Microsoft Corporation v. PURNA MANOJ / MANOJ JINDAL
Claim Number: FA1908001855602
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is PURNA MANOJ / MANOJ JINDAL (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <msnbilling.com> and <microsoft-number.com>, registered with GoDaddy.com, LLC.
The undersigned certifies that she has acted independently and impartially and to the best of her knowledge has no known conflict in serving as Panelist in this proceeding.
Sandra J. Franklin as Panelist.
Complainant submitted a Complaint to the Forum electronically on August 2, 2019; the Forum received payment on August 2, 2019.
On August 5, 2019, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <msnbilling.com> and <microsoft-number.com> domain names are registered with GoDaddy.com, LLC and that Respondent is the current registrant of the names. 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 7, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 27, 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@msnbilling.com, postmaster@microsoft-number.com. Also on August 7, 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.
A timely Response was received and determined to be complete on August 27, 2019.
A timely Additional Submission was received from Complainant on August 28, 2019.
On August 28, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra J. Franklin 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.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
1. Respondent’s <msnbilling.com> and <microsoft-number.com> domain names are confusingly similar to Complainant’s MSN and MICROSOFT marks.
2. Respondent does not have any rights or legitimate interests in the <msnbilling.com> and <microsoft-number.com> domain names.
3. Respondent registered and uses the <msnbilling.com> and <microsoft-number.com> domain names in bad faith.
B. Respondent
1. Respondent’s <msnbilling.com> and <microsoft-number.com> domain names are not confusingly similar to Complainant’s MSN and MICROSOFT marks because they contain added words.
2. Respondent does have rights or legitimate interests in the <msnbilling.com> and <microsoft-number.com> domain names because he is using them to provide services to Complainant’s customers, and there is no payment gateway for the services.
3. Respondent did not register and does not use the <msnbilling.com> and <microsoft-number.com> domain names in bad faith because he provides a disclaimer on the resolving websites.
A. Complainant’s Additional Submission
1. Respondent’s <msnbilling.com> and <microsoft-number.com> domain names are confusingly similar to Complainant’s MSN and MICROSOFT marks because they merely add generic or descriptive words.
2. Respondent registered and uses the <msnbilling.com> and <microsoft-number.com> domain names in bad faith by creating the impression that it is affiliated with Complainant.
3. There is evidence that Respondent uses the disputed domain names to obtain credit card information.
4. Respondent does not dispute that it had knowledge of Microsoft’s rights in the MSN and MICROSOFT trademarks.
5. Purna Baniya is the registrant of both disputed domain names and has been ordered to transfer similar domain names to Complainant in past UDRP cases.
Complainant, Microsoft Corporation, operates the MSN portal, which provides Internet search engine services, news, email, travel information, and other services. Complainant has rights in the MSN and MICROSOFT marks through its registrations around the world, including with the United States Patent and Trademark Office (“USPTO”) (MSN, Reg. No. 2,153,763, registered Apr. 28, 1998 and MICROSOFT, Reg. No. 1,200,236, registered Jul. 6, 1982).
Respondent registered the <msnbilling.com> domain name on January 21, 2016, and the <microsoft-number.com> domain name on March 18, 2015, and uses them to provide services to Complainant’s customers.
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.
PRELIMINARY ISSUE: MULTIPLE RESPONDENTS
Complainant alleges that the registrants of the disputed domain names are the same person and/or entity, operating under several aliases. Paragraph 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) provides that a “complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder.” Complainant points out that both disputed domain names are registered with the same Registrar, namely, GoDaddy.com and that the related WHOIS information was updated on the same day, namely September 24, 2018. The owner of <msnbilling.com> domain name is listed as “Manoj Jindal” and the email address for <microsoft-number.com> domain name is manojjindal@live.com. The email and street addresses for the disputed domains are almost identical and have the same postal code and country. The phone numbers listed for the domain names are identical, and are shown on the resolving websites. Complainant asserts that the disputed domain names are in fact owned by one person, namely, Manoj Jindal, a/k/a Purna Manoj, a/k/a Purna Baniya. Complainant provides evidence that Purna Baniya previously registered similar domain names such as <billing-microsoft.com>, <microsoftofficebilling.com>, <mymsnbilling.com>, and <microsoftnumber.com>, all of which were ordered to be transferred to Complainant.
The Panel finds that Complainant has presented sufficient evidence demonstrating that Respondents are commonly owned/controlled by a single Respondent who is using multiple aliases, and elects to proceed against them as one Respondent.
The Panel finds that Complainant’s registration of the MSN and MICROSOFT marks with the USPTO is sufficient to establish rights in the mark under Policy ¶ 4(a)(i). 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).
