Compl., at Attached Ex. E (displaying, “Welcome to Microsoft Design Web Design & Marketing. We specialize in beautiful, unique custom websites, search engine optimization (SEO), social media management, and much more.”). Complainant has also provided evidence of the global strength of its MICROSOFT brand and mark. See Compl., at Attached Ex. C. Panels have held that infringing on a protected mark to fraudulently mislead Internet users that a relationship with the complainant exists is bad faith under Policy ¶ 4(b)(iv). See Am. Univ. v. Cook, FA 208629 (Forum Dec. 22, 2003) (“Registration and use of a domain name that incorporates another's mark with the intent to deceive Internet users in regard to the source or affiliation of the domain name is evidence of bad faith.”). As such, the Panel holds that Respondent’s use of the <microsoftdesign.com> domain name was in bad faith pursuant to Policy ¶ 4(b)(iv).
Complainant further contends that Respondent had actual notice of its rights in the MICROSOFT mark when it registered the <microsoftdesign.com> domain name, and that such notice constitutes bad faith under Policy ¶ 4(a)(iii). Complainant cites the worldwide fame that the MICROSOFT mark has achieved, the descriptive nature of the domain name, and the fact that Respondent’s website references Complainant’s products all as evidence that Respondent had actual notice of their rights in the mark. See Compl., at Attached Exs. C, E. 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 enumerated 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.”). Thus, the Panel finds that Respondent had actual notice of Complainant’s rights in the MICROSOFT mark pursuant to Policy ¶ 4(a)(iii).
Lastly, Complainant argues that Respondent is not currently making an active use of the disputed domain name, and that an inactive holding of a confusingly similar domain name is in bad faith under Policy ¶ 4(a)(iii). Complainant claims that after it contacted Respondent about transferring <microsoftdesign.com>, Respondent removed all the content from the website. The Panel notes Complainant’s screen shots when attempting to access the disputed domain. See Compl., at Attached Ex. F. Prior panels have held that the inactive holding of a disputed domain name can constitute bad faith under Policy ¶ 4(a)(iii). See Microsoft Corporation v. Jordin Barth, FA1211001473274 (Forum Jan. 14, 2013) (finding that the respondent’s failure to make an active use of the disputed domain name from the time it was registered until the time it was contacted by the complainant’s counsel indicated that the respondent had registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii)). Therefore, the Panel holds that Respondent registered and is using the <microsoftdesign.com> domain name in bad faith.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <microsoftdesign.com> domain name be TRANSFERRED from Respondent to Complainant.
John J. Upchurch, Panelist
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