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#UDRP madness : Indian Respondent disputes #Microsoft Windows trademark

From the “big balls” department: The Indian registrant of Windows12ISO.com claimed Microsoft’s mark is not valid in the ensuing UDRP.

The obvious trademark infringement is emphasized by the content available at the web site. But according to the Respondent, this is what really happened:

The disputed domain has been registered by the respondent in good faith. The Respondent did not have any malicious intention in using the windows word (which is registered under microsoft) name since the respondent had the misconception that windows is a generic word and can be used by anybody and was not aware of the fact that the windows can only be used by microsoft until the complaint was received. The current domain has some uniqueness, it contains “iso” which is not related to microsoft nor does it depict microsoft in any form. The domain is www.windows12iso.com contains 12iso since windows 12 is not launched by microsoft the 12iso depicts its uniqueness. No damage has been done due to this domain since several other domains have also been registered which are similar in name.

The sole NAF panelist did not waste any time on this nonsense, ordering the domain Windows12ISO.com to be transferred to the Complainant, Microsoft Corporation.

Microsoft Corporation v. teena mathur

Claim Number: FA2008001907106

PARTIES

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

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <windows12iso.com>, registered with GoDaddy.com, LLC.

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.

David S. Safran, 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 <windows12iso.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@windows12iso.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 28, 2020, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the Forum appointed David S. Safran, 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 has rights in the WINDOWS mark through its registration with numerous trademark offices throughout the world, including India, where Respondent allegedly is based (e.g. United States Patent and Trademark Office (“USPTO”), Reg. 2,005,901, registered Oct. 8, 1996; IP India, Reg. 1,236,750, registered Sep. 15, 2003). See Compl. Ex. D. Respondent’s <windows12iso.com> domain name is confusingly similar to Complainant’s WINDOWS mark as it incorporates the mark in its entirety and merely adds the generic acronym “iso,” along with the number 12 and the “.com” generic top-level domain (“gTLD”).

Respondent lacks rights or legitimate interests in the <windows12iso.com> domain name, as it is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its WINDOWS mark. Respondent does not use the disputed domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to attract internet users for commercial gain by prominently displaying Complainant’s mark on the disputed domain name’s resolving website alongside unrelated third party pay-per-click ads that Respondent presumably profits from.

Respondent registered and uses the <windows12iso.com> domain name in bad faith. Respondent attempts to attract internet users for commercial gain by prominently using Complainant’s mark on the disputed domain name’s resolving website to confuse users into believing there is an affiliation between Complainant and Respondent, in order to raise pay-per-click ad revenue. Respondent also had actual knowledge of Complainant’s rights in the WINDOWS mark when it registered the disputed domain name.

B. Respondent

The disputed domain has been registered by the respondent in good faith. The Respondent did not have any malicious intention in using the windows word (which is registered under microsoft) name since the respondent had the misconception that windows is a generic word and can be used by anybody and was not aware of the fact that the windows can only be used by microsoft until the complaint was received. The current domain has some uniqueness, it contains “iso” which is not related to microsoft nor does it depict microsoft in any form. The domain is www.windows12iso.com contains 12iso since windows 12 is not launched by microsoft the 12iso depicts its uniqueness. No damage has been done due to this domain since several other domains have also been registered which are similar in name.

FINDINGS

WINDOWS is a famous mark. Respondent had to have known of the mark at the time that it registered the domain name at issue. The domain name incorporates Complaint’s mark and is used in a bad faith manner.

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 claims rights in the WINDOWS mark through its registration with numerous trademark offices throughout the world, including India, where Respondent allegedly is based (e.g. USPTO, Reg. 2,005,901, registered Oct. 8, 1996; IP India, Reg. 1,236,750, registered Sep. 15, 2003). See Compl. Ex. D. Registration with multiple trademark offices is generally sufficient in demonstrating rights in a mark under Policy ¶ 4(a)(i). See Bloomberg Finance L.P. v. Jimmy Yau, FA 1764034 (Forum Jan. 25, 2018) (“The Panel finds that complainant has rights in BLOOMBERG mark under Policy ¶ 4(a)(i) based upon its registration with multiple trademark agencies, including the USPTO.”). Therefore, the Panel finds that Complainant has rights in the MICROSOFT mark under Policy ¶ 4(a)(i).

