Microsoft Corporation v. ANSHUMAN SATIA
Claim Number: FA1711001756812
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is ANSHUMAN SATIA (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <billingmicrosofts.com> and <commercmicrosoft.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she 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 here as Panelist.
Complainant submitted a Complaint to the Forum electronically November 2, 2017; the Forum received payment November 2, 2017.
On November 2, 2017, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <billingmicrosofts.com> and <commercmicrosoft.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. GoDaddy.com, LLC verified that Respondent is bound by the GoDaddy.com, LLC 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 November 6, 2017, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of November 27, 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 postmaster@billingmicrosofts.com, postmaster@commercmicrosoft.com. Also on November 6, 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.
Respondent filed a timely Response and it was received and determined to be complete November 27, 2017.
Complainant established that it has protected rights and legitimate interests in its famous mark.
Respondent has no rights or legitimate interests in the mark and has no right to use Complainant’s protected famous mark in any way.
Respondent registered domain names that contained Complainant’s protected mark in its entirety, adding words that no not extinguish the domain names, which remain confusingly similar to Complainant’s protected mark.
Respondent registered and used the domain names 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.
On November 28, 2017, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Hon. Carolyn Marks Johnson to sit here as Panelist.
Having reviewed the communications record, 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant’s Contentions in this Proceeding:
Since 1975, Complainant has been a worldwide leader in software, services, and solutions that help people and businesses realize their full potentiality. Complainant registered the MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”)(e.g., Reg. No. 1,200,236, registered Jul. 6, 1982). See Compl. Ex. D. Respondent’s <billingmicrosofts.com> and <commercmicrosoft.com> are confusingly similar to the MICROSOFT mark because they incorporate the mark in its entirety, add the descriptive or generic terms “billing” and “commerc” (an apparent misspelling of the word “commerce”), add an “s” to the mark, and add the most common generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interests in <billingmicrosofts.com> and <commercmicrosoft.com> because Respondent is not commonly known by the disputed domain names, as the WHOIS information for the <billingmicrosofts.com> and <commercmicrosoft.com> domain names identify the registrant as “Anshuman Satia.” See Compl. Ex. A. Respondent is also not affiliated with Complainant, and is not licensed, or authorized to use the MICROSOFT mark. Additionally, Respondent does not make a bona fide offering of goods or services nor a legitimate noncommercial or fair use of <billingmicrosofts.com> and <commercmicrosoft.com>. Rather, Respondent attempts to pass off as Complainant to offer competing computer technical assistance while using the MICROSOFT mark to drive traffic to its domain. See Compl. Ex. E & F.
Respondent registered and used the <billingmicrosofts.com> and <commercmicrosoft.com> domain names in bad faith. Respondent disrupts Complainant’s business by operating a site that appears to provide general technical support and billing services, thus attempting to compete with Complainant’s services. See Compl. Ex. E and F. Additionally, Respondent attempts to attract users, likely for commercial gain, and confuses users as to source, sponsorship, affiliation, or endorsement of Respondent’s sites by displaying Complainant’s prominent marks and logos in connection to a site that offers competing technical computer services. See Compl. Ex. E and F. Further, Respondent had actual knowledge of Complainant’s rights to the MICROSOFT mark as shown by the fame and notoriety associated with the mark, as well as the content displayed on the resolving webpages for the disputed domain names. See Compl. Ex. E & F.
B. Respondent’s Contentions in Response in this Proceeding:
Respondent’s <billingmicrosofts.com> and <commercmicrosoft.com> are not confusingly similar to the Complainant’s mark because they contain Complainant’s mark, but also contain additional words such as “billing” and “commerce” to differentiate them from the MICROSOFT mark.
Respondent should be considered to have rights or legitimate interests in the <billingmicrosofts.com> and <commercmicrosoft.com> domain names. Respondent only deals with clients that Complainant has rejected and Respondent offers services to these individuals. Furthermore, there is a disclaimer on Respondent’s page that states: “The website is third party company and has nothing to do with the brand names and the trademarks.” See Compl. Ex. E & F.
Respondent did not register and use the <billingmicrosofts.com> and <commercmicrosoft.com> domain names in bad faith. While Respondent may offer similar services, Respondent only deals with clients that Complainant declined and could not support or entertain. Further, Respondent left a disclaimer on the resolving webpages for the domain names in order to not mislead or tarnish the trademark at issue. See Compl. Ex. E & F.
