Microsoft Corporation v. Network Administrator
Claim Number: FA1907001854431
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Network Administrator (“Respondent”), Nebraska, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <microsoftflightsimulator.com>, registered with GoDaddy.com, LLC.
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 29, 2019; the Forum received payment on July 29, 2019.
On July 30, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <microsoftflightsimulator.com> domain name is registered with GoDaddy.com, LLC and that Respondent is the current registrant of the name. GoDaddy.com, LLC has verified that Respondent is bound by the GoDaddy.com, LLC 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 August 1, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 21, 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@microsoftflightsimulator.com. Also on August 1, 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 26, 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, Microsoft Corporation, is a worldwide leader in software, services, and solutions. Further, Complainant has offered a popular software package called Microsoft Flight Simulator since 1982. Complainant has rights in the trademark MICROSOFT mark based upon its use in commerce since 1975 and its registration with the United States Patent and Trademark Office (“USPTO”) and the trademark offices of many other countries dating back to 1982. Respondent’s <microsoftflightsimulator.com>, registered on October 31, 2017, is confusingly similar to Complainant’s mark as Respondent merely adds the generic/descriptive terms “flight” and “simulator,” along with the “.com” generic top-level domain (“gTLD”) to Complainant’s mark.
Respondent does not have rights or legitimate interests in the <microsoftflightsimulator.com> domain name. Respondent is not permitted or licensed to use Complainant’s MICROSOFT mark and is not commonly known by the disputed domain name. Additionally, Respondent is not using the disputed domain name to make a bona fide offering of goods or services or for a legitimate non-commercial or fair use. Rather, Respondent uses the <microsoftflightsimulator.com> domain name to offer flight simulator products unrelated to Complainant and without Complainant’s authorization.
Respondent has registered and uses the <microsoftflightsimulator.com> domain name in bad faith. Respondent is attempting to attract, for commercial gain, Internet users to its website by creating a false affiliation with Complainant to sell flight simulator products. Finally, Respondent had actual knowledge of Complainant’s MICROSOFT mark prior to registering the <microsoftflightsimulator.com> domain name.
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 to the MICROSOFT mark based upon registration with the USPTO and the trademark offices of many other countries. Registration with government trademark offices such as the USPTO sufficiently establishes rights in a mark under Policy ¶ 4(a)(i). See Haas Automation, Inc. v. Jim Fraser, FA 1627211 (Forum Aug. 4, 2015) (finding that Complainant’s USPTO registrations for the HAAS mark sufficiently demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant provides copies of two of its USPTO registration certificates for the MICROSOFT mark and a list of its other global trademark registrations. Therefore, the Panel finds that Complainant has rights in the MICROSOFT mark per Policy ¶ 4(a)(i).
Complainant next claims that Respondent’s <microsoftflightsimulator.com> domain name is confusingly similar to the MICROSOFT mark as Respondent merely adds a modifier and a gTLD to the mark. Additions of a generic and/or descriptive terms and a gTLD to a complainant’s mark does not negate any confusing similarity between a disputed domain name and mark under 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). Complainant argues that Respondent’s addition of the terms “flight”, “simulator” and a “.com” gTLD to Complainant’s MICROSOFT mark does not reduce the confusingly similarlty of the disputed domain name to such mark. The Panel agrees with Complainant and finds that the <microsoftflightsimulator.com> is confusingly similar to Complainant’s MICROSOFT mark as it does not contain changes that would sufficiently distinguish it from the mark per 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 this 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 <microsoftflightsimulator.com> domain name. Specifically Complainant argues that Respondent is not licensed or authorized to use the MICROSOFT mark and is not commonly known by the disputed domain name. The WHOIS information of record can help inform the issue of whether a respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA1408001574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark.) Additionally, lack of authorization to use a complainant’s mark may demonstrate the respondent is not commonly known by the disputed domain name. 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). The WHOIS information of record for the <microsoftflightsimulator.com> domain name identifies Respondent as “Network Administrator” and there is no evidence to suggest Respondent is known otherwise or that it was authorized to use the MICROSOFT mark. The Panel therefore finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).
