Microsoft Corporation v. [Redacted]
Claim Number: FA2007001902858
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is [Redacted] (“Respondent”), USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <ms-microsoft.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.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the Forum electronically on July 2, 2020; the Forum received payment on July 2, 2020.
On July 3, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <ms-microsoft.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 July 7, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of July 27, 2020 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@ms-microsoft.com. Also on July 7, 2020, 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 July 31, 2020, 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 is a well-known developer and manufacturer of computers, software, and other technology across the globe.
Complainant has rights in the MICROSOFT mark through its registration with the United States Patent and Trade Office (“USPTO”).
Respondent’s <ms-microsoft.com> domain name is confusingly similar to Complainant’s mark because Respondent incorporates the mark in its entirety and adds an abbreviation of the mark, a hyphen, and a generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <ms-microsoft.com> domain name. Respondent is not commonly known by this domain name, and Complainant has not licensed or authorized Respondent to use the mark. Respondent does not use the mark for any bona fide offerings of goods or services, nor does it engage in any legitimate, noncommercial, or fair use with the mark. Instead, Respondent uses the mark to impersonate Complainant to correspond with other entities, and redirects the domain name to Complainant’s official website in China.
Respondent registered and uses the <ms-microsoft.com> domain name in bad faith. Respondent disrupts Complainant’s business by impersonating Complainant under the disputed domain name and reaching out to other businessses or entities. Respondent also registered the domain name with actual notice of Complainant’s rights in the MICROSOFT mark.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant has rights in the MICROSOFT mark through the registration of such mark with the USPTO and otherwise.
Respondent is not affiliated with Complainant and had not been authorized to use Complainant’s trademark in any capacity.
Respondent registered the at‑issue domain name after Complainant acquired rights in the MICROSOFT trademark.
Respondent uses the at-issue domain name to host email pretending to originate from Complainant in furtherance of defrauding third parties and to redirect to Complainant’s own website.
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”).
The nominal registrant for the at-issue domain name matches the name of one of Complainant’s employees; however Complainant indicates that the real respondent in interest is not such employee. Rather, the actual registrant of the at-issue domain name falsified the registration record in furtherance of its scheme to use the domain name to masquerade as Complainant to facilitate fraud. The real registrant of the domain name thus stole the identity of Complainant’s employee and used that name when it registered the domain name. Complainant, in accordance with Forum Supplemental Rule 15(b), requested in its Complaint that the name of the Respondent be redacted.
Pursuant to Policy ¶ 4(j) all decisions under the Policy are to be published over the internet in-full except that a panel may determine, in exceptional cases, that portions of its decision be redacted. Here, the Panel finds that the real registrant of the at-issue domain name effectively stole the identity of one of Complainant’s employees and registered the at-issue domain name under such name thereby making the instant case such an “exceptional case.” Publication of this decision disclosing Complainant’s employee’s name as Respondent when in fact the employee is not the real registrant of the at-issue domain name, will place Complainant’s employee in a false or misleading light. The employee will be publically misleadingly be depicted as the respondent in an adverse UDRP proceeding. He or she will be subject to adverse publicity from the publication of the decision and its content, when in fact the employee is the victim of identity theft and in no way responsible for the actions of the real respondent in interest. By redacting the name of the Respondent, Complainant’s employee will not be placed in such false light. Further, since the order of this Panel is directed to the at-issue domain name’s registrar rather than the respondent, and the name of the respondent, real or nominal, is irrelevant to effectuating the Panel’s order. Therefore the Panel redacts the nominal Respondent’s name from its decision and replaces it with “[Redacted].”
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s ownership of a USPTO registration for MICROSOFT is sufficient to demonstrate Complainant’s rights in a mark for the purposes of Policy ¶ 4(a)(i). See Liberty Global Logistics, LLC v. damilola emmanuel / tovary services limited, FA 1738536 (Forum Aug. 4, 2017) (“Registration of a mark with the USPTO sufficiently establishes the required rights in the mark for purposes of the Policy.”).
Furthermore, Respondent’s <ms-microsoft.com> domain name contains Complainant’s entire MICROSOFT trademark prefixed with the letters “ms” (a common abbreviation for MICROSOFT) and a hyphen. The domain name concludes with the top level domain names “.com.” The differences between the at-issue domain name and Complainant’s trademark are insufficient to distinguish one from the other for the purposes of the Policy. Therefore, the Panel concludes that Respondent’s <ms-microsoft.com> domain name is confusingly similar to Complainant’s MICROSOFT trademark under Policy ¶ 4 (a)(i). See Marquette Golf Club v. Al Perkins, FA 1738263 (Forum July 27, 2017) (“When a respondent’s domain name incorporates a mark in its entirety and merely adds a generic top-level domain (gTLD), “.com”, then the Panel may find that the disputed domain name is identical to Complainant’s mark.”); see also,Thomson Reuters Global Resources v. Richard Marsh / intach / Steven Szybillo / intach / Michael Wilczynski / intach / Gary Clarke / intach / James Saunders / intach / Paul Randolph/ intach / John Geisler / intach, FA 1516146 (Forum Oct. 2, 2013) (finding that the at-issue domain names fully incorporate Complainant’s THOMSON REUTERS mark while merely adding the term “scie,” “ahci,” “sci,” or “ssci” and stating that “[e]ach of these added terms constitutes an abbreviation of Complainant’s SCIENCE CITATION INDEX EXPANDED, ARTS & HUMANITIES CITATION INDEX, SCIENCE CITATION INDEX, or SOCIAL SCIENCES CITATION INDEX marks,” and held that such abbreviations constituted confusing similarity under Policy ¶ 4(a)(i).); see also, Pirelli & C. S.p.A. v. Tabriz, FA 921798 (Apr. 12, 2007) (finding that the addition of a hyphen between terms of a registered mark did not differentiate the <p-zero.org> domain name from the P ZERO mark under Policy ¶ 4(a)(i)).
