Microsoft Corporation v. Romain Chanas
Claim Number: FA1907001852644
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Romain Chanas (“Respondent”), Morocco.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <officepro-365.com>, registered with Wix.com Ltd..
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.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 18, 2019; the Forum received payment on July 18, 2019.
On July 22, 2019, Wix.com Ltd. confirmed by e-mail to the Forum that the <officepro-365.com> domain name is registered with Wix.com Ltd. and that Respondent is the current registrant of the name. Wix.com Ltd. has verified that Respondent is bound by the Wix.com Ltd. 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 23, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 12, 2019 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@officepro-365.com. Also on July 23, 2019, 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 August 14, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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 is a worldwide leader in software, services and solutions that help people and businesses realize their full potential. Complainant has rights in the trademark OFFICE 365 through its use in commerce since 2010 and its trademark registrations with the United States Patent and Trademark Office (“USPTO”) dating back to 2013. Respondent’s <officepro-365.com> domain name, registered on June 14, 2019, is confusingly similar to Complainant’s OFFICE 365 mark as Respondent incorporates the mark in its entirety, but with the insertion of the generic/descriptive term “pro” as well as the “.com” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <officepro-365.com> domain name. Respondent is not licensed or otherwise authorized to use Complainant’s OFFICE 365 mark nor is it commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the disputed domain name to pass itself off as Complainant via the email distribution of fake invoices for a “Business Software Package”. Further, Respondent uses the disputed domain name to promote its own commercial business of selling unrelated computer software without Complainant’s authorization.
Respondent registered and uses the <officepro-365.com> domain name in bad faith. Respondent attempts to disrupt Complainant’s business by sending false invoices to Complainant’s customers. Respondent further uses the disputed domain name to promote and sell unrelated computer software, presumably for commercial gain.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is 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:
(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 set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the OFFICE 365 mark based upon registration of the mark with the USPTO. Registration of a mark with the USPTO is sufficient to establish rights in that mark. See Home Depot Product Authority, LLC v. Samy Yosef / Express Transporting, FA 1738124 (Forum July 28, 2017) (finding that registration with the USPTO was sufficient to establish the complainant’s rights in the HOME DEPOT mark). The Panel therefore holds that Complainant’s registration of the OFFICE 365 mark with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <officepro-365.com> domain name is confusingly similar to the OFFICE 365 mark, as the name incorporates the mark in its entirety, along with the generic/descriptive term “pro” and a “.com” gTLD. While Complainant does not specifically assert this, the disputed domain name also contains a hyphen. In any event, such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Ant Small and Micro Financial Services Group Co., Ltd. v. Ant Fin, FA 1759326 (Forum Jan. 2, 2018) (“Respondent’s <antfinancial-investorrelations.com> Domain Name is confusingly similar to Complainant’s ANT FINANCIAL mark. It incorporates the mark entirely. It adds a hyphen, the descriptive terms “investor relations,” and the “.com” gTLD, but these additions are insufficient to distinguish the Domain name from complainant’s mark for the purposes of Policy ¶ 4(a)(i).”) The Panel notes that Complainant’s USPTO registrations for its trademark contain the limitation that “NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE ‘OFFICE’, APART FROM THE MARK AS SHOWN”. Notwithstanding this disclaimer, Complainant does have rights to the full mark OFFICE 365 and so the <officepro-365.com> domain name, by inserting the term “pro-“ in the middle of Complainant’s OFFICE 365 mark, is confusingly similar to the mark per the threshold standard of Policy ¶ 4(a)(i).
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). Should it succeed in that effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“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”).
Complainant argues that Respondent has no rights or legitimate interests in the <officepro-365.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the OFFICE 365 mark in any way. WHOIS information is often used to support a finding that a respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as “Usama Ramzan,” which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”) The WHOIS information of record identifies the registrant of the at-issue domain name as “Romain Chanas,” and no information in the record indicates that Respondent is known otherwise or that it is authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds, under Policy ¶ 4(c)(ii), that Respondent has not been commonly known by the <officepro-365.com> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <officepro-365.com> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain name to send fake invoices to Complainant’s customers, by email, for payment on a bundle of software products. Use of a disputed domain name to pass oneself off as a complainant in furtherance of a scheme involving false or misleading claims for payment may not amount to a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Cubist Pharmaceuticals, Inc. v. Gregory Stea, FA1403001550388 (Forum May 5, 2014) (“Respondent is using the domain name in emails to various IT hardware suppliers in an attempt to impersonate Complainant and defraud its customers. The domain name also resolved to a website similar to Complainant's website. The Panel found that such actions precluded a bona fide offer or fair use.”). Complainant provides an example of the emails that were sent to Complainant’s customers. The Panel notes that nowhere on this document does the word “invoice” appear nor do terms such as “Payment Due” or “Balance Owed”. However, to this Panel’s eye, the email is otherwise clearly presented, both graphically and in its textual layout, to imitate the look of an invoice. It also contains the phrase “Payement terms – 14 days net”, “Kindly make your payment within 14 days in favor of our company”, and “Thank You. We Appreciate Your Business”. There does appear language on the form that states “This is a solicitation for the order of goods, services or both and not a bill, invoice or statement of account due” but it appears in a type font so small that it was not legible to the Panel without significantly enlarging the image of Respondent’s email. As such, it seems that this language appears on the email, not to clearly alert the recipient to its true nature, but to give Respondent cover should its motives be questioned. Upon a preponderance of the evidence, and in the absence of any Response or other submission by the Respondent, the Panel finds that Complainant makes at least a prima facie case that its OFFICE 365 mark is misused in Respondent’s solicitation that is made to appear as an invoice. Therefore, the Panel finds that Respondent fails to use the disputed domain name for a bona fide offering of goods or services or for a legitimate noncommercial or fair use per Policy ¶¶ 4(c)(i) or (iii).
