Microsoft Corporation v. FinancialMachine.com LLC
Claim Number: FA0607000758549
Complainant is Microsoft Corporation (“Complainant”), represented by Martin Schwimmer, of Schwimmer Mitchell Law Firm, 40 Radio Circle, Suite 7, Mt. Kisco, NY 10549. Respondent is FinancialMachine.com LLC (“Respondent”), 6154-D M Pl., Honolulu, HI 96821.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <windowsinternet.com>, <windowstelevision.com>, <windowsdigital.com>, <windowsworldwideweb.com>, <windowsmachines.com>, <windowsdiscount.com> and <windowsvideos.com>, registered with Tucows 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.
The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 25, 2006; the National Arbitration Forum received a hard copy of the Complaint on July 31, 2006.
On July 26, 2006, Tucows Inc. confirmed by e-mail to the National Arbitration Forum that the <windowsinternet.com>, <windowstelevision.com>, <windowsdigital.com>, <windowsworldwideweb.com>, <windowsmachines.com>, <windowsdiscount.com> and <windowsvideos.com> domain names are registered with Tucows Inc. and that Respondent is the current registrant of the names. Tucows Inc. has verified that Respondent is bound by the Tucows Inc. registration agreement and has thereby agreed to resolve domain-name disputes brought by third parties in accordance with ICANN's Uniform Domain Name Dispute Resolution Policy (the "Policy").
On August 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of August 29, 2006 by which Respondent could file a response to the Complaint, was transmitted to Respondent via e-mail, post and fax, to all entities and persons listed on Respondent's registration as technical, administrative and billing contacts, and to postmaster@windowsinternet.com, postmaster@windowstelevision.com, postmaster@windowsdigital.com, postmaster@windowsworldwideweb.com, postmaster@windowsmachines.com, postmaster@windowsdiscount.com and postmaster@windowsvideos.com by e-mail.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On September 6, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed the Honorable Charles K. McCotter, Jr. (Ret.) as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration 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." Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration 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 names be transferred from Respondent to Complainant.
A. Complainant makes the following assertions:
1. Respondent’s <windowsinternet.com>, <windowstelevision.com>, <windowsdigital.com>, <windowsworldwideweb.com>, <windowsmachines.com>, <windowsdiscount.com> and <windowsvideos.com> domain names are confusingly similar to Complainant’s WINDOWS mark.
2. Respondent does not have any rights or legitimate interests in the <windowsinternet.com>, <windowstelevision.com>, <windowsdigital.com>, <windowsworldwideweb.com>, <windowsmachines.com>, <windowsdiscount.com> and <windowsvideos.com> domain names.
3. Respondent registered and used the <windowsinternet.com>, <windowstelevision.com>, <windowsdigital.com>, <windowsworldwideweb.com>, <windowsmachines.com>, <windowsdiscount.com> and <windowsvideos.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is one of the world’s largest providers of computer software and Internet services. Complainant has continuously used the WINDOWS mark in connection with a line of computer operating systems since 1983. As a result of Complainant’s sales and marketing efforts, Complainant has generated over $37 billion in sales from products under the WINDOWS mark. Moreover, an estimated 384 million computer users have purchased and used Complainant’s WINDOWS products.
Complainant holds numerous trademark registrations for the WINDOWS mark worldwide, including approximately 58 registrations with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,872,264 issued January 10, 1995; Reg. No. 2,005,901 issued October 8, 1996; Reg. No. 2,463,526 issued June 26, 2001; Reg. No. 2,463,510 issued June 26, 2001; Reg. No. 2,463,509 issued June 26, 2001).
Respondent registered the <windowsinternet.com>, <windowsdigital.com>, <windowsworldwideweb.com>, <windowsmachines.com> and <windowsvideos.com> domain names on September 24, 2001 and the <windowstelevision.com> and
<windowsdiscount.com> domain names on October 10, 2001. Respondent is using the
<windowsinternet.com> domain name to advertise job opportunities at Respondent’s affiliate marketing business. Complainant alleges that Respondent is using the other domain names as part of its affiliate marketing program but that they currently do not resolve to active websites.
