Microsoft Corporation v. Abhishek Lodha and
Net Always
Claim Number: FA0610000827749
PARTIES
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 Abhishek Lodha and Net Always (“Respondent”), represented by Rajashree Kundalia, of Paras Kuhad & Associates, 3C, Camac Street, 4th floor, Kolkata - 700 016.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <windowssystemoptimizer.com>,
registered with Direct Information Pvt
Ltd d/b/a Publicdomainregis.
PANEL
The undersigned certifies that he or she has acted independently and
impartially and to the best of his or her knowledge has no known conflict in
serving as Panelist in this proceeding.
Dr. Reinhard Schanda as Panelist.
PROCEDURAL HISTORY
Complainant submitted a Complaint to the National Arbitration Forum
electronically on October 25, 2006; the National Arbitration Forum received a
hard copy of the Complaint on October 26, 2006.
On October 27, 2006, Direct Information Pvt Ltd d/b/a Publicdomainregis
confirmed by e-mail to the National Arbitration Forum that the <windowssystemoptimizer.com>
domain names is registered with Direct Information Pvt Ltd d/b/a
Publicdomainregis and that the Respondent is the current registrant of the
name. Direct Information Pvt Ltd d/b/a
Publicdomainregis has verified that Respondent is bound by the Direct
Information Pvt Ltd d/b/a Publicdomainregis 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 November 1, 2006, a Notification of Complaint and Commencement of
Administrative Proceeding (the “Commencement Notification”), setting a deadline
of November 21, 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@windowssystemoptimizer.com
by e-mail.
A hard copy of the Response was partially received on November 22,
2006, after the deadline for submission of November 21, 2006. As a result, the National Arbitration Forum
has deemed the Response to be deficient according to Supplemental Rule 5(a).
On November 28, 2006, pursuant to Complainant’s
request to have the dispute decided by a single-member Panel, the National
Arbitration Forum appointed Dr. Reinhard Schanda as Panelist.
RELIEF SOUGHT
Complainant requests that the domain name be transferred from
Respondent to Complainant.
PARTIES’ CONTENTIONS
Since 1975, Complainant has manufactured, marketed and sold computer
software and related products and services. Complainant’s products and services
include computer operating systems, client/server applications, business and
consumer productivity applications, software programming tools, interactive
media programs, Internet platform and development tools, computer input
devices, online information and entertainment services, electronic commerce
services, and computer publications. Complainant is the owner of numerous
proprietary marks for such computer software and related goods and services.
Complainant’s trademarks include the internationally-known WINDOWS
trademark. Complainant began use of the WINDOWS trademark as early as 1983, has
used the trademark continuously since then, and the WINDOWS mark now is
well-known to the general public and particularly to computer users.
Complainant has expanded its line of WINDOWS products and services and now owns
a family of WINDOWS marks including WINDOWS XP, WINDOWS VISTA, WINDOWS MOBILE,
WINDOWS SYSTEM SERVER, and WINDOWS LIVE.
Complainant
has registered the WINDOWS trademark with the United States Patent and
Trademark Office, in the Respondent’s stated location of India, and throughout
the world. Some of the most relevant WINDOWS trademark registrations are:
·
U.S.
Registration No. 1872264 for the mark WINDOWS, which covers “computer programs
and manuals sold as a unit; namely, graphical operating environment programs
for microcomputers,” issued on January 10, 1995.
·
U.S.
Registration No. 1959130 for the mark MICROSOFT WINDOWS AND DESIGN, which
covers “computers and components therefore, computer peripherals, and computer
programs in the field of graphical applications, and manuals therefore sold as
a unit,” issued on February 27, 1996.
·
U.S. Registration
No. 2463509 for the mark WINDOWS, which covers mail-order and online
distributorship services featuring computer software and publications on
computer hardware and software; online retail services featuring computer
hardware, software and publications on computer hardware and software;
licensing of computer software,” issued on June 26, 2001.
In September 1995, Complainant registered the domain name
<windows.com> through which it operates a web site offering information
on the various WINDOWS products and services.
For more than 20 years, Complainant has invested considerable time,
effort and money in advertising and promoting its WINDOWS products and services
throughout the United States and the world. As a result, WINDOWS has become the
world's most popular computer operating platform for desktop and laptop
computers, used by an overwhelming percentage of computer users worldwide.