Additionally, Complainant contends that Respondent’s lack of rights or legitimate interests in the <officepro-365.com> domain name as demonstrated by its use of the domain name to offer and sell unrelated computer software. Use of a disputed domain name to offer unrelated goods or services in connection with a complainant’s mark may not be considered to be a bona fide offering of goods or services or for a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii). See Spike's Holding, LLC v. Nexperian Holding Limited, FA 1736008 (Forum July 21, 2017) (“Using a confusingly similar domain to display unrelated content can evince a lack of a bona fide offering of goods or services or legitimate noncommercial or fair use… The Panel therefore finds that Respondent’s unrelated use of the <finishnline.com> domain name evinces a lack of rights and legitimate interests under Policy ¶ 4(c)(i) & (iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Forum Sept. 14, 2006) (finding that the respondent’s use of the complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s own website for commercial gain does not constitute either 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)). The email solicitation sent by Respondent does mention “CRM Business Software Package” but few further details are provided. Further, no screenshots or other references to the website that appears at the <officepro-365.com> domain name are provided. Nevertheless, as Complainant has made a prima facie case and Respondent has not appeared in this proceeding, the Panel has no basis upon which to determine whether Respondent has any rights or legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) or (iii) based upon its sale of any software of any kind.
A threshold question in the bad faith analysis of Policy ¶ 4(a)(iii) is whether a respondent had actual knowledge of a complainant’s mark at the time it acquired the disputed domain name. Actual knowledge of a complainant’s mark prior to registering a disputed domain name is adequate evidence upon which to base a finding of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“the Panel here finds actual knowledge through the name used for the domain and the use made of it.”); Coachella Music Festival, LLC v. ALEXANDER DE ALMEIDA LOPES, FA 1705267 (Forum Jan. 9, 2017) (finding the respondent had actual knowledge of the complainant’s COACHELLA mark when it registered and used the <coachellastuff.com> domain name—and thus did so in bad faith—because the complainant presented adequate evidence that its mark was well-known and famous). Complainant makes the assertion that “[a]t the time that Respondent registered the disputed domain name, Complainant’s OFFICE 365 mark was well known and familiar to countless consumers.” Complainant provides some evidence to support this claim including an article announcing the launch of the OFFICE 365 product, a screenshot of a purchase page for the product from Complainant’s website, and search engine results for the terms “office pro 365”. Another method of demonstrating a respondent’s actual knowledge of a complainant’s mark is to examine the use to which that mark and the disputed domain are put. The Respondent’s email to Complainant’s customers mentions the <officepro-365.com> domain name at least seven times in a single page, thus indicating its desire to focus the reader’s attention on the name which, as noted above, is confusingly similar to the OFFICE 365 mark. As such, the Panel concludes that Respondent knew of Complainant’s mark at the time it registered and used the disputed domain name.
Complainant next contends that Respondent’s impersonation of Complainant in emails designed to fraudulently appear to customers as false invoices disrupts Complainant’s business and that this evinces Respondent’s bad faith. Such use of a domain name can support a finding of bad faith registration and use per Policy ¶ 4(b)(iii). See Microsoft Corporation v. Terrence Green / Whois Agent / Whois Privacy Protection Service, Inc., FA 1661030 (Forum Apr. 4, 2016) (finding the Respondent’s use of the disputed domain names to send fraudulent emails supported a finding of bad faith registration and use under Policy ¶ 4(b)(iii)). Respondent sent emails to Complainant’s customers, from an address hosted at the <officepro-365.com> domain name, which appear to mimic the look of invoices for certain business software. As Complainant also sells software products and services to businesses, it seems clear that Respondent is seeking to compete with Complainant by using the disputed domain name. Respondent had made no submission in this case and thus does not dispute this. Therefore, the Panel finds this impersonation through false invoices supports the conclusion that Respondent registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iii).
Further, Complainant argues that Respondent’s bad faith is demonstrated by its use of the <officepro-365.com> domain name to commercially benefit from the sale of unrelated computer services. Use of a confusingly similar domain name to offer unrelated goods or services in connection with a complainant’s mark may indicate bad faith under Policy ¶ 4(b)(iv). See Metro. Life Ins. Co. v. Bonds, FA 873143 (Forum Feb. 16, 2007) (“The Panel finds such use to constitute bad faith registration and use pursuant to Policy ¶ 4(b)(iv), because [r]espondent is taking advantage of the confusing similarity between the <metropolitanlife.us> domain name and Complainant’s METLIFE mark in order to profit from the goodwill associated with the mark.”); see also Drs. Foster & Smith, Inc. v. Lalli, FA 95284 (Forum Aug. 21, 2000) (finding bad faith where the respondent directed Internet users seeking the complainant’s site to its own website for commercial gain). As noted above, the Respondent made extensive use of the confusingly similar <officepro-365.com> domain name in the false invoices it emailed to Complainant’s customers. These emails sought payment from the recipients of EUR 1280 in exchange for a “CRM Business Software Package”. The Panel therefore finds that Respondent has registered and used the disputed domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <officepro-365.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 16, 2019
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