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."
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(e), 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 (Nat. Arb. 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.”).
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.
Complainant’s numerous trademark registrations sufficiently demonstrate its rights in the WINDOWS mark for purposes of Policy ¶ 4(a)(i). See Microsoft Corp. v. Burkes, FA 652743 (Nat. Arb. Forum Apr. 17, 2006) (“Complainant has established rights in the MICROSOFT mark through registration of the mark with the USPTO.”); see also Honeywell Int’l Inc. v. r9.net, FA 445594 (Nat. Arb. Forum May 23, 2005) (“Complainant’s numerous registrations for its HONEYWELL mark throughout the world are sufficient to establish Complainant’s rights in the HONEYWELL mark under the Policy ¶ 4(a)(i).”).
Each of Respondent’s domain names fully incorporate
Complainant’s WINDOWS mark and merely add a common term to the end, many of
which describe Complainant’s business.
In Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH,
D2001-0026 (WIPO Mar. 23, 2001), the panel found that the respondent’s domain
names, all of which contained the complainant’s entire GUINNESS mark but merely
added common terms to the end, such as “irish stout,” “guide,” “tours” and
“jazz festival,” were confusingly similar to the mark because each featured the
complainant’s GUINNESS mark “prominently.”
Because the disputed domain names also feature Complainant’s WINDOWS
mark prominently, the Panel finds that Respondent has failed to sufficiently
distinguish the disputed domain names from Complainant’s WINDOWS mark and
therefore the disputed domain names are confusingly similar to the mark pursuant
to Policy ¶ 4(a)(i). See Experian
Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7,
2002) (finding that several domain names incorporating the complainant’s entire
EXPERIAN mark and merely adding the term “credit” were confusingly similar to
the complainant’s mark).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Complainant asserts that Respondent lacks rights and legitimate interests in the disputed domain names. Complainant must first make a prima facie case in support of its allegations, and then the burden shifts to the Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Document Tech., Inc. v. Int’l Elec. Commc’ns Inc., D2000-0270 (WIPO Jun. 6, 2000) (“Although Paragraph 4(a) of the Policy requires that the Complainant prove the presence of this element (along with the other two), once a Complainant makes out a prima facie showing, the burden of production on this factor shifts to the Respondent to rebut the showing by providing concrete evidence that it has rights to or legitimate interests in the Domain Name.”); see also Hanna-Barbera Productions, Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
Respondent’s failure to answer the Complaint raises a
presumption that Respondent has no rights or legitimate interests in the
disputed domain names. See Bank of Am. Corp. v. McCall, FA 135012 (Nat. Arb. Forum Dec. 31, 2002) (“Respondent's
failure to respond not only results in its failure to meet its burden, but also
will be viewed as evidence itself that Respondent lacks rights and legitimate
interests in the disputed domain name.”); see also Canadian Imperial Bank of Commerce v. D3M
Virtual Reality Inc., AF-0336 (eResolution Sept. 23, 2000) (finding no
rights or legitimate interests where no such right or interest was immediately
apparent to the panel and the respondent did not come forward to suggest any
right or interest it may have possessed).
However, the Panel will now examine the record
to determine if Respondent has rights or legitimate interests under Policy ¶
4(c).
Respondent has registered the domain name under the name “FinancialMachine.com LLC,” and there is no other evidence in the record suggesting that Respondent is commonly known by the disputed domain names. Consequently, Respondent has not established rights or legitimate interests in the disputed domain names pursuant to Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Systems, LLC v. Snowden, FA 715089 (Nat. Arb. Forum Jul. 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 Gallup, Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) (finding that the respondent does not have rights in a domain name when the respondent is not known by the mark).
