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#Microsoft has no trademark in “window” says Respondent in Window11Updates.com #UDRP

From the hilarious claims department: The Indian registrant of the domain Window11Updates.com claimed that Microsoft has no rights in “window,” in response to the filed UDRP.

The web site at Window11Updates.com presents a series of blog posts about imaginary products from Microsoft: Windows 11 and Windows 12.

The UDRP was filed by Microsoft Corporation, and the Respondent is from India. This is what he said:

Respondent claims that the disputed domain name does not use Complainant’s WINDOWS mark but rather utilizes the generic term “window” which is not copyrighted. Respondent does not use the domain name to sell any product related to Complainant and refers users to Complainant’s original website for buying any such product or service. Respondent has been working on the disputed domain name website for more than a year with no objection by Complainant and it does not have any wrong intention or motive to use the word “windows” which is a registered trademark for Complainant. Finally, Respondent does not believe any damage has been done to Complainant by this domain name.

The sole panelist at the NAF, Steven M. Levy, Esq., didn’t get sidetracked by any of this malarkey, and ordered the domain Window11Updates.com to be transferred to the Complainant.

Microsoft Corporation v. Arif Khan

Claim Number: FA2008001907105

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Molly Buck Richard of Richard Law Group, Inc., Texas, USA. Respondent is Arif Khan (“Respondent”), India.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <window11updates.com>, registered with GoDaddy.com, LLC.

PANEL

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.

Steven M. Levy, Esq. as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the Forum electronically on August 3, 2020; the Forum received payment on August 3, 2020.

On August 5, 2020, GoDaddy.com, LLC confirmed by e-mail to the Forum that the <window11updates.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 August 6, 2020, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 26, 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@window11updates.com. Also on August 6, 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.

A timely Response was received and determined to be complete on August 25, 2020.

On August 27, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. 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.

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

PARTIES’ CONTENTIONS

A. Complainant

Complainant, Microsoft Corporation, is a software, services, and solutions company. Complainant asserts rights in the trademark WINDOWS through its use in commerce since 1983 and its registration of the mark with multiple trademark agencies, including the United States patent and Trademark Office (“USPTO”) dating back to 1995. Respondent’s <window11updates.com> domain name, registered on January 11, 2019, is confusingly similar to Complainant’s mark as it incorporates the WINDOWS mark merely, eliminating the “s” and adding the numeral “11” and the term “updates” along with the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights or legitimate interest in the <window11updates.com> domain name. Respondent is not commonly known by the domain name, nor has Complainant authorized Respondent’s use of the WINDOWS mark. Additionally, Respondent fails to use the domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent uses the domain name to attract Internet users to a website hosting unrelated third-party links for financial gain.

Respondent registered and uses the <window11updates.com> domain name in bad faith. Respondent’s use of the domain name to host links to third-party commercial goods and services is in bad faith. Additionally, Respondent’s use of a privacy shield reflects its bad faith. Finally, Respondent registered the domain name with full knowledge of Complainant’s rights in the WINDOWS mark.

B. Respondent

Respondent claims that the disputed domain name does not use Complainant’s WINDOWS mark but rather utilizes the generic term “window” which is not copyrighted. Respondent does not use the domain name to sell any product related to Complainant and refers users to Complainant’s original website for buying any such product or service. Respondent has been working on the disputed domain name website for more than a year with no objection by Complainant and it does not have any wrong intention or motive to use the word “windows” which is a registered trademark for Complainant. Finally, Respondent does not believe any damage has been done to Complainant by this domain name.

FINDINGS

(1) The domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;

(2) Respondent has no rights to or legitimate interests in respect of the domain name; and

(3) The disputed domain name was registered and is being used by Respondent in bad faith.

DISCUSSION

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.

Identical and/or Confusingly Similar

Complainant asserts rights in the WINDOWS mark through its registration of the mark with multiple trademark agencies around the world including the USPTO. Registration of a mark with a national governmental trademark agency is sufficient to demonstrate rights in the mark under 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.”) Although Complainant provides a textual list of many of its claimed trademark registrations around the world, no copies of certificates or screenshots of trademark office websites are provided to verify the items in this list. However, Complainant does provide a copy of one of its USPTO registration certificates. Therefore, the Panel finds that Complainant has rights in the mark under Policy ¶ 4(a)(i).