Thus, a majority of computer users around the globe identify the WINDOWS mark
with Microsoft.
Complainant contends that the domain name
<windowssystemoptimizer.com> is confusingly similar to its famous WINDOWS
Mark. Complainant's WINDOWS Mark was in use for approximately 20 
years and had become famous for the products
and services offered by Complainant long before Respondent registered the
domain name <windowssystemoptimizer.com> in June 2003.
Respondent's domain name <windowssystemoptimizer com>
incorporates Complainant's entire WINDOWS Mark along with the generic or
descriptive term "system optimizer" and the most common URL suffix
".com". According to Complainant the addition of a common,
descriptive term and a generic top-level domain to Complainant's famous mark
does not negate the confusing similarity between Respondent's domain name and
Complainant's mark.
Respondent has taken Complainant's WINDOWS Mark in its entirety and
added the generic term "System Optimizer" which relates to computers
in the context of maximizing the efficiency of one's software and hardware
system. The addition of the term "system optimizer" to Complainant's
WINDOWS mark does not distinguish the Respondent's domain name from
Complainant's famous mark, but may actually aggravate confusion since
Complainant is known for computer operating systems. Likewise, the addition of
the ".com" generic top-level domain does not avoid confusing
similarity between Respondent's domain name and Complainant's mark.
Complainant further contends that Respondent has no rights or
legitimate interests in the <windowssystemoptimizer.com> domain name.
Respondent is not commonly known by Complainant's mark WINDOWS, nor has
Respondent used the domain name in connection with a bona fide offering
of goods and services or for a legitimate noncommercial or fair use Respondent
is simply exploiting the fact that computer users may assume that a website
located at a domain name incorporating the WINDOWS trademark is affiliated with
or sponsored by Complainant.
Complainant can find no proof to indicate
that the Respondent is commonly known by the <windowssystemoptimizer.com>
domain name. Thus, Respondent is not known by the WINDOWS mark but, rather, is
using Complainant's trademark in its domain name to attract Internet users to
its own web site in an apparent attempt to deceive consumers as to the source
of the website and products sold on the site. Respondent's web site Claims to
sell "utility software" related to or for use with Complainant's
WINDOWS operating system, which may further imply an affiliation or connection
to Microsoft.
The use of a domain name that is confusingly similar, to Complainant's
famous trademark to attract Computer users to Respondent's own commercial
website is also not a use in connection with a bona fide offering of
goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial
or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). Respondent's use
cannot be viewed as a bona fide offering of goods or services since
Respondent has clearly taken Complainant's mark without authorization in order
to attract Internet users to its own web site and trade off the goodwill and
widespread consumer recognition of Complainant's famous mark.
Finally, Complainant does not allow unrelated entities to use its mark
in their company names, and Complainant has not authorized Respondent to use
the WINDOWS Mark for any purpose; therefore, Respondent is not using the
WINDOWS mark under license, express or implied. For the above reasons, the
Respondent has no rights or legitimate interests in the domain name.
Complainant finally contends that Respondent registered the
<windowssystemoptimizer.com> domain name in bad faith. At the time that
Respondent registered the domain name, Complainant's WINDOWS trademark was
unquestionably internationally famous and familiar to most computer users.
Due to the fame of the WINDOWS Mark worldwide, and Complainant's
registrations for the WINDOWS Mark worldwide, Respondent was on notice of the
Complainant's rights in the WINDOWS Mark when it registered the domain name.
Thus, Respondent registered the disputed domain name with knowledge of
Complainant's rights in its famous WINDOWS mark, which is evidence of bad faith
registration and use with regard to Policy ¶ 4(a)(iii).
According to Complainant it is clear that Respondent was not only
familiar with Complainant's WINDOWS Mark at the time of registration of the
domain name in dispute, but intentionally adopted the name WINDOWS in an
attempt to capitalize on consumer interest in the WINDOWS family of products
and services. At the time that Complainant became aware of Respondent's
registration of the disputed domain name, Respondent's site prominently
displayed an assortment of Microsoft's well-known trademarks and loges,
including "Microsoft Windows XP" and the "Windows Flag"
logo, which shows Respondent's intent to mislead consumers as to an association
or affiliation with Microsoft. Thus, Respondent's purposeful selection of a
domain name incorporating the famous WINDOWS Mark in order to draw traffic to
its own site shows intent to mislead or confuse consumers as to the source or
affiliation of the web site.
