Microsoft Corporation v. WICKY BLOWN / WB
Claim Number: FA1704001725439
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, United States. Respondent is WICKY BLOWN / WB (“Respondent”), Great Britain.
REGISTRAR AND DISPUTED DOMAIN NAMES
The two domain names here at issue are <microsoftonlinestores.com> and <microsoftlicensekey.com>, both registered with Enom, Inc.
The undersigned certifies that he has acted independently and impartially, and, to the best of his knowledge, has no conflict of interests in serving as Panelist in this proceeding.
Terry F. Peppard as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2017; the Forum received payment on April 5, 2017.
On April 6, 2017 and April 11, 2017, Enom, Inc. confirmed by e-mail to the Forum that the <microsoftonlinestores.com> and <microsoftlicensekey.com> domain names are 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 April 12, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 2, 2017 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 the attention of postmaster@microsoftonlinestores.com, postmaster@microsoftlicensekey.com. Also on April 12, 2017, 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 5, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Terry F. Peppard as sole Panelist in this proceeding.
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 a response from Respondent.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Operating under the name and mark MICROSOFT, Complainant makes and markets worldwide computer software and related products and services.
Complainant holds a registration for the MICROSOFT service mark, which is on file with the United States Patent and Trademark Office (“USPTO”) as Registry No. 2,198,155, registered October 20, 1998.
Respondent registered the domain names <microsoftonlinestores.com> and <microsoftlicensekey.com> on March 3, 2015, and May 11, 2016, respectively.
The domain names are confusingly similar to Complainant’s MICROSOFT mark.
Respondent has not been commonly known by the domain names.
Respondent is not sponsored by or affiliated with Complainant in any way.
Complainant has not given Respondent permission to use the MICROSOFT mark in a domain name.
Respondent uses the domain names to pass itself off as Complainant in that the resolving webpages for both domain names display Complainant’s marks and designs, along with images of Complainant’s products, while the resolving webpage for the domain name <microsoftonlinestores.com> also contains the “Microsoft Certified Partner” logo.
Respondent uses the websites resolving from the domain names to sell apparently counterfeit products for Respondent’s commercial gain.
Respondent has no rights to or legitimate interests in the domain names.
Respondent’s use of the domain names confuses Internet users by creating the false impression that their resolving websites are sponsored by or otherwise endorsed by Complainant.
Respondent knew of Complainant and its rights in the MICROSOFT mark when it registered the domain names.
Respondent registered and uses the domain names in bad faith.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain names registered by Respondent are confusingly similar to a service mark in which Complainant has rights; and
(2) Respondent has no rights to or legitimate interests in respect of either of the domain names; and
(3) The same domain names were registered and are being used by Respondent 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:
i. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
ii. Respondent has no rights or legitimate interests in respect of the domain name; and
iii. the domain name has been registered and is being used by Respondent in bad faith.
In view of Respondent's failure to submit a response, the Panel will, pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules, decide this proceeding on the basis of Complainant's undisputed representations, and, pursuant to paragraph 14(b) of the Rules, draw such inferences as it deems appropriate. The Panel is entitled to accept all reasonable allegations and inferences set out 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) (finding that a respondent’s failure to respond allows all reasonable inferences of fact in the allegations of a UDRP complaint to be deemed true). See also Talk City, Inc. v. Robertson, D2000-0009 (WIPO February 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 MICROSOFT service mark sufficient for purposes of Policy ¶ 4(a)(i) by reason of its registration of the mark with a national trademark authority, the USPTO. See T-Mobile USA, Inc. dba MetroPCS v. Ryan G Foo / PPA Media Services, FA 1627542 (Forum August 9, 2015) (finding that a UDRP complainant had rights in the METROPCS mark under ¶ 4(a)(i) through its registration of that mark with the USPTO).
This is true without regard to whether Complainant’s rights in its mark arise from registration of the mark in a jurisdiction (here the United States) other than that in which Respondent resides or does business (here Great Britain). See, for example, W.W. Grainger, Inc. v. Above.com Domain Privacy, FA 1334458 (Forum August 24, 2010):
[T]he Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.
Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a review of the record that Respondent’s <microsoftonlinestores.com> and <microsoftlicensekey.com> domain names are confusingly similar to Complainant’s MICROSOFT mark. Both domain names incorporate the mark in its entirety, merely adding the generic Top Level Domain (“gTLD”) “.com” and generic terms, “online stores” in one case and “license key” in the other, which are descriptive of aspects of Complainant’s business. These alterations of the mark, made in forming the domain names, do not save them from the realm of confusing similarity under the standards of the Policy. See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum January 21, 2016) (finding that confusing similarity exists where a disputed domain name contains a UDRP Complainant’s entire mark and differs only by the addition of a generic or descriptive phrase and top-level domain, the differences between the domain name and the mark from which it was derived being insufficient to distinguish one from the other for purposes of the Policy.).
See also Trip Network Inc. v. Alviera, FA 914943 (Forum March 27, 2007) (concluding that the affixation of a gTLD to the mark of another in creating a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). This is because every domain name requires a gTLD.
Under Policy ¶ 4(a)(ii), Complainant must make a prima facie showing that Respondent lacks rights to and legitimate interests in a disputed domain name, whereupon the burden shifts to Respondent to show that it does have such rights or interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum August 18, 2006) (finding that a UDRP complainant must make a prima facie case that a respondent lacks rights to or legitimate interests in a disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to that respondent to show that it does have such rights or interests). See also AOL LLC v. Gerberg, FA 780200 (Forum September 25, 2006):
Complainant must … 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, … the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.