Complainant argues that Respondent’s <window11updates.com> domain name is confusingly similar to Complainant’s mark because the disputed domain name incorporates the WINDOWS mark merely omitting the letter “s” and adding the number “11” and term “updates” along with the “.com” gTLD. Removing a single letter from a mark is typically not enough to eliminate the confusing similarity between that domain name and a complainant’s mark. See Lockheed Martin Corporation v. toyosei maruyama, FA 1620489 (Forum July 7, 2015) (“Simply removing the letter ‘s’ from a mark in the creation of a domain name still creates a confusingly similar domain name.”). Respondent correctly asserts that the word “windows” does not appear in the disputed domain name but this misses the point of Policy ¶ 4(a)(i) which is to consider whether the domain name is confusingly similar, and not merely whether it is identical to Complainant’s mark. Also, the addition of a generic or descriptive term and a gTLD is not sufficient to distinguish a disputed domain name from a mark under Policy ¶ 4(a)(i). See Wiluna Holdings, LLC v. Edna Sherman, FA 1652781 (Forum Jan. 22, 2016) (Finding the addition of a generic term and gTLD is insufficient in distinguishing a disputed domain name from a mark under Policy ¶ 4(a)(i).). Therefore, the Panel finds that the disputed domain name is confusingly similar to Complainant’s mark per Policy ¶ 4(a)(i).

While Respondent also contends that the <window11updates.com> domain name contains a common and generic term and as such cannot be found to be identical or confusingly similar to Complainant’s mark, the Panel notes that such a determination is not necessary under Policy ¶ 4(a)(i) as this portion of the Policy considers only whether Complainant has rights in the mark and whether the disputed domain name is identical or confusingly similar to Complainant’s mark. See Precious Puppies of Florida, Inc. v. kc, FA 1028247 (Forum Aug. 10, 2007) (examining Respondent’s generic terms arguments only under Policy ¶ 4(a)(ii) and Policy ¶ 4(a)(iii) and not under Policy ¶ 4(a)(i)); see also Vitello v. Castello, FA 159460 (Forum July 1, 2003) (finding that the respondent’s disputed domain name was identical to complainant’s mark under Policy ¶ 4(a)(i), but later determining the issue of whether the disputed domain name was comprised of generic terms under Policy ¶¶ 4(a)(ii) and 4(a)(iii)).

Rights or Legitimate Interests

Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that 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 first argues that Respondent does not have rights or legitimate interests in the <window11updates.com> domain name, as Respondent is not commonly known by the disputed domain name, nor has Complainant authorized Respondent to use the WINDOWS mark. In considering this issue, relevant WHOIS information can be used to determine if a respondent is commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Amazon Technologies, Inc. v. Suzen Khan / Nancy Jain / Andrew Stanzy, FA 1741129 (Forum Aug. 16, 2017) (finding that respondent had no rights or legitimate interests in the disputed domain names when the identifying information provided by WHOIS was unrelated to the domain names or respondent’s use of the same). Additionally, lack of authorization to use a complainant’s mark may indicate that the respondent is not commonly known by that name. See Alaska Air Group, Inc. and its subsidiary, Alaska Airlines v. Song Bin, FA 1574905 (Forum Sept. 17, 2014) (holding that the respondent was not commonly known by the disputed domain name as demonstrated by the WHOIS information and based on the fact that the complainant had not licensed or authorized the respondent to use its ALASKA AIRLINES mark). The WHOIS information for the disputed domain name shows that the registrant’s name is “ARIF KHAN” and Respondent does not assert that it is known otherwise or that it is licensed to use Complainant’s mark. Therefore, the Panel finds that Respondent is not commonly known by the disputed domain name per Policy ¶ 4(c)(ii).