Furthermore, Respondent's web site located at
<windowssystemoptimizer.com> promotes a "utility software" that
appears to be offered for sale and download on the site. More specifically, the
content at <windowssystemoptimizer.com> indicates that computer users may
purchase a license to use the software at prices ranging from $29.99 to $99.99.
Complainant has made long-term and widespread use of the WINDOWS Mark in
connection with computer operating systems and software so that consumers would
certainly believe hat a website and product using the name WINDOWS is endorsed
by or manufactured by Complainant. Respondent's use of Complainant's WINDOWS
Mark to draw traffic to its own site appears calculated to mislead or deceive
consumers as to the source of the site in order to attract users to the site
for commercial gain which is bad faith use of the domain name under Policy ¶
4(b)(iv).
In addition, use of Complainant's mark to attract traffic to its own
site featuring software for sale and download amounts to competition and
disruption of Complainant's business under Policy ¶ 4(b)(iii). By using the
WINDOWS Mark in its domain name, Respondent clearly is trading off the goodwill
associated with Complainant's famous WINDOWS Mark for its own benefit.
Furthermore, Respondent's use may be disruptive to Complainant's business by
creating dissatisfaction among consumers who download Respondent's software
based on the mistaken belief that it is endorsed by or produced by Microsoft. The
possibility of misuse or abuse of downloadable software is a very real concern,
especially because consumers may be inclined to rely on the reputation of the
well-known and trusted WINDOWS brand.
Finally, the circumstances indicate that Respondent may have registered
the domain name primarily for the purpose of selling it to Complainant for
valuable consideration in excess of Respondent's costs, which is further
evidence of bad faith. In 2005, Complainant notified Respondent that it
believed Respondent to be infringing on its trademark rights and violating the
UDRP, and sought an amicable resolution. In 2006, Respondent's attorney
verbally suggested that Complainant buy the domain name for $35,000.00; the
offer to sell the domain was later revised to $3,000.00. Obviously, either
price is well above the out-of-pocket costs associated with registration of a
domain name; therefore, this information supports Complainant’s belief that the
Respondent registered and is using the domain name in bad faith.
Respondent contends that the mark of the Respondent is in no way
similar to the Complainant’s mark, which comprises of the word WINDOWS in
comparison to the mark of the Respondent, which is indicative of the product
instead. The mark “windowssystemoptimizer” is a product and is being used to
enable customers identify the product they are buying vis-à-vis the work it is
meant to perform, unlike the complainant mark “WINDOWS”.
The Respondent’s domain name cannot be said to be deceptively similarly
to the Complainant’s mark WINDOWS, and the Respondent has integrated the word
“windowssystemoptimizer”, which only indicates its compatibility with the
windows operating system. Further the Respondent has used a disclaimer on the
use of the word WINDOWS, showing honest intention.
Since the mark WINDOWS is different from the Respondent’s domain name
“windowssystemoptimizer”, the respondent has not made an attempt to capitalize
on the consumer interest, but has honesty tried to sell his product, to carve a
niche for himself.
The Respondent has put the product for sale, and has had to face
harassment from the Complainant’s attorney who on the pretext of making out the
allegation that the purpose of registration of the Respondent’s domain name was
solely for the purpose of getting a valuable consideration from the
Complainant. Such allegation is wholly untrue and the Complainant may be put to
strict proof thereof. It can be alleged herewith that owing to potential threat
the Complainant has used the stance and is using the Respondent to give vent to
their fears.
Respondent has created a product
that Microsoft does not have and therefore did not intend to trespass on the internationally famous “WINDOWS” mark of the
complainant. The intention of the Respondent has never been to mislead the
public or his customs and honesty in the trade has not been breached, it can be
said that the Respondent has tried to reveal to lay persons the use of its
product, amongst a group of users who identify computers with WINDOWS. Also the
quality of the product has never been complained off. Thereby creating no
potential threat of the remotest nature to the mark of the Complainant.