Respondent’s <windowsinternet.com> domain name resolves to a webpage promoting Respondent’s affiliate marketing business and offering job opportunities to interested persons. In Seiko Kabushiki Kaisha v. CS into Tech, FA 198795 (Nat. Arb. Forum Dec. 6, 2003), the respondent registered <seiko.net>, which was identical to the complainant’s SEIKO mark, and was redirecting Internet users to a third-party website unrelated to the mark. The panel stated that “[d]iverting customers, who are looking for products relating to the famous SEIKO mark, to a website unrelated to the mark is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it represent a noncommercial or fair use under Policy ¶ 4(c)(iii).” In this case, then, Respondent’s diversion of Internet users seeking information on Complainant or its WINDOWS products to a wholly unrelated website does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See eBay Inc. v. Hong, D2000-1633 (WIPO Jan. 18, 2001) (stating that the respondent’s use of the complainant’s entire mark in domain names makes it difficult to infer a legitimate use).
Moreover, the other domain names in dispute do not resolve to active websites. The Panel finds that Respondent has not made demonstrable preparations to use these domain names in connection with 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). Respondent’s failure to use these domain names for any purpose indicates that Respondent has no rights or legitimate interests in the disputed domain names. See Pharmacia & Upjohn AB v. Romero, D2000-1273 (WIPO Nov. 13, 2000) (finding no rights or legitimate interests where the respondent failed to submit a response to the complaint and had made no use of the domain name in question); see also Melbourne IT Ltd. v. Stafford, D2000-1167 (WIPO Oct. 16, 2000) (finding no rights or legitimate interests in the domain name where there is no proof that the respondent made preparations to use the domain name or one like it in connection with a bona fide offering of goods and services before notice of the domain name dispute, the domain name did not resolve to a website, and the respondent is not commonly known by the domain name).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Respondent has registered and is using the <windowsinternet.com>
domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because the disputed
domain name resolves to Respondent’s own website where it offers job
opportunities to those interested in its affiliate marketing program. Therefore, Respondent is diverting Internet
users seeking Complainant’s WINDOWS products and services to a website
unrelated to Complainant. Because
Respondent is taking advantage of the confusing similarity between Respondent’s
domain names and Complainant’s WINDOWS mark in order to profit from the
goodwill associated with the mark, Respondent has registered and is using the
disputed domain names in bad faith pursuant to Policy ¶ 4(b)(iv). See Anne of Green Gable Licensing Auth., Inc. v. Internetworks, AF-0109
(eResolution June 12, 2000) (finding that the respondent violated Policy ¶
4(b)(iv) because the respondent admittedly used the complainant’s well-known
mark to attract users to the respondent's website); see also Perot Sys.
Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) (finding bad
faith where the domain name in question is obviously connected with the
complainant’s well-known marks, thus creating a likelihood of confusion
strictly for commercial gain).
Additionally, Respondent
is not using the <windowstelevision.com>,
<windowsdigital.com>, <windowsworldwideweb.com>,
<windowsmachines.com>, <windowsdiscount.com> and
<windowsvideos.com> domain names for any purpose and has not made any
demonstrable preparations to use the disputed domain names since registering
them five years ago. In Caravan Club v. Mrgsale, FA 95314 (Nat.
Arb. Forum Aug. 30, 2000), the respondent registered the
<thecaravanclub.com> domain name, which the panel found was identical to
the complainant’s THE CARAVAN CLUB mark, and made no use of the domain
name. The panel held that the
respondent’s non use permitted an inference of registration and use in bad
faith. Because Respondent has also
registered domain names confusingly similar to a registered mark and not made
any use of the domain name for five years, the Panel concludes that Respondent
has demonstrated bad faith registration and use pursuant to Policy ¶
4(a)(iii). See Disney Enters. Inc.
v. Meyers, FA 697818 (Nat. Arb. Forum Jun. 26, 2006) (holding that the
non-use of a disputed domain name for several years constitutes bad faith
registration and use under Policy ¶ 4(a)(iii).
The Panel finds that Complainant has satisfied Policy ¶ 4(a)(i).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windowsinternet.com>, <windowstelevision.com>, <windowsdigital.com>, <windowsworldwideweb.com>, <windowsmachines.com>, <windowsdiscount.com> and <windowsvideos.com> domain names be TRANSFERRED from Respondent to Complainant.
The Honorable Charles K. McCotter, Jr. (Ret.), Panelist
Dated: September 19, 2006
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