Microsoft Corporation v. RIZA ASLAN
Claim Number: FA1807001796656
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is RIZA ASLAN (“Respondent”), Turkey.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoft-yazilim.com>, registered with FBS 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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 13, 2018; the Forum received payment on July 13, 2018. The Complaint was received in both Turkish and English.
On July 16, 2018, FBS Inc. confirmed by e-mail to the Forum that the <microsoft-yazilim.com> domain name is registered with FBS Inc. and that Respondent is the current registrant of the name. FBS Inc. has verified that Respondent is bound by the FBS 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 July 19, 2018, the Forum served the Turkish language Complaint and all Annexes, including a Turkish language Written Notice of the Complaint, setting a deadline of August 8, 2018 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@microsoft-yazilim.com. Also on July 19, 2018, the Turkish 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 August 13, 2018, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Paul M. DeCicco 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 contends as follows:
Complainant, Microsoft Corporation, is a worldwide leader in software, services, and solutions that help people and businesses realize their full potential.
Complainant has rights in the MICROSOFT mark based upon its registration of the mark with the United States Patent and Trademark Office (“USPTO”).
Respondent’s <microsoft-yazilim.com> domain name is confusingly similar to Complainant’s mark as Respondent incorporates the entire mark in the domain name plus the generic/descriptive term “Yazilim” (Turkish for “software”) and the “.com” generic top-level domain (“gTLD”).
Respondent lacks rights and legitimate interests in the domain name as Respondent is not commonly known by the domain name and is not licensed to use Complainant’s mark in any way. Respondent fails to use the domain name in connection with a bona fide offering of goods and services or for a legitimate noncommercial or fair use. Instead, Respondent uses the disputed domain name to pass itself off as Complainant and to offer goods and services.
Respondent registered and uses the <microsoft-yazilim.com> domain name in bad faith. Respondent uses the at-issue domain name to pass itself off as Complainant and offers web hosting and payment solutions for Turkish consumers. Furthermore, Respondent had actual knowledge of Complainant’s rights in the mark prior to registration of the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns a USPTO registered trademark for MICROSOFT.
Respondent is not affiliated with Complainant and had not been authorized to use the MICROSOFT mark in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in MICROSOFT.
Respondent uses the <microsoft-yazilim.com> domain name to pass itself off as Complainant in furtherance of promoting commercial services.
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.”).
Preliminary Issue: Language of Proceeding
Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Turkish language Complaint and Commencement Notification, and, absent a Response, determines that the remainder of the proceedings may be conducted in English. See TRIA Beauty, Inc. v. Xu Bao Rong c/o Xu Bao, FA 1336978 (Forum Aug. 30, 2010) (“Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Chinese language Complaint and Commencement Notification and, absent a Response, determines that the remainder of the proceedings may be conducted in English.”)
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO trademark registration for the MICROSOFT mark evidences Complainant’s rights in such mark for the purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”).
The <microsoft-yazilim.com> domain name incorporates Complainant’s entire MICROSOFT mark. The mark is followed by a hyphen and the Turkish descriptive term “yazilim,” which translates to “software” in English. The top level domain name “.com” appended thereto. The resulting differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish the two for the purposes of the Policy. In fact, Respondent’s incorporation of the term “yazilim” (“software” in English) into the domain name only adds to any confusion between the domain name and Complainant’s mark as it suggest Complainant’s primary business area. Therefore, the Panel finds that Respondent’s <microsoft-yazilim.com>domain name is confusingly similar to the Complainant’s MICROSOFT mark under Policy ¶4(a)(i). See Illumina, Inc. v. Jacquie Ross / Illumina, Inc., FA 1780093 (Forum May 7, 2018) (“In fact the inclusion of the term “us” in the domain name is somewhat suggestive of Respondent’s United States business operations. Therefore, incorporating the term “us” into the at-issue domain name only adds to any confusion resulting from the use of Complainant’s ILLUMINA trademark in the domain name.”); see also, Innomed Techs., Inc. v. DRP Servs., FA 221171 (Forum Feb. 18, 2004) (finding that hyphens and top-level domains are irrelevant for purposes of the Policy). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶ 4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy ¶ 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “RIZA ASLAN” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the <microsoft-yazilim.com> domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Further, Respondent uses the disputed domain name to pass itself off as Complainant. Respondent’s <microsoft-yazilim.com> website offers information specifically related to Complainant’s products and services and also displays Complainant’s trademark while offering web hosting and payment related services. Respondent’s use of the confusingly similar domain name in this manner is neither a Policy ¶ 4(c)(i) bona fide offering of goods or services, nor a Policy ¶ 4(c)(iii) legitimate noncommercial or fair use of the at-issue domain name. See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also General Motors LLC v. MIKE LEE, FA 1659965 (Forum Mar. 10, 2016) (finding that “use of a domain to sell products and/or services that compete directly with a complainant’s business does not constitute 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).”).
In light of the foregoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and interests in respect of the at-issue domain name under Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below Policy ¶ 4(b) bad faith circumstances are present and there is additional non-Policy ¶ 4(b) evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As touched on above regarding rights and interests, Respondent uses the <microsoft-yazilim.com> domain name to pass itself off as Complainant, offer information specifically related to Complainant’s products and services, and offer web hosting and payment services. Respondent’s thus demonstrates bad faith registration and use of the at-issue domain name per Policy ¶ 4(b)(iv). See Bittrex, Inc. v. Wuxi Yilian LLC, FA 1760517 (Forum Dec. 27, 2017) (finding bad faith per Policy ¶ 4(b)(iv) where “Respondent registered and uses the <lbittrex.com> domain name in bad faith by directing Internet users to a website that mimics Complainant’s own website in order to confuse users into believing that Respondent is Complainant, or is otherwise affiliated or associated with Complainant.”); 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).”)
Moreover, Respondent had actual knowledge of Complainant’s rights in the MICROSOFT trademark before registering the <microsoft-yazilim.com> domain name. Respondent’s prior knowledge is evident from the notoriety of Complainant’s MICROSOFT trademark and from the fact that Respondent displays Complainant’s MICROSOFT trademark on the <microsoft-yazilim.com> website. Registering and using a confusingly similar domain name with knowledge of Complainant’s rights in such domain name indicates bad faith registration and use pursuant to Policy ¶4(a)(iii). See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (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 <microsoft-yazilim.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: August 15, 2018
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