The Respondent has always used the said domain name with honesty and never with the purpose of disrupting the business of a competitor.
The Respondent by using the domain name, has not intentionally or
otherwise attempted to attract, for commercial gain, Internet users to
Respondent's web site or other on-line location, by creating a likelihood of
confusion with the Complainant's mark as to the source, sponsorship,
affiliation, or endorsement of Respondent's web site or location or of a
product or service on Respondent's web site or location.
A hard copy of the Response was partially received by the National
Arbitration Forum on November 22, 2006, after the deadline for submission,
which was November 21, 2006. Therefore,
the Panel may choose to deny the deficient Response. See Telstra Corp. v. Chu, D2000-0423 (WIPO June 21,
2000) (finding that any weight to be given to the lateness of the response is
solely in the discretion of the panelist); see also Bank of Am. Corp.
v. NW Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(refusing to accept Respondent’s deficient Response that was only submitted in
electronic form because it would not have affected the outcome had the Panel
considered it). In the need to resolve the real dispute between the parties the
Panel is of the view that ruling a Response inadmissible because of formal
deficiencies would be an extreme remedy not consistent with the basic
principles of due process. See Strum v. Nordic Net Exch. AB, FA
102843 (Nat. Arb. Forum Feb. 21, 2002) (“[R]uling a Response inadmissible
because of formal deficiencies would be an extreme remedy not consistent with
the basic principles of due process. . ."); see also J.W.
Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct.
17, 2003) (finding that where Respondent submitted a timely Response
electronically, but failed to submit a hard copy of the Response on time,
“[t]he Panel is of the view that given the technical nature of the breach and
the need to resolve the real dispute between the parties that this submission
should be allowed and given due weight”).
The Panel finds that:
1.
the Domain Name
<windowssystemoptimizer.com> is confusingly similar to the
Complainant’s registered trade mark.
2.
the Respondent
has not established any right or legitimate interest in the Domain Name <windowssystemoptimizer.com> and
3.
the Respondent
has registered and is using the Domain Name <windowssystemoptimizer.com> in bad faith.
DISCUSSION
Paragraph 15(a) of the Rules for Uniform Domain
Name Dispute Resolution Policy (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 the 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 the Respondent is identical or confusingly similar to a trademark
or service mark in which the Complainant has rights;
(2)
the 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 had submitted evidence of its numerous trademark
registrations for the WINDOWS mark around the world, including trademark
registrations it holds with the United States Patent and Trademark Office (Reg.
No. 1,872,264 issued January 10, 1995) and with the trademark authority in
India (Reg. No. 261,538 issued May 30, 2003; Reg. No. 261,972 issued May 30,
2003). The Panel finds that
Complainant’s trademark registrations adequately 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 Morgan Stanley v.
Fitz-James (CT2341-RSC) Cititrust Grp. Ltd., FA 571918 (Nat. Arb.
Forum Nov. 29, 2005) (“The Panel finds from a preponderance of the evidence
that Complainant has registered its mark with national trademark
authorities. The Panel has determined
that such registrations present a prima facie case of Complainant’s
rights in the mark for purposes of Policy ¶ 4(a)(i).”).
The Panel also finds that the mere addition of two terms to
Complainant’s WINDOWS mark in the <windowssystemoptimizer.com> domain
name is insufficient to distinguish the disputed domain name from the mark and
as a result, the disputed domain name is confusingly similar to the mark
pursuant to Policy ¶ 4(a)(i). See
Disney v. McSherry, FA 154589 (Nat. Arb. Forum June 17, 2003) (finding the
<disneyvacationvillas.com> domain name to be confusingly similar to
Complainant’s DISNEY mark because it incorporated Complainant’s entire famous
mark and merely added two terms to it); see also Am. Express Co. v. Buy Now,
FA 318783 (Nat. Arb. Forum Oct. 14, 2004) (“In the view of the Panel, the
disputed domain names are confusingly similar to Complainant’s AMERICAN EXPRESS
and AMEX marks. Each disputed domain
name contains the AMERICAN EXPRESS or AMEX marks in its entirety and merely
adds nondistinctive, descriptive and generic terms, some of which describe
Complainant’s business.”).
