Microsoftoneapp.com

The timeline behind microsoftoneapp.com

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

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. a zhong GG Ltd Claim Number: FA0912001297546 PARTIES Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers, of Richard Law Group, Inc., Texas, USA. Respondent is a zhong GG Ltd (“Respondent”), Australia. REGISTRAR AND DISPUTED DOMAIN NAME The domain name at issue is <microsoftoneapp.com>, registered with Godaddy.com, 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. James A. Carmody, Esq., as Panelist. PROCEDURAL HISTORY Complainant submitted a Complaint to the National Arbitration Forum electronically on December 4, 2009; the National Arbitration Forum received a hard copy of the Complaint on December 7, 2009. On December 4, 2009, Godaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <microsoftoneapp.com> domain name is registered with Godaddy.com, Inc. and that the Respondent is the current registrant of the name. Godaddy.com, Inc. has verified that Respondent is bound by the Godaddy.com, 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 December 9, 2009, a Notification of Complaint and Commencement of Administrative Proceeding (the “Commencement Notification”), setting a deadline of December 29, 2009 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@microsoftoneapp.com by e-mail. Respondent's Response was received in electronic copy only on December 22, 2009. However, in that no hard copy was received by the Response deadline, the Response is considered deficient under ICANN Rule 5. On January 6, 2010, pursuant to Complainant’s request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed James A. Carmody, Esq., as Panelist. RELIEF SOUGHT Complainant requests that the domain name be transferred from Respondent to Complainant. PARTIES’ CONTENTIONS A. Complainant makes the following assertions: 1. Respondent’s <microsoftoneapp.com> domain name is confusingly similar to Complainant’s MICROSOFT and ONEAPP marks. 2. Respondent does not have any rights or legitimate interests in the <microsoftoneapp.com>domain name. 3. Respondent registered and used the <microsoftoneapp.com> domain name in bad faith. B. Respondent filed correspondence which did not technically qualify as a Response under the Policy because it was received only in electronic form. The content of the Respondent’s correspondence did not specifically take issue with any of the assertions of the Complainant but merely stated that Respondent is a small Taiwanese cloud computing company and Complainant is a “large, multi-taking by force” company. Most of the content of Respondent’s correspondence, though in English, was incomprehensible to the Panel, although it appears that Respondent may be offering to transfer the domain name at issue to Complainant for $38,000. FINDINGS Complainant claims established rights in the MICROSOFT mark under Policy ¶ 4(a)(i) through its numerous registrations with various governmental trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 issued July 6, 1982). Furthermore, Complainant claims common law rights in its ONEAPP mark. Complainant states that is has filed an intent-to-use (“ITU”) application for federal registration of the ONEAPP mark on July 7, 2009 with the USPTO and that it offers a new software application bearing this mark. The Complainant maintains that the Respondent’s <microsoftoneapp.com> domain name is confusingly similar to Complainant’s MICROSOFT and ONEAPP marks because the combination of its MICROSOFT mark, ONEAPP mark, and the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from Complainant’s MICROSOFT mark or ONEAPP mark. Complainant alleges that it has not licensed or otherwise authorized Respondent to use any of its marks or to register the domain name at issue and that Respondent is not commonly known by the domain name at issue. Finally, Complainant asserts that Respondent registered and has used the domain name at issue in bad faith and has offered to sell the domain name at issue to Complainant upon payment of $38,000, far in excess of any conceivable out of pocket costs. 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. Identical and/or Confusingly Similar Complainant has established rights in the MICROSOFT mark under Policy ¶ 4(a)(i) through its numerous registrations with various governmental trademark authorities throughout the world, including the United States Patent and Trademark Office (“USPTO”) (e.g., Reg. No. 1,200,236 issued July 6, 1982). 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 Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates; therefore it is sufficient that the complainant can demonstrate a mark in some jurisdiction). Furthermore, Complainant alleges that it has common law rights in its ONEAPP mark. Complainant need not hold a registration for the ONEAPP mark in order to establish rights in the mark under Policy ¶ 4(a)(i) provided that Complainant can establish common law rights in the mark through a sufficient showing of secondary meaning. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (finding that Policy ¶ 4(a)(i) does not require a trademark registration if a complainant can establish common law rights in its mark); see also Zee TV USA, Inc. v. Siddiqi, FA 721969 (Nat. Arb. Forum July 18, 2006) (finding that the complainant need not own a valid trademark registration for the ZEE CINEMA mark in order to demonstrate its rights in the mark under Policy ¶ 4(a)(i)). Complainant filed an intent-to-use (“ITU”) application for federal registration of the ONEAPP mark on July 7, 2009 with the USPTO and offers a new software application bearing this mark. The Panel finds that Complainant has sufficiently made a showing of secondary meaning in the mark and further finds that Complainant has established common law rights in the ONEAPP mark under Policy ¶ 4(a)(i). See Phone-N-Phone Serv. (Bermuda) Ltd. v. Levi, D2000-0040 (WIPO Mar. 23, 2000) (finding that Complainant’s intent-to-use application bestowed rights in the PHONE-N-PHONE mark); see also Stellar Call Ctrs. Pty Ltd. v. Bahr, FA 595972 (Nat. Arb. Forum Dec. 19, 2005) (finding that the