Complainant also asserts common law rights in the Windows mark. In lieu of a registered trademark, common law rights in a mark may satisfy Policy ¶ 4(a)(i). See Oculus VR, LLC v. Ivan Smirnov, FA 1625898 (Forum July 27, 2015) (holding, “A Complainant does not need to hold registered trademark rights in order to have rights in a mark under Policy ¶ 4(a)(i) and it is well established that a Complainant may rely on common law or unregistered trademarks that it can make out.”). To establish common law rights in a mark, a complainant generally has to prove the mark as secondary meaning based on factors such as longstanding use of the mark, and widespread recognition. See Gourmet Depot v. DI S.A., FA 1378760 (Forum June 21, 2011) (“Relevant evidence of secondary meaning includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition.”). Complainant argues that its longstanding use of the mark has made it widely known to people around the world, and that previous Panels have established that the WINDOWS mark is a famous trademark. See Microsoft Corp. v. Methods for Mastery, Inc., FA 1489730 (Forum April 25, 2013) (“There is no question that WINDOWS is a well-known trademark not only to consumers but to the general public. For this reason, the trademark WINDOWS is in fact a famous trademark”). Complainant provides the history of Complainant’s mark taken from Complainant’s official webpage. See Compl. Ex. B. The Panel agrees and finds that Complainant has common law rights in the mark under Policy ¶ 4(a)(i).

Complainant contends that Respondent’s <windows12iso.com> domain name is confusingly similar to the WINDOWS mark. Adding a “.com” gTLD along with numbers and generic acronyms related to Complainant’s services is generally insufficient in differentiating a domain name from the mark it incorporates under Policy ¶ 4(a)(i). See Twentieth Century Fox Film Corporation v Domain Admin / PrivacyProtect.org / Denis Ferulev, FA 1652313 (Forum Jan. 19, 2016) (“Complainant notes that the domain name contains the recognised acronym for its FAMILY GUY mark, along with the number ‘24’ … the Panel finds that the <fg24.biz> domain name is confusingly similar to the FAMILY GUY mark under Policy ¶ 4(a)(i).”); see also Abt Elecs., Inc. v. Ricks, FA 904239 (Forum Mar. 27, 2007) (“The Panel also finds that Respondent’s <abt.com> domain name is identical to Complainant’s ABT mark since addition of a generic top-level domain (“gTLD”) is irrelevant when conducting a Policy ¶ 4(a)(i) analysis.”). Respondent’s disputed domain name fully incorporates Complainant’s WINDOWS mark and simply adds the “.com” gTLD, along with the number 12 and the letters “iso,” which Complainant argues is an acronym for virtual installation disk, and related to the computer services Complainant offers. The Panel agrees, and finds the disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i).

Rights or Legitimate Interests

The Panel recognizes that 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), then the burden shifts to Respondent to show 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 argues that Respondent lacks rights or legitimate interests in the <windows12iso.com> domain name, as it is not commonly known by the disputed domain name, nor has Complainant authorized or licensed Respondent to use its WINDOWS mark in the disputed domain name. Under Policy ¶ 4(c)(ii), relevant WHOIS information may demonstrate that a Respondent is not commonly known by a disputed domain name. See Bittrex, Inc. v. Operi Manaha, FA 1815225 (Forum Dec. 10, 2018) (concluding that the respondent was not commonly known by the <appbittrex.com> domain name where the WHOIS information listed Respondent as “Operi Manaha,” and nothing else in the record suggested Respondent was authorized to use the BITTREX mark.). The WHOIS of record identifies Respondent as “Teena Mathur”, and Respondent does not contest the assertion that Complainant never authorized it to use the WINDOWS mark in the disputed domain. See Compl. Ex. A; see also Registrar Verification Email. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii).