Respondent’s <msnbilling.com> and <microsoft-number.com> domain names incorporate Complainant’s marks and merely add the generic/descriptive terms “billing” or “number,” a hyphen in the <microsoft-number.com> domain name, and the “.com” gTLD. These changes are not enough to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See MTD Products Inc. v. J Randall Shank, FA 1783050 (Forum June 27, 2018) (“The disputed domain name is confusingly similar to Complainant’s mark as it wholly incorporates the CUB CADET mark before appending the generic terms ‘genuine’ and ‘parts’ as well as the ‘.com’ gTLD.”); see also ADP, LLC. v. Ella Magal, FA 1773958 (Forum Aug. 2, 2017) (“Respondent’s <workforce-now.com> domain name appropriates the dominant portion of Complainant’s ADP WORKFORCE NOW mark and adds a hyphen and the gTLD “.com.” These changes do not sufficiently distinguish the disputed domain name from the ADP WORKFORCE NOW mark.”). Accordingly, the Panel finds that Respondent’s <msnbilling.com> and <microsoft-number.com> domain names are confusingly similar to Complainant’s MSN and MICROSOFT marks.
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Once Complainant makes a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii), the burden shifts to Respondent to show 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 <msnbilling.com> and <microsoft-number.com> domain names, as Respondent is not commonly known by the disputed domain names, and is not authorized to use its MSN or MICROSOFT marks. The WHOIS information of record identifies the registrant of the disputed domain name as “PURNA MANOJ / MANOJ JINDAL,” which bears no resemblance to the disputed domain names or Complainant’s incorporated marks. The Panel therefore finds that Respondent is not commonly known by the <msnbilling.com> and <microsoft-number.com> domain names, and thus has no rights under Policy ¶ 4(c)(ii). 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).”).
Complainant further argues that Respondent lacks rights and legitimate interests in the <msnbilling.com> and <microsoft-number.com> domain names, as it fails to use them for a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends that Respondent uses the disputed domain names to pass off as Complainant in order to offer technical services. Respondent’s argument that it is legitimately using the disputed domain names to provide services is misguided; only Complainant is entitled to use its marks as it sees fit. Furthermore, the use of a disputed domain name to pass off as a complainant to provide unauthorized or competing services demonstrates a lack of rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). See Dell Inc. v. Devesh Tyagi, FA 1785301 (Forum June 2, 2018) (“Respondent replicates Complainant’s website and displays Complainant’s products. The Panel finds that this use is not a bona fide offering of goods or services under Policy ¶¶ 4(c)(i) & (iii).”); see also Nokia Corp. v. Eagle, FA 1125685 (Forum Feb. 7, 2008) (finding the respondent’s use of the disputed domain name to pass itself off as the complainant in order to advertise and sell unauthorized products of the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the disputed domain name pursuant to Policy ¶ 4(c)(iii)). Complainant provides screenshots of the disputed domain names’ resolving website where Respondent displays a toll-free phone number for technical support and information related to Complainant’s products, along with fraud warnings. The Panel finds that Respondent fails to use the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use, and thus has no rights under Policy ¶¶ 4(c)(i) or (iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(ii).
Complainant demonstrates that Respondent uses the <msnbilling.com> and <microsoft-number.com> domain names in bad faith to pass off as Complainant and provide competing services. The use of a domain name to create a false impression of affiliation with a complainant in order to offer competing services constitutes bad faith registration and use under Policy ¶ 4(b)(iv). See Am. Int’l Group, Inc. v. Busby, FA 156251 (Forum May 30, 2003) (finding that the disputed domain name was registered and used in bad faith where the respondent hosted a website that “duplicated Complainant’s mark and logo, giving every appearance of being associated or affiliated with Complainant’s business . . . to perpetrate a fraud upon individual shareholders who respected the goodwill surrounding the AIG mark”); see also Citadel LLC and its related entity, KCG IP Holdings, LLC v. Joel Lespinasse / Radius Group, FA1409001579141 (Forum Oct. 15, 2014) (“Here, the Panel finds evidence of Policy ¶ 4(b)(iv) bad faith as Respondent has used the confusingly similar domain name to promote its own financial management and consulting services in competition with Complainant.”). The use of a disclaimer on the website at the disputed domain names does not mitigate bad faith, as the damage is already done by the time Internet users reach the website. Again, Complainant is solely entitled to control the use of its marks. The Panel therefore finds that Respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv).
Complainant also contends that, in light of the fame and notoriety of Complainant's MSN and MICROSOFT marks, it is inconceivable that Respondent could have registered the <msnbilling.com> and <microsoft-number.com> domain names without actual knowledge of Complainant's rights in the marks. The Panel agrees and finds that Respondent had actual knowledge of Complainant's rights in the marks prior to registering the disputed domain names, and this is additional evidence of bad faith under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”).
The Panel finds that Complainant has satisfied 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 <msnbilling.com> and <microsoft-number.com> domain names be TRANSFERRED from Respondent to Complainant.
Sandra J. Franklin, Panelist
Dated: August 30, 2019
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