The Complainant must show that the Respondent has no rights or
legitimate interests in respect of the disputed domain name. The Respondent
does not assume the burden of proof, but may establish a right or legitimate
interest in a disputed domain name by demonstrating in accordance with
paragraph 4(c) of the Policy:
(a) He has made preparations to use the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services prior to the dispute;
(b) He is commonly known by the domain name, even if he has not acquired any trademark rights; or
(c) He intends to make a legitimate, non-commercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark.
The Panel determines that the Complainant has discharged the onus of
proof for the second criterion: The Respondent has failed to demonstrate any
legitimate right or interest.
According to the majority of Panel decisions this Panel also takes the
position that while Complainant has the burden of proof on this issue, once the
Complainant has made a prima facie showing, the burden of production
shifts to the Respondent to show by providing concrete evidence that it has
rights to or legitimate interests in the domain name at issue. See Document
Tech., Inc. v. Int’l Electronic Commc’ns, Inc., D2000-0270 (WIPO June 6,
2000); see also Inter-Continental
Hotel Corp. v. Khaled Ali Soussi, D2000-0252 (WIPO July 5, 2000); 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”); see also G.D. Searle v. Martin Mktg., FA
118277 (Nat. Arb. Forum Oct. 1, 2002) (“Because Complainant’s Submission
constitutes a prima facie case under the Policy, the burden effectively
shifts to Respondent.”).
Complainant alleges that there is no evidence in the record suggesting
that Respondent is commonly known by the disputed domain name, including the
WHOIS information, which lists “Abhishek Lodha and Net Always” as the
registrant of the disputed domain name.
Complainant also asserts that it has not authorized or licensed
Respondent to register or use a domain name incorporating Complainant’s WINDOWS
mark. The Panel agrees that Respondent
is not commonly known by the disputed domain name. The Panel finds that
Respondent does not have rights or legitimate interests in the domain name
pursuant to Policy ¶ 4(c)(ii). See
Broadcom Corp. v. Intellifone Corp., FA 96356 (Nat. Arb. Forum Feb. 5, 2001)
(finding no rights or legitimate interests because the respondent is not
commonly known by the disputed domain name or using the domain name in
connection with a legitimate or fair use); see also Wells Fargo & Co. v.
Onlyne Corp. Services11, Inc., FA 198969 (Nat. Arb. Forum Nov. 17, 2003)
(“Given the WHOIS contact information for the disputed domain [name], one can
infer that Respondent, Onlyne Corporate Services11, is not commonly known by
the name ‘welsfargo’ in any derivation.”).
Complainant submits a screen shot of Respondent’s website at the <windowssystemoptimizer.com>
domain name as evidence of Respondent’s use of the disputed domain name. Respondent is allegedly offering computer
software that will “clean and optimize” computers using Complainant’s operating
system under the WINDOWS mark. The
Panel finds that Respondent is misleadingly diverting Internet users seeking
Complainant’s WINDOWS products and services to its own commercial website, and
that such use 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 Bank of Am.
Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003)
(“Respondent’s demonstrated intent to divert Internet users seeking
Complainant’s website to a website of Respondent and for Respondent’s benefit
is not a bona fide offering of goods or services under Policy ¶ 4(c)(i)
and it is not a legitimate noncommercial or fair use under Policy ¶
4(c)(iii).”); see also Summit Group, LLC v. LSO, Ltd., FA 758981 (Nat.
Arb. Forum Sept. 14, 2006) (finding that the respondent’s use of the
complainant’s LIFESTYLE LOUNGE mark to redirect Internet users to respondent’s
own website for commercial gain does not constitute either 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 claims that it has put a disclaimer on its website, showing
its “honest intention.” Nevertheless,
the Panel is of the view that the posting of a disclaimer does not grant
Respondent rights or legitimate interests in the <windowssystemoptimizer.com>
domain name pursuant to Policy ¶ 4(a)(ii).
See AltaVista Co. v. AltaVista, FA 95480 (Nat. Arb. Forum Oct.