C. Complainant’s Additional Submission:
Complainant filed an Additional Submission, pointing out that Respondent argues that the domain names are not identical to the MICROSOFT trademark because they contain “billing” and “commerce” which makes them different from the MICROSOFT trademark. Complainant urged that the disputed domain names continue to be confusingly similar to the MICROSOFT trademark despite Respondent’s argument that it included generic or descriptive terms such as “billing” or “commerce” to the trademark in the domain name. Complainant notes that earlier cases found that the addition of the term “billing” or “commerce” to a mark is not sufficient to distinguish the domain from the trademark. See Microsoft Corp. v. PURNA BANIYA/GAURAV/Harkesh/Manoj/Sheker FA 1597557 (Forum Feb. 18, 2015) (finding inter alia “commercemicrosoft.com,” “billingmicrosoft.com,” hotmailbillingsupport.com,” “microsoftofficebilling.com,” and “xboxbilling.com” to be confusingly similar to Complainant’s MICROSOFT, HOTMAIL and XBOX marks); athenahealth, Inc. v. August Zabbo, FA 1690072 (Forum, Oct. 4, 2016)(finding <athenabilling.com> confusingly similar to the ATHENA mark).
Complainant also notes that Respondent argues that he has rights or legitimate interests in the disputed domain names because he paid for the domain names and the domains are his property. Complainant points out that Respondent fails to address the clear evidence of the use of Microsoft’s logos on the sites and the numerous references to Microsoft, which give the impression of sites sponsored by or affiliated with Microsoft, including the use of the Microsoft Certified Partner logo. Respondent does not dispute the evidence provided by Complainant regarding its lack of rights or legitimate interests in the disputed domain name. Instead, Respondent argues that it places disclaimers on the sites. As noted in a prior case:
“Specifically, the Panel notes that once the Internet user has been diverted to Respondent’s website, the damage has already been done, and the disclaimer will not change the outcome. Therefore, the Panel finds that the use of a disclaimer by Respondent fails to constitute evidence of Respondent’s rights or legitimate interests under Policy ¶ 4(a)(ii).”
Complainant also added that Respondent argues that he uses the disputed domain names to offer computer services that Microsoft does not provide and further that the resolving sites contain disclaimers that state: “The website is third party company and has nothing to do with the brand names and the trademarks.” However, disclaimers have uniformly been found not to mitigate any Internet user confusion that may exist. In addition to disclaimers having no impact on the question of rights and legitimate interests in the domain names, disclaimers have also been found to fail to mitigate Respondent’s bad faith registration and use under Policy ¶ 4(a)(iii). Microsoft Corp. v. Instantxboxlive.com c/o Anisha Sheth, FA 1235725 (Forum, Jan. 13, 2009); Auxilium Pharm., Inc. v. Patel, FA 642141 (Forum Apr. 6, 2006) (“Respondent’s use of a disclaimer on its website does not mitigate evidence of bad faith registration and use under Policy ¶ 4(a)(iii).”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp., AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial interest confusion despite disclaimer and link to the complainant’s website on the respondent’s website).
The Forum received the Additional Submission November 28, 2017, and determined that it was timely. The Panel notes that these submissions and arguments set out above were persuasive and contribute to the strength of the result.
Identical or Confusingly Similar:
Complainant registered the MICROSOFT mark with the USPTO (e.g., Reg. No. 1,200,236, registered Jul. 6, 1982). See Compl. Ex. D. Registration of a mark with the USPTO sufficiently confirms a complainant’s rights in a mark for the purposes of 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 at Exhibit 1, the Panel agrees that it has sufficiently demonstrated its rights per Policy ¶ 4(a)(i).”). Accordingly, the Panel finds that Complainant established rights in the MICROSOFT mark.
Complainant next argues that Respondent’s <billingmicrosofts.com> and <commercmicrosoft.com> domain names are confusingly similar to Complainant’s mark because they incorporate the mark in its entirety, add the descriptive or generic terms “billing” and “commerc” (an apparent misspelling of the word “commerce”), add an “s” to the mark, and add the most common gTLD “.com.” Similar changes in a registered mark have failed to sufficiently distinguish a domain name for the purposes of Policy ¶4(a)(i). See Microsoft Corporation v. Thong Tran Thanh, FA 1653187 (Forum Jan. 21, 2016) (determining that confusing similarity exist where [a disputed domain name] contains 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 its contained trademark are insufficient to differentiate one from the other for the purposes of the Policy.); see also Trip Network Inc. v. Alviera, FA 914943 (Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel therefore finds that the <billingmicrosofts.com> and <commercmicrosoft.com> domain names are confusingly similar to the MICROSOFT mark under Policy ¶4(a)(i).