Complainant argues that Respondent is not using the <windows12iso.com> domain name for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use. Instead, Respondent attempts to pass itself off as Complainant in order to attract customers to the disputed domain name’s resolving website, where Respondent hosts ads for unrelated services, from which it presumably profits. Using a disputed domain name to pass off as a complainant, in order to profit from pay-per-click fees from advertisements unrelated to Complainant’s business is generally not considered a bona fide offering of goods or services, nor is it a legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) and (iii). See Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA 1790949 (Forum July 9, 2018) (finding the respondent did not use the domain name to make a bona fide offering of goods or services per Policy ¶ 4(c)(i) or for a legitimate noncommercial or fair use per Policy ¶ 4(c)(iii) where the website resolving from the disputed domain name featured the complainant’s mark and various photographs related to the complainant’s business); see also Bloomberg Finance L.P. v. Syed Hussain / Domain Management, FA1410001582912 (Forum Nov. 10, 2014) (concluding that the respondent’s use of the disputed domain name to host hyperlinks, unrelated to the complainant’s business, did not qualify as a bona fide offering of goods or services, or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(i) and Policy ¶ 4(c)(iii)). Complainant provides screenshots of the disputed domain name’s resolving website, which features Complainant’s WINDOWS mark and content related to Windows 12 software (which Complainant alleges does not exist), alongside hyperlinks for third party unrelated services, which Complainant argues are pay-per-click ads that Respondent profits from. See Compl. Ex. E. The Panel agrees, and finds that Respondent lacks rights or legitimate interests in the disputed domain name, as it does not use it for any bona fide offering of goods or services, nor any legitimate noncommercial or fair use under Policy ¶¶ 4(c)(i) or (iii).

Registration and Use in Bad Faith

Complainant argues that Respondent registered and uses the <windows12iso.com> domain name in bad faith by attempting to use the goodwill and notoriety associated with Complainant’s WINDOWS mark for commercial gain by hosting pay-per-click links on the disputed domain name’s resolving website, where Respondent prominently displays the mark. Using a mark to confuse internet users into believing they are visiting a site affiliated with a complainant, where the respondent hosts unrelated pay-per-click links, is generally considered bad faith attraction for commercial gain under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also Plain Green, LLC v. wenqiang tang, FA1505001621656 (Forum July 1, 2015) (finding that the respondent’s use of the disputed domain name to feature generic third-party hyperlinks constituted bad faith according to Policy ¶ 4(b)(iv)). The Panel notes the screenshots of the disputed domain name’s resolving website, which prominently features Complainant’s WINDOWS mark, along with third party unrelated hyperlinks which Respondent presumably profits from. See Compl. Ex. E. Thus, the Panel finds that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(b)(iv).

Complainant argues that Respondent registered the <windows12iso.com> in bad faith as it had actual knowledge of Complainant’s rights in the WINDOWS mark when it registered the disputed domain name. Under Policy ¶ 4(a)(iii), actual notice of a complainant’s rights in a mark when registering a domain name is generally sufficient to demonstrate bad faith, and may be established by registering a domain name that incorporates a mark with widespread notoriety and recognition and having the disputed domain resolve to a website with content related to Complainant’s services. Google Inc. v. Ahmed Humood, FA1411001591796 (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.”). Complainant argues that its mark is widely known not only in its industry, but by the general public, while the disputed domain name’s resolving website features content related to computers and software, and thus Respondent must have had actual notice of Complainant’s rights in the WINDOWS mark. The Panel agrees and finds that Respondent registered the disputed domain name in 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 <windows12iso.com> domain name be TRANSFERRED from Respondent to Complainant.

David S. Safran, Panelist

Dated: September 11, 2020


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