Microsoft Corporation v. Paul Kerns
Claim Number: FA0610000818391
Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard, of Richard Law Group, Inc., 8411 Preston Road, Suite 890, Dallas, TX 75225, USA. Respondent is Paul Kerns (“Respondent”), 1631 NE Broadway 406, Portland, OR 97232.
REGISTRAR AND DISPUTED DOMAIN
NAMES
The domain names at issue are <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com>, registered with Enom, 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.
Tyrus R. Atkinson, Jr., as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on October 12, 2006; the National Arbitration Forum received a hard copy of the Complaint on October 13, 2006.
On October 12, 2006, Enom, Inc. confirmed by e-mail to the National Arbitration Forum that the <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names are registered with Enom, Inc. and that Respondent is the current registrant of the names. Enom, Inc. has verified that Respondent is bound by the Enom, 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 October 17, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of November 6, 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@windowsvista.info, postmaster@windows-vista.com, postmaster@windowsvistaforums.com and postmaster@ewindowsvista.com by e-mail.
Respondent filed and served no response as required by the Policy and Rules. Respondent did send certain e-mails to the Forum. None of these e-mails contained any facts that would tend to contest Complainant’s prima facie presentation made in the Complaint. The Panel finds that this case should proceed as a default case.
On November 10, 2006, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Tyrus R. Atkinson, Jr., 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 <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names are confusingly similar to Complainant’s WINDOWS mark.
2. Respondent does not have any rights or legitimate interests in the <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names.
3. Respondent registered and used the <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names in bad faith.
B. Respondent failed to submit a Response in this proceeding.
Complainant, Microsoft Corporation, is an internationally known proprietor of computer software and related goods and services. In connection with the provision of these goods and services, Complainant has registered a number of trade and service marks with the United States Patent and Trademark Office (“USPTO”), including the WINDOWS mark (Reg. No. 1,872,264 issued January 10, 1995).
Respondent registered the <windowsvista.info> on September 28, 2004 and registered the <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names on April 14, 2005. The disputed domain names resolve to a website that provides links to Complainant’s 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."
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 asserts rights in the WINDOWS mark through registration with the USPTO. The Panel finds that Complainant’s registration and extensive use of the WINDOWS mark for over ten years is sufficient to establish rights pursuant to Policy ¶ 4(a)(i). See Innomed Techs., Inc. v. DRP Servs., FA 221171 (Nat. Arb. Forum Feb. 18, 2004) (“Registration of the NASAL-AIRE mark with the USPTO establishes Complainant's rights in the mark.”); see also Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive [or] have acquired secondary meaning.”).
Complainant contends that the disputed domain names are confusingly similar to Complainant’s mark. Respondent’s disputed domain names feature Complainant’s entire WINDOWS mark and add the generic term “vista,” “vista forums,” and the addition of the letter “e” before Complainant’s mark. The Panel finds that the addition of a generic term and the letter “e” to an otherwise identical mark fails to sufficiently distinguish a domain name from a mark pursuant to Policy ¶ 4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”); see also Crédit Lyonnais v. Ass’n Etre Ensemble, D2000-1426 (WIPO Dec. 7, 2000) (finding that the addition of the letter “e” and a hyphen does not affect the power of the mark in determining confusing similarity).
The Panel finds that Policy ¶ 4(a)(i) has been satisfied.
Complainant contends that Respondent lacks all rights and legitimate interests in the <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names. In instances where Complainant has made a prima facie case under Policy ¶ 4(a)(ii), the burden shifts to Respondent to set forth concrete evidence that it does possess rights or legitimate interests in the disputed domain names. See Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (“Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.”); see also Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that, where the complainant has asserted that the respondent has no rights or legitimate interests with respect to the domain name, it is incumbent on the respondent to come forward with concrete evidence rebutting this assertion because this information is “uniquely within the knowledge and control of the respondent”).
Respondent is using its disputed domain name to resolve to websites that feature links to Complainant’s own site from which Respondent presumably receives referral fees. The Panel finds that Respondent’s use is neither a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) nor a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii). See G.D. Searle & Co. v. Pelham, FA 117911 (Nat. Arb. Forum Sept. 19, 2002) (finding that because the respondent is using the infringing domain name to sell prescription drugs, the panel could infer that the respondent is using the complainant’s mark to attract Internet users to its website for commercial benefit); see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) (finding no bona fide offering of goods or services where the respondent used the complainant’s mark without authorization to attract Internet users to its website, which offered both the complainant’s products and those of the complainant’s competitors).
Additionally, Complainant contends that Respondent is neither commonly known by the <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names nor authorized to register domain names featuring Complainant’s WINDOWS mark in any way. In the absence of evidence suggesting otherwise, the Panel finds that Respondent has not established rights or legitimate interests in accordance with Policy ¶ 4(c)(ii). See Compagnie de Saint Gobain v. Com-Union Corp., D2000-0020 (WIPO Mar. 14, 2000) (finding no rights or legitimate interest where the respondent was not commonly known by the mark and never applied for a license or permission from the complainant to use the trademarked name); see also Charles Jourdan Holding AG v. AAIM, D2000-0403 (WIPO June 27, 2000) (finding no rights or legitimate interests where (1) the respondent is not a licensee of the complainant; (2) the complainant’s prior rights in the domain name precede the respondent’s registration; (3) the respondent is not commonly known by the domain name in question).
The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.
Respondent’s disputed domain names resolve to websites that
feature links to Complainant’s own site.
The Panel concludes that such use is likely to create confusion among
Internet users. Thus, the Panel finds
that Respondent registered and used the disputed domain names on bad faith
pursuant to Policy ¶ 4(b)(iv). See Hunter Fan Co. v. MSS,
FA 98067 (Nat. Arb. Forum Aug. 23, 2001) (finding bad faith where the
respondent used the disputed domain name to sell the complainant’s products
without permission and mislead Internet users by implying that the respondent
was affiliated with the complainant); see also Compaq Info. Techs.
Group, L.P. v. Waterlooplein Ltd., FA
109718 (Nat. Arb. Forum May 29, 2002) (finding that the respondent’s use of the
<compaq-broker.com> domain name to sell the complainant’s products
“creates a likelihood of confusion with Complainant's COMPAQ mark as to the source,
sponsorship, or affiliation of the website and constituted bad faith pursuant
to Policy ¶ 4(b)(iv)”).
The Panel finds that Policy ¶
4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windowsvista.info>, <windows-vista.com>, <windowsvistaforums.com> and <ewindowsvista.com> domain names be TRANSFERRED from Respondent to Complainant.
Tyrus R. Atkinson, Jr., Panelist
Dated: November 20, 2006
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