The Panel finds that Respondent registered disputed domain names that are confusingly similar to Complainant’s protected mark; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights or 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 (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 <billingmicrosofts.com> and <commercmicrosoft.com> domain names. Where no response is filed, information included in the WHOIS and any other assertions by a complainant regarding the nature of its relationship with a respondent may be considered. See Braun Corp. v. Loney, FA 699652 (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). Although a Response was filed in this case, the WHOIS identifies “Anshuman Satia” as the registrants for both domain names. See Compl. Ex. A. Complainant asserts that no evidence exists to show that Respondent has ever been legitimately known by the MICROSOFT mark. Panels use such assertions as evidence of lacking rights or legitimate interests. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the disputed domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration). Complainant alleges that Respondent has never been legitimately affiliated with Complainant, has never been known by the domain names prior to their registration, and that Complainant has not given Respondent permission to use the MICROSOFT mark in any way. Accordingly, without evidence to the contrary, the Panel agrees that Respondent is not commonly known by the <billingmicrosofts.com> and <commercmicrosoft.com> domain names under Policy ¶ 4(c)(ii).
Further, Complainant argues that Respondent also doesn’t use the disputed domain names in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because it attempts to pass off as Complainant and offer competing services for its own commercial gain. Passing off and offering competing services can evidence a lack of a bona fide offering of goods or services or a legitimate noncommercial or fair use. See Mortgage Research Center LLC v. Miranda, FA 993017 (Forum July 9, 2007) (“Because [the] respondent in this case is also attempting to pass itself off as [the] complainant, presumably for financial gain, the Panel finds the respondent is not using the <mortgageresearchcenter.org> 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).”); see also Upwork Global Inc. v. Shoaib Malik, FA 1654759 (Forum February 3, 2016) (finding that Complainant provides freelance talent services, and that Respondent competes with Complainant by promoting freelance talent services through the disputed domain’s resolving webpage, which is neither a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use). Complainant provides screenshots of the resolving domains, which appear to be support and billing websites and contain Complainant’s MICROSOFT mark and design logo. See Compl. Ex. E & F. Accordingly, the Panel finds that Respondent competes with Complainant and makes use of Complainant’s mark when making its rights and legitimate interests determination under Policy ¶¶ 4(c)(i) & (iii).
The Panel finds that Respondent has no rights to or legitimate interests in the disputed domain names containing Complainant’s protected marks; Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).
Registration and Use in Bad Faith:
Complainant argues that Respondent registered and uses the <billingmicrosofts.com> and <commercmicrosoft.com> domain names in bad faith by disrupting Complainant’s business and creating a likelihood for confusion as to the source, sponsorship, affiliation, or endorsement of the disputed domain name to commercially benefit by offering competing goods or services. Using a disputed domain name that disrupts a complainant’s business and trades upon the goodwill of a complainant for commercial gain can evidence bad faith under Policy ¶¶ 4(b)(iii) & (iv). See DatingDirect.com Ltd. v. Aston, FA 593977 (Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Xylem Inc. and Xylem IP Holdings LLC v. YinSi BaoHu YiKaiQi, FA1504001612750 (Forum May 13, 2015) (“The Panel agrees that Respondent’s use of the website to display products similar to Complainant’s, imputes intent to attract Internet users for commercial gain, and finds bad faith per Policy ¶ 4(b)(iv).”). As noted previously, Complainant provides screenshots of the resolving domains, which appear to be support and billing websites and contain Complainant’s MICROSOFT mark and design logo. See Compl. Ex. E & F. The Panel considers Complainant’s arguments of disruption and attraction for commercial gain when analyzing Respondent’s alleged bad faith under Policy ¶¶ 4(b)(iii) & (iv).
Further, Complainant claims that Respondent had actual knowledge of Complainant’s MICROSOFT mark. A finding of actual knowledge can evidence bad faith under Policy ¶ 4(a)(iii). See Univision Comm'cns Inc. v. Norte, FA 1000079 (Forum Aug. 16, 2007) (rejecting the respondent's contention that it did not register the disputed domain name in bad faith since the panel found that the respondent had knowledge of the complainant's rights in the UNIVISION mark when registering the disputed domain name). Complainant contends that Respondent must have had actual knowledge of Complainant’s rights to the MICROSOFT mark as shown by the fame and notoriety associated with the mark, as well as the content displayed on the resolving webpages for the disputed domain names. See Compl. Ex. E & F. The Panel finds actual knowledge based on Complainant’s argument and finds that Respondent’s use and the content, including Complainant’s logo support this finding of actual knowledge of Complainant’s mark, demonstrating bad faith under Policy ¶ 4(a)(iii).
The Panel finds that Respondent acted in bad faith in registering and using the disputed domain names containing Complainant’s protected mark in its entirety; 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 <billingmicrosofts.com> and <commercmicrosoft.com> domain names be TRANSFERRED from Respondent to Complainant.
Hon. Carolyn Marks Johnson, Panelist
Dated: December 12, 2017
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