Additionally, Complainant claims Respondent fails to use the <window11updates.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use because Respondent uses the domain name to falsely convey an association with Complainant while hosting monetized links to third-party sites that offer unrelated goods and services. Use of a domain name to draw Internet users to a webpage with unrelated commercial links is not a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor does it make a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Ferring B.V. v. Shanshan Huang / Melissa Domain Name Services, FA1505001620342 (Forum July 1, 2015) (“Placing unrelated third party links for the benefit of a respondent indicates a lack of a bona fide offering of goods or services, and a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii), respectively.”) Here, Complainant provides a screenshot of Respondent’s website that prominently features Complainant’s WINDOWS mark and logo along with a mock-up of a product box displaying Complainant’s MICROSOFT trademark and logo. A header at the top of the page displays the text “Windows 11 Release Date, Features, Update Concept, ISO Microsoft” and there are links with titles such as “Windows 10 Update 2020:, “Windows 12 Lite”, “Download”, and “Contact Us”. Further down the site appears a few blocks of text that mention, for example, “Microsoft plans to further merge the desktop and the modern user interface.” Scattered throughout Respondent’s site are advertisements for third-party commercial sites for such products and services as furniture and home goods, software relating to Apple Mac computers, and password management software. The Panel finds that Complainant has made out a prima facie case based upon the evidence and arguments presented.

In its defense, Respondent notes that “This domain does not offer or sell any kind of product or service related to Microsoft.” It does not address the content of its website or deny that it promotes the products and services of commercial third parties who are unrelated to Complainant. The Panel finds that Respondent has not met its now-shifted burden of proving why it’s use of the disputed domain name is bona fide or in any way legitimate, noncommercial, or fair.

Based upon a preponderance of the evidence before it, the Panel finds that Respondent lacks rights and legitimate interests in the disputed domain name per Policy ¶¶ 4(c)(i) and (iii).

Registration and Use in Bad Faith

Complainant claims that Respondent registered the disputed domain name with knowledge of Complainant’s rights in its famous WINDOWS mark. Knowledge of a mark may be established through the mark’s fame as well as a respondent’s use of a mark. See Google Inc. v. Ahmed Humood, FA 1591796 (Forum Jan. 7, 2015) (“This Panel makes that inference; Respondent has actual knowledge of Complainant’s mark at the time of domain name registration based on the fame of Complainant’s GOOGLE mark and Respondent’s use of one of the disputed domain names to detail Internet domain name registration and maintenance services related to and in competition with Complainant.”). Here, Complainant provides an outline of the history and notoriety of the WINDOWS mark and Complainant’s company. It is also highly relevant that both the WINDOWS mark and Complainant’s name Microsoft, including the graphic logos for each mark, are used extensively on Respondent’s website. Therefore the panel finds that Respondent’s registration of the disputed domain name was done with actual knowledge of Complainant’s mark.

Next, Complainant argues that Respondent registered and uses the <window11updates.com> domain name in bad faith. Respondent uses the domain name to host advertisements and links to third-party websites and attract Internet users to their websites for financial gain, which is evidence of bad faith under Policy ¶ 4(b)(iv). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA 1613867 (Forum June 2, 2015) (finding that the respondent registered and used the domain name in bad faith under Policy ¶ 4(b)(iv) where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). As previously noted, Complainant provides a screenshot of the website that resolves from the disputed domain name and this prominently features Complainant’s WINDOWS mark, its logos, and images of its product while promoting unrelated products through monetized advertisements and links. Respondent does not deny this and only states that it does not offer Complainant’s products for sale. It further claims that the word “window” is “a general word which no one can copyright”. This does not address the context in which Respondent uses the word “window” nor does it relieve the confusion which has been intentionally caused by Respondent for the purposes of attracting users to its website in the hope that they will click on monetized advertisements for Respondent’s commercial gain. The Panel finds substantial evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

Additionally, Complainant claims that Respondent’s use of a privacy shield in registering the domain name is independent evidence of bad faith. See Robert Half International Inc. v. robert arran, FA 1764367 (Forum Feb. 5. 2018) (“Respondent’s use of a privacy registration service in an attempt to conceal his identity, though not itself dispositive, is a further indication of bad faith.”) Although unnecessary given its above finding, the Panel agrees that in the context of this case Respondent’s use of a WHOIS privacy service further supports a finding of bad faith under Policy ¶ 4(a)(iii).

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 <window11updates.com> domain name be TRANSFERRED from Respondent to Complainant.

 

Steven M. Levy, Esq., Panelist

Dated: August 31, 2020


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