Microsoftzone.com + 3 more domains

The timeline behind microsoftzone.com

Registration, the decision and the archived record of what this domain actually displayed — from public RDAP and the Internet Archive.

How each disputed name was decided in this proceeding.

Result of record. The panel's reasoning and decisive facts behind each element are in the Intelligence dossier below.

NATIONAL ARBITRATION FORUM DECISION Microsoft Corporation v. Stephan Burkes d/b/a MicrosoftZone.Com Claim Number: FA0603000652743 PARTIES Complainant is Microsoft Corporation (“Complainant”), represented by Martin B. Schwimmer, of Schwimmer Mitchell Law Firm, 40 Radio Circle, Suite 7, Mt. Kisco, NY 10549. Respondent is Stephan Burkes d/b/a MicrosoftZone.Com (“Respondent”), 268 Bush Street Suite 4041, San Francisco, CA 94104-3503. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net>, registered with Network Solutions, Inc. 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. The Honorable Charles K. McCotter, Jr. (Ret.) as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on March 1, 2006; the National Arbitration Forum received a hard copy of the Complaint on March 6, 2006. On March 6, 2006, Network Solutions, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names are registered with Network Solutions, Inc. and that Respondent is the current registrant of the names. Network Solutions, Inc. has verified that Respondent is bound by the Network Solutions, 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 March 9, 2006, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of March 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@microsoftzone.com, postmaster@microsoftzone.biz, postmaster@microsoftzone.org and postmaster@microsoftzone.net by e-mail. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On April 4, 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. Edric Kilimann d/b/a microsoftzone.com filed an untimely Response on April 4, 2006, contending he did not receive the Complaint in sufficient time to submit a timely Response. The Panel, in its discretion, has chosen to consider the Response. 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. RELIEF SOUGHT Complainant requests that the domain names be transferred from Respondent to Complainant. PARTIES' CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names are confusingly similar to Complainant’s MICROSOFT mark. 2. Respondent does not have any rights or legitimate interests in the <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names. 3. Respondent registered and used the <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names in bad faith. B. Respondent makes the following assertions: Microsoftzone.com is a company specializing in Enterprise Software Development primarily with Microsoft technologies. Respondent registered the disputed domain names in October 2003 for its company’s use in promoting Microsoft technologies. Respondent says that his company has been actively marketing for over two years. Respondent contends that he notified Microsoft about his use of the disputed domain name and Microsoft reported no objection. Respondent contends that Complainant “has a NON-INTEREST in the domain(s).” FINDINGS Complainant, Microsoft Corporation, has continuously and extensively used the MICROSOFT mark in connection with its computer software products and information technology services since 1975. According to an August 2005 survey by Interbrand, a data service provider, Complainant’s MICROSOFT mark is the second most valuable mark in the world. Complainant holds numerous trademark registrations for the MICROSOFT mark with the United States Patent and Trademark Office (“USPTO”) (including Reg. No. 1,200,236 issued July 6, 1982; Reg. No. 1,731,160 issued November 10, 1992; Reg. No 2,337,072 issued April 4, 2000; Reg. No, 2,637,360 issued October 15, 2002). Respondent registered the <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names on October 6, 2003. Respondent is using the <microsoftzone.com> domain name to operate a website for its business, MicrosoftZone.Com, which offers information technology services similar to those offered by Complainant. Respondent’s <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names do not resolve to any content. 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 has established rights in the MICROSOFT mark through registration of the mark with the USPTO. 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 Vivendi Universal Games v. XBNetVentures Inc., FA 198803 (Nat. Arb. Forum Nov. 11, 2003) (“Complainant's federal trademark registrations establish Complainant's rights in the BLIZZARD mark.”). Respondent’s <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names are confusingly similar to Complainant’s MICROSOFT mark pursuant to Policy ¶ 4(a)(i), because each contains the entire mark and merely adds the generic term “zone” and a generic top-level domain. Panels have held that the mere additions of a generic term and a generic top-level domain to a complainant’s mark are insufficient to distinguish a domain name from a mark. See Sony Kabushiki Kaisha v. Inja, Kil, D2000-1409 (WIPO Dec. 9, 2000) (finding that “[n]either the addition of an ordinary descriptive word . . . nor the suffix ‘.com’ detract from the overall impression of the dominant part of the name in each case, namely the trademark SONY” and thus Policy ¶ 4(a)(i) is satisfied); see also Arthur Guinness Son & Co. (Dublin) Ltd. v. Healy/BOSTH, D2001-0026 (WIPO Mar. 23, 2001) (finding confusing similarity where the domain name in dispute contains the identical mark of the complainant combined with a generic word or term). The Panel finds that Policy ¶ 4(a)(i) has been satisfied. Rights or Legitimate Interests Complainant contends that Respondent lacks rights and legitimate interests in the <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names. Complainant must first make a prima facie case in support of its allegations, and the burden then shifts to Respondent to show it does have rights or legitimate interests pursuant to Policy ¶ 4(a)(ii). See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (holding that once the complainant