Complainant has made out a sufficient prima facie showing under this head of the Policy. Respondent’s failure to respond to the Complaint therefore permits us to infer that Respondent does not have rights to or legitimate interests in the disputed domain name. See Desotec N.V. v. Jacobi Carbons AB, D2000-1398 (WIPO December 21, 2000) (finding that a respondent’s failure to respond to a UDRP complaint allows a presumption that a complainant’s allegations are true unless clearly contradicted by the evidence). Nonetheless, we will examine the record before us, in light of the several considerations set out in Policy ¶ 4(c), to determine whether there is in it any basis for concluding that Respondent has rights to or legitimate interests in the contested domain names which are cognizable under the Policy.
We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by either of the challenged
<microsoftonlinestores.com> and <microsoftlicensekey.com> domain names, and that Complainant has not authorized Respondent to use the MICROSOFT mark in any domain name. Moreover, the pertinent WHOIS information identifies the registrant of the domain names only as “WICKY BLOWN/WB,” which does not resemble either of them. On this record, we conclude that Respondent has not been commonly known by either of the contested domain names so as to have acquired rights to or legitimate interests in them within the purview of Policy ¶ 4(c)(ii). See, for example, State Farm Mutual Automobile Insurance Company v. Dale Anderson, FA1504001613011 (Forum May 21, 2015) (concluding, under Policy ¶ 4(c)(ii), that because the relevant WHOIS record identified “Dale Anderson” as the registrant of a disputed <statefarmforum.com> domain name, a respondent failed to show that it was commonly known by that domain name). To the same effect, see also Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding, under Policy ¶ 4(c)(ii), that a respondent was not commonly known by a disputed domain name where a UDRP complainant had not authorized that respondent to incorporate its mark in a domain name registration).
We next observe that Complainant asserts, without objection from Respondent, that Respondent uses both of the domain names <microsoftonlinestores.com> and <microsoftlicensekey.com> to attempt to profit by passing itself off as Complainant. This employment of the domain names is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use of them under Policy ¶ 4(c)(iii). See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007):
Because respondent in this case is also attempting to pass itself off as complainant, presumably for financial gain, the Panel finds the respondent is not using the … domain name for 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).
As to Complainant’s further assertion that Respondent uses the domain names to sell presumably counterfeit products, see also Wolverine World Wide, Inc. v. Fergus Knox, FA 1627751 (Forum August 19, 2015) (finding no bona fide offering of goods or services or legitimate noncommercial or fair use was evident where a respondent used the website resolving from a challenged domain name to sell products branded with a UDRP complainant’s mark, and which were either counterfeit products or legitimate products of that complainant being resold without its authorization).
Therefore, the Panel finds that Complainant has satisfied the proof requirements of Policy ¶ 4(a)(ii).
We are persuaded by the evidence that Respondent’s use of the domain names
<microsoftonlinestores.com> and <microsoftlicensekey.com>, as alleged in the Complaint, disrupts Complainant’s business. Under Policy ¶ 4(b)(iii), this stands as proof of Respondent’s bad faith in registering and using the domain names.
See Xiaomi Inc. v. Tanapong Kotipan / Omega Gadget, FA1505001621199 (Forum July 10, 2015):
Use of a domain name [that is confusingly similar to the mark of another in order] to offer counterfeit goods does consist of bad faith under Policy ¶ 4(b)(iii).
We are also convinced by the evidence that Respondent’s use of the domain names <microsoftonlinestores.com> and <microsoftlicensekey.com>, which are confusingly similar to Complainant’s MICROSOFT service mark, is an attempt by Respondent to profit by the confusion thus caused among Internet users as to the possibility of Complainant’s association with the domain names and their resolving websites. Under Policy ¶ 4(b)(iv), this stands as further proof of Respondent’s bad faith in registering and using the domain names. See
MetroPCS, Inc. v. Robertson, FA0609000809749 (Forum November 13, 2006), the panel there finding that a UDRP respondent incorporated a complainant’s trademark into disputed domain names and used images of that complainant’s trademarks and products at the resolving websites, thus creating the false impression that those sites were sponsored by or otherwise endorsed by that complainant, and therefore that:
This is precisely the sort of conduct that falls under Policy ¶ 4(b)(iv) and thus evidences Respondent’s bad faith registration and use of the disputed domain names.
Finally, under this head of the Policy, it is apparent that Respondent knew of Complainant and its rights in its MICROSOFT mark when Respondent registered the <microsoftonlinestores.com> and <microsoftlicensekey.com> domain names. See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum August 16, 2007) (rejecting a respondent's contention that it did not register a disputed domain name in bad faith where a panel found that a UDRP respondent knew of that complainant's rights in its mark when registering the domain name).
The Panel thus finds that Complainant has met its obligations of proof under Policy ¶ 4(a)(iii).
Complainant having established all three elements required to be proven under the ICANN Policy, the Panel concludes that the relief requested must be, and it is hereby, GRANTED.
Accordingly, it is Ordered that the domain names <microsoftonlinestores.com> and <microsoftlicensekey.com> be TRANSFERRED forthwith from Respondent to Complainant.
Terry F. Peppard, Panelist
Dated: May 8, 2017
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