complainant established common law rights in the STELLAR CALL CENTRES mark because the complainant demonstrated that its mark had acquired secondary meaning). Respondent’s <microsoftoneapp.com> domain name is confusingly similar to Complainant’s MICROSOFT and ONEAPP marks because the combination of its MICROSOFT mark, ONEAPP mark, and the generic top-level domain (“gTLD”) “.com” does not sufficiently distinguish the disputed domain name from Complainant’s MICROSOFT mark or ONEAPP mark. Accordingly, the Panel finds that the <microsoftoneapp.com> domain name is confusingly similar to Complainant’s MICROSOFT and ONEAPP marks under Policy ¶ 4(a)(i). See G.D. Searle & Co. v. Paramount Mktg., FA 118307 (Nat. Arb. Forum Sept. 27, 2002) (holding that the addition of other well-known pharmaceutical drug brand names to the <viagra-xenical-propecia-meridia-bontril-phentermine-celebrex.com> domain name does not diminish the capacity of the disputed domain name to confuse Internet users, but actually “adds to the potential to confuse”); see also Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). The Panel finds Complainant has satisfied Policy ¶ 4(a)(i). 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), and then the burden shifts to Respondent to show it does have rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name); see also AOL LLC v. Gerberg, FA 780200 (Nat. Arb. Forum Sept. 25, 2006) (“Complainant must first make a prima facie showing that Respondent does not have rights or legitimate interest in the subject domain names, which burden is light. If Complainant satisfies its burden, then the burden shifts to Respondent to show that it does have rights or legitimate interests in the subject domain names.”). The Panel finds that Complainant has made its prima facie case. The WHOIS information for the disputed domain name lists “a zhong GG Ltd” as the registrant. Complainant further contends that it has not authorized Respondent to use the MICROSOFT mark. Accordingly, the Panel finds that Respondent is not commonly known by the disputed domain name under Policy ¶ 4(c)(ii). See Braun Corp. v. Loney, FA 699652 (Nat. Arb. Forum July 7, 2006) (concluding that the respondent was not commonly known by the disputed domain names where the WHOIS information, as well as all other information in the record, gave no indication that the respondent was commonly known by the disputed domain names, and the complainant had not authorized the respondent to register a domain name containing its registered mark); see also M. Shanken Commc’ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record). The <microsoftoneapp.com> domain name resolves to a website that only displays a welcome message. Respondent is not making an active use of the disputed domain name. The Panel finds that Respondent’s inactive use of the disputed domain name is not 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 George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (finding that the respondent had no rights or legitimate interests in a domain name under either Policy ¶ 4(c)(i) or Policy ¶ 4(c)(iii) where it failed to make any active use of the domain name); see also Am. Broad. Cos., Inc. v. Sech, FA 893427 (Nat. Arb. Forum Feb. 28, 2007) (finding that the respondent’s non-use of the <abc7chicago.mobi> domain name since its registration provided evidence that the respondent lacked rights or legitimate interests in the disputed domain name). Respondent apparently offered to sell the <microsoftoneapp.com> domain name to Complainant for $38,000. The Panel find thats Respondent’s offer to sell the disputed domain name for more than Respondent’s registration costs is further evidence that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). See Williams-Sonoma, Inc. v. Fees, FA 937704 (Nat. Arb. Forum Apr. 25, 2007) (concluding that a respondent’s willingness to sell a domain name to the complainant suggests that a respondent has no rights or legitimate interests in that domain name under Policy ¶ 4(a)(ii)); see also Vance Int’l, Inc. v. Abend, FA 970871 (Nat. Arb. Forum June 8, 2007) (“An attempt by a respondent to sell a domain name to a complainant who owns a trademark with which the domain name is confusingly similar for an amount in excess of out-of-pocket costs has been held to demonstrate a lack of legitimate rights or interests.”). Panel finds Complainant has satisfied Policy ¶ 4(a)(ii). Registration and Use in Bad Faith As noted above, Respondent offered to sell the <microsoftoneapp.com> domain name to Complainant for $38,000. The Panel find that this offer to sell the disputed domain name for more than Respondent’s registration costs constitutes bad faith registration and use under Policy ¶ 4(b)(i). See George Weston Bakeries Inc. v. McBroom, FA 933276 (Nat. Arb. Forum Apr. 25, 2007) (concluding that the respondent registered and was using the <gwbakeries.mobi> domain name in bad faith according to Policy ¶ 4(b)(i) where it offered it for sale for far more than its estimated out-of-pocket costs it incurred in initially registering the disputed domain name); see also Neiman Marcus Group, Inc. v. AchievementTec, Inc., FA 192316 (Nat. Arb. Forum Oct. 15, 2003) (finding the respondent’s offer to sell the domain name for $2,000 sufficient evidence of bad faith registration and use under Policy ¶ 4(b)(i)). Further, Respondent is not actively using the <microsoftoneapp.com> domain name and this inactive use of the disputed domain name is evidence of bad faith registration and use under Policy ¶ 4(a)(iii). See DCI S.A. v. Link Commercial Corp., D2000-1232 (WIPO Dec. 7, 2000) (concluding that the respondent’s [failure to make an active use] of the domain name satisfies the requirement of ¶ 4(a)(iii) of the Policy); see Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) (finding that merely holding an infringing domain name without active use can constitute use in bad faith). Panel finds Complainant has satisfied 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 <microsoftoneapp.com> domain name be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: January 20, 2010 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.