Additionally, Complainant argues that Respondent is not using the disputed domain name in connection with a bona fide offering of goods or services or legitimate noncommercial or fair use. Instead, Complainant claims that Respondent uses the <microsoftflightsimulator.com> domain name to redirect traffic to a website that offers a flight simulator product unrelated to Complainant. Except in very specific circumstances, using a confusingly similar domain name to redirect traffic to another website, presumably for commercial gain, does not constitute a bona fide offering of goods or services, or a noncommercial or fair use per 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 Ripple Labs Inc. v. NGYEN NGOC PHUONG THAO, FA 1741737 (Forum Aug. 21, 2017) (“Respondent uses the [disputed] domain name to divert Internet users to Respondent’s website… confusing them into believing that some sort of affiliation exists between it and Complainant… [which] is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”) Complainant provides a screenshot of the disputed domain name’s resolving website which promotes flight simulator products that are unrelated to Complainant’s products. In the absence of a Response or other submission by Respondent in this case, the Panel finds that Complainant has supported a prima facie case that Respondent is using the MICROSOFT mark to attract users to a competitive website without Complainant’s authorization. This is not a bona fide offering of goods or services and it does not evidence any rights or legitimate interests in the domain name for Respondent per Policy ¶¶ 4(c)(i) or (iii).
Complainant argues that Respondent must have had actual knowledge of Complainant’s MICROSOFT mark based upon the widespread fame of the mark. Actual knowledge is sufficient and may be proven through a totality of circumstances per Policy ¶ 4(a)(iii). See Custom Modular Direct LLC v. Custom Modular Homes Inc., FA 1140580 (Forum Apr. 8, 2008) (“There is no place for constructive notice under the Policy.”); see also 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.”) Here, Complainant claims that due to Respondent’s use of the famous MICROSOFT mark and Respondent’s intended association with Complainant’s own Microsoft Flight Simulator product, Respondent had actual knowledge of Complainant’s mark. In support of this claim Complainant submits into evidence numerous surveys indicating that in recent years the MICROSOFT mark has various been the third, fourth, or fifth most valuable brand in the world. Therefore, the Panel agrees that Respondent had actual knowledge of Complainant’s rights in the MICROSOFT mark, and thus constitutes bad faith under Policy ¶ 4(a)(iii).
Complainant further claims that Respondent is intentionally attempting to attract—for commercial gain—Internet users to a competitor website by creating a likelihood of confusion with Complainant’s MICROSFT mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website. Using a confusingly similar domain name to mislead users can evince bad faith registration and use per Policy ¶ 4(b)(iv). See AOL LLC v. iTech Ent, LLC, FA 726227 (Forum July 21, 2006) (finding that the respondent took advantage of the confusing similarity between the <theotheraol.com> and <theotheraol.net> domain names and the complainant’s AOL mark, which indicates bad faith registration and use pursuant to Policy ¶ 4(b)(iv)). Complainant claims Respondent is using the fame of the MICROSOFT trademark and an unambiguous reference to the Microsoft Flight Simulator product to improperly increase traffic to the disputed domain name’s website in order to commercially offer competing flight simulator products. Complainant provides a screenshot of the disputed domain name’s resolving website in support of this argument. Although the evidence of record does not indicate whether this website is owned or operated by Respondent or how Respondent is compensated for traffic that is redirected to the website, the question of whether or not Respondent itself is compensated is irrelevant. UDRP Panels have held that there only needs to be commercial gain sought by some party for the use to be commercial and it is clear that the owner of the resolving website is given the opportunity to promote its competing products by virtue of Respondent’s use of the MICROSOFT mark in the disputed domain name. See, Focus Do It All Group v. Athanasios Sermbizis, Case No. D2000-0923 (WIPO Oct. 12, 2000) (finding that “[I]t is enough that commercial gain is being sought for someone” for a use to be commercial). Therefore, the Panel finds that Respondent registered and uses the disputed domain name in bad faith pursuant Policy ¶ 4(b)(iv).
Finally, the Complaint does not assert a claim of bad faith pursuant to Policy ¶ 4(b)(iii). As flight simulator products unrelated to Complainant are offered at the website which resolves from the disputed domain name, it appears to the Panel that Respondent is seeking to disrupt the business of a competitor. As such, the Panel notes that this would have provided a further basis to hold that the Respondent registered and uses the domain name in bad faith under 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 <microsoftflightsimulator.com> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: August 27, 2019
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