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 is not authorized to use Complainant’s trademark in any capacity and 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.
The WHOIS information for the at-issue domain name identifies the domain name’s registrant as “[Redacted].” The record before the Panel contains no evidence that might otherwise tend to prove that Respondent is commonly known by the <ms-microsoft.com> domain name. The Panel therefore concludes that for the purposes of Policy ¶ 4(c)(ii) Respondent is not commonly known by the at-issue domain name. See Navistar International Corporation v. N Rahmany, FA1505001620789 (Forum June 8, 2015) (finding that the respondent was not commonly known by the at-issue domain name where the complainant had never authorized the respondent to incorporate its NAVISTAR mark in any domain name registration); see also, 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).
Additionally, Respondent uses the <ms-microsoft.com> domain name to host email designed to pass itself off as originating from Complainant. Respondent has even attempted to register an account with a large third party online merchant via email pretending to come from Complainant. Using the at-issue domain name in this manner to pass off as Complainant in furtherance of fraud 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). 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 domain names to send fraudulent emails purportedly from agents of complainant to be 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)); see also, Emerson Electric Co. v. Adilcon Rocha, FA 1735949 (Forum July 11, 2017) (finding that respondent’s attempt to pass off as complainant through emails does not constitute a bona fide offering of goods or services and, as such, respondent lacked rights or legitimate interests in the disputed domain name); see also, AbbVie, Inc. v. AbbVie Company, FA 1509085 (Forum Aug. 7, 2013) (finding the use of the at-issue domain name domain name to impersonate the human resources department of AbbVie in emails was evidence of no rights or legitimate interests in the domain name);
Furthermore, browsing to Respondent’s at-issue domain name redirects traffic to Complainant’s official site in China concerning pirated software. Respondent’s use of the domain name to redirect internet users to Complainant’s own website is also not indicative of Respondent’s having any legitimate rights or legitimate interests in such domain name under Policy ¶ 4(a)(ii). See Better Existence with HIV v. AAA, FA 1363660 (Forum Jan. 25, 2011) (finding that “even though the disputed domain name still resolves to Complainant’s own website, Respondent’s registration of the disputed domain name in its own name fails to create any rights or legitimate interests in Respondent associated with the disputed domain name under Policy ¶ 4(a)(ii)”).
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶ 4(a)(ii).
The at-issue domain name was registered and is being used in bad faith. As discussed below without limitation, there is evidence from which the Panel may conclude that Respondent acted in bad faith pursuant to Policy ¶ 4(a)(iii).
As mentioned above regarding rights and interests, Respondent uses the <ms-microsoft.com> domain name to host email for use in connection with a scheme or schemes that involve Respondent masquerading as Complainant so that Respondent may perpetrate fraud. Respondent’s actions involving the at-issue domain name are disruptive to Complainant’s business and seek to benefit Respondent’s inappropriate trading on Complainant’s mark. Respondent’s registering the at-issue domain name for the purpose of sending emails intended to deceive the recipient into believing Respondent is Complainant shows Respondent’s bad faith under Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv). See Abbvie, Inc. v. James Bulow, FA 1701075 (Forum Nov. 30, 2016) (“Respondent uses the <abbuie.com> domain name to impersonate Complainant’s CEO. Such use is undeniably disruptive to Complainant’s business and demonstrates bad faith pursuant to Policy ¶ 4(b)(iii), and/or Policy ¶ 4(b)(iv)”); see also Chevron Intellectual Property, LLC v. Jack Brooks, FA 1635967 (Forum Oct. 6, 2015) (finding that Respondent’s use of <chevron-corps.com> to impersonate an executive of Complainant in emails is in opposition to Complainant and is therefore in bad faith under Policy ¶ 4(b)(iii)).
Finally, Respondent registered its <ms-microsoft.com> domain name with actual knowledge of Complainant’s MICROSOFT trademark. Respondent’s knowledge of Complainant’s mark is evident from the notoriety of the MICROSOFT mark, as well as from Respondent’s scheme to improperly exploit the mark in email scams as discussed above. Under the circumstances, it is inconceivable that Respondent was unaware of Complainant’s trademark when it registered the <ms-microsoft.com> domain name. Respondent’s actual knowledge of Complainant’s rights in the MICROSOFT mark prior to registering the at-issue <ms-microsoft.com> domain name further urges that Respondent registered such domain name in bad faith under 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 had "actual knowledge of Complainant's mark when registering the disputed domain name"); see also, Yahoo! Inc. v. Butler, FA 744444 (Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <ms-microsoft.com> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: July 31, 2020
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