asserts that the respondent has no rights or legitimate interests with respect to the domain, the burden shifts to the respondent to provide “concrete evidence that it has rights to or legitimate interests in the domain name at issue”). Respondent has no rights or legitimate interests in the <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names. Respondent holds himself out as Microsoftzone.Com. However, Complainant has not authorized or licensed Respondent to use the MICROSOFT mark. The widespread recognition and fame of Complainant’s MICROSOFT mark precludes Respondent from being known by the mark. Therefore, Respondent has not established rights or legitimate interests in the <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names pursuant to Policy ¶ 4(c)(ii). See Nike, Inc. v. de Boer, D2000-1397 (WIPO Dec. 21, 2000) (finding no rights or legitimate interests where one “would be hard pressed to find a person who may show a right or legitimate interest” in a domain name containing the complainant's distinct and famous NIKE trademark). Moreover, Respondent’s <microsoftzone.com> domain name, which includes Complainant’s MICROSOFT mark, resolves to a website offering information technology services in direct competition with Complainant. Because Respondent is diverting Internet users seeking Complainant’s services to its own competing website for commercial gain, Respondent’s use of the disputed domain name does not constitute a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial fair use pursuant to Policy ¶ 4(c)(iii). See Glaxo Group Ltd. v. WWW Zban, FA 203164 (Nat. Arb. Forum Dec. 1, 2003) (finding that the respondent was not using the domain name within the parameters of Policy ¶ 4(c)(i) or (iii) because the respondent used the domain name to take advantage of the complainant's mark by diverting Internet users to a competing commercial site); see also 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). In addition, Respondent’s <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names, which also include Complainant’s MICROSOFT mark, do not resolve to any content. Respondent registered the domain names on October 6, 2003, and therefore has been passively holding the disputed domain names for two-and-a-half years. Furthermore, Respondent has made no demonstrable preparations to use the disputed domain names, and given the widespread recognition and fame of Complainant’s mark, the Panel infers that any future use of the disputed domain names would infringe on Complainant’s mark and be in bad faith pursuant to Policy ¶ 4(a)(iii). See CBS Broad., Inc. v. LA-Twilight-Zone, D2000-0397 (WIPO June 19, 2000) (finding that given the long use and fame of the complainant’s mark, the respondent’s conduct is evidence of bad faith); see also TV Globo Ltda. v. Globoesportes.com, D2000-0791 (WIPO Sept. 12, 2000) (finding bad faith where (1) the domain name in dispute is obviously connected with a well-known mark, (2) the respondent deliberately chose a domain name which is the mark of the largest TV operator in the world’s largest Portuguese speaking country, and (3) the respondent failed to develop the site); see also Am. Online, Inc. v. Kloszewski, FA 204148 (Nat. Arb. Forum Dec. 4, 2003) (“Respondent's passive holding of the <aolfact.com> domain name for over six months is evidence that Respondent lacks rights and legitimate interests in the domain name.”). The Panel finds that Policy ¶ 4(a)(ii) has been satisfied. Registration and Use in Bad Faith Respondent has registered and is using the <microsoftzone.com> domain name in bad faith pursuant to Policy ¶ 4(b)(iv), because it is using the disputed domain name to divert Internet users seeking Complainant’s products to its own website offering competing services. In Ticketmaster Corporation v. DiscoverNet, Inc., D2001-0252 (WIPO Apr. 11, 2001), the respondent registered the <ticketmaster.net> domain name, which included the complainant’s TICKETMASTER mark, and was using it to redirect Internet users to a competing website at the <ticketpro.com> domain name. The panel found that such use constituted bad faith registration and use, because “[s]uch actions clearly manifest an intent of the [r]espondent to commercially benefit from the ensuing confusion of Internet users” who enter the disputed domain name attempting to reach the complainant’s website but are instead directed to the respondent’s website. Id. In this case, Respondent is also redirecting Internet users seeking Complainant’s products and services to a competing website for its own commercial gain, is taking advantage of the confusing similarity between the disputed domain name and Complainant’s MICROSOFT mark, and profiting off of the goodwill associated with the mark in violation of Policy ¶ 4(b)(iv). Therefore, Respondent has registered and is using the <microsoftzone.com> domain name in bad faith. See TM Acquisition Corp. v. Carroll, FA 97035 (Nat. Arb. Forum May 14, 2001) (finding bad faith where the respondent used the domain name, for commercial gain, to intentionally attract users to a direct competitor of the complainant). In addition, by passively holding the <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names for two-and-a-half years, Respondent’s nonuse of the disputed domain names constitutes bad faith registration and use pursuant to Policy ¶ 4(a)(iii), for as the panel in Phat Fashions, LLC v. Kruger, FA 9619 (Nat. Arb. Forum Dec. 29, 2000) stated, “it makes no sense whatever to wait until it actually ‘uses’ the name, when inevitably, when there is such use, it will create the confusion described in the Policy.” See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s passive holding of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy). 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 <microsoftzone.com>, <microsoftzone.biz>, <microsoftzone.org> and <microsoftzone.net> domain names be TRANSFERRED from Respondent to Complainant. The Honorable Charles K. McCotter, Jr. (Ret.), Panelist Dated: April 17, 2006 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page NATIONAL ARBITRATION FORUM

Source of record: FORUM . Reproduced for research; FORUM is the authoritative source.