31, 2000) (finding that since a disclaimer does not, and could not, accompany
the domain name, then the “domain name attracts the consumer’s initial interest
and the consumer is misdirected long before he/she has the opportunity to see
the disclaimer”); see also DaimlerChrysler Corp. v. Bargman, D2000-0222
(WIPO May 29, 2000) (finding that addition of a disclaimer, when the domain
name consists of the complainant’s well-known trademark, does not counter the
expectation of Internet users that the domain name is sponsored by the
complainant).
In 2005, Complainant alleges that Respondent offered to sell the
disputed domain name to Complainant for $35,000, and then lowered its offer to
$3,000. Complainant asserts that both
prices are “well above” Respondent’s out-of-pocket costs associated with
registering and maintaining the disputed domain name. The Panel is of the view that Respondent’s offer for compensation
is in excess of its actual out-of-pocket costs and conclude that Respondent’s
offer demonstrates bad faith registration and use pursuant to Policy ¶
4(b)(i). See Am. Online, Inc. v. Prijic, FA
112639 (Nat. Arb. Forum June 27, 2002) (“[I]n determining whether Respondent
has sought consideration in excess of its out-of-pocket costs, the Policy makes
clear that only costs related to the domain name are to be considered, and not
those related to the creation or maintenance of the connected website.”); see also Bank of Am. Corp. v. Nw. Free Cmty.
Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent's general
offer of the disputed domain name registration for sale establishes that the
domain name was registered in bad faith under Policy ¶ 4(b)(i).”).
In addition, the Panel finds that Respondent’s diversion of Internet
users seeking Complainant’s products to its own website for commercial gain
suggests bad faith registration and use under Policy ¶ 4(b)(iv), because
Respondent likely profits from redirecting consumers to its own website and
selling them computer software designed to run on Complainant’s WINDOWS
operating system. See BPI Commc’ns,
Inc. v. Boogie TV LLC, FA 105755 (Nat. Arb. Forum Apr. 30, 2002)
(“Complainants are in the music and entertainment business. The links associated with <billboard.tv>
and <boogie.tv> appear to be in competition for the same Internet users,
which Complainants are trying to attract with the <billboard.com> web
site. There is clearly a likelihood of
confusion between <billboard.tv> and BILLBOARD as to the source, sponsorship,
affiliation, or endorsement of the web site or of a product or service on the
web site.”); see also MySpace, Inc. v. Myspace Bot, FA 672161 (Nat. Arb.
Forum May 19, 2006) (holding that the respondent registered and used the
<myspacebot.com> domain name in bad faith by diverting Internet users
seeking the complainant’s website to its own website for commercial gain
because the respondent likely profited from this diversion scheme).
The Panel further concludes that Respondent has demonstrated bad faith
registration and use pursuant to Policy ¶ 4(b)(iii) by linking the disputed
domain name to its own website, as Respondent is disrupting Complainant’s
business under the WINDOWS mark by offering computer software designed to run
on Complainant’s operating system. See
EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the
respondent registered and used the domain name <eebay.com> in bad faith
where the respondent has used the domain name to promote competing auction
sites); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June
12, 2000) (finding that the respondent has diverted business from the
complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)).
Respondent alleges that it has put a disclaimer on its website. However, the Panel still finds that
Respondent’s use of a disclaimer does not avoid a finding of bad faith under
Policy ¶ 4(a)(iii). See Ciccone v.
Parisi, D2000-0847 (WIPO Oct. 12, 2000) (“Respondent’s use of a disclaimer
on its website is insufficient to avoid a finding of bad faith. First, the disclaimer may be ignored or
misunderstood by Internet users.
Second, a disclaimer does nothing to dispel initial interest confusion
that is inevitable from Respondent’s actions.
Such confusion is a basis for finding a violation of Complainant’s
rights.”); see also Thomas & Betts Int’l, Inc. v. Power Cabling Corp.,
AF-0274 (eResolution Oct. 23, 2000) (finding bad faith based upon initial
interest confusion despite disclaimer and link to the complainant’s website on
the respondent’s website).
DECISION
Having established all three elements required under the ICANN Policy,
the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <windowssystemoptimizer.com>
domain name be TRANSFERRED from Respondent to Complainant.
Dr. Reinhard Schanda, Panelist
Dated: December 12, 2006
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