Powerpoint2003.net + 9 more domains

The timeline behind powerpoint2003.net

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. Cursos Luis Bonilla S.L. a/k/a Cursos Luis Bonilla S.L. c/o Luis Bonilla a/k/a SL, Cursos Luis Bonilla S.L. Claim Number: FA1108001401141 PARTIES Complainant is Microsoft Corporation (“Complainant”), represented by James F. Struthers of Richard Law Group, Inc., Texas, USA. Respondent is Cursos Luis Bonilla S.L. a/k/a Cursos Luis Bonilla S.L. c/o Luis Bonilla a/k/a SL, Cursos Luis Bonilla S.L. (“Respondent”), Spain. REGISTRAR AND DISPUTED DOMAIN NAMES The domain names at issue are <powerpoint2003.net>, <cursodepowerpoint.com>, <cursospowerpoint2007.com>, <ejerciciospowerpoint.com>, <presentacionespowerpoint.net>, <presentacionpowerpoint.com>, <musicapresentacionpowerpoint.com>, and <tutorialpowerpoint.net>, registered with 1 & 1 Internet Ag. The domain names at issue are <powerpoint2010.net>, and <cursopowerpoint2010.com>, registered with Interdominios, 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 August 1, 2011. The Complaint was submitted in both Spanish and English. On August 2, 2011, Interdominios, Inc. confirmed by e-mail to the National Arbitration Forum that the <powerpoint2010.net>, and <cursopowerpoint2010.com> domain names are registered with Interdominios, Inc. and that Respondent is the current registrant of the names. Interdominios, Inc. has verified that Respondent is bound by the Interdominios, Inc. 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 1 & 1 Internet Ag confirmed by e-mail to the National Arbitration Forum that the <powerpoint2003.net>, <cursodepowerpoint.com>, <cursospowerpoint2007.com>, <ejerciciospowerpoint.com>, <presentacionespowerpoint.net>, <presentacionpowerpoint.com>, <musicapresentacionpowerpoint.com>, and <tutorialpowerpoint.net>, domain names are registered with 1 & 1 Internet Ag and that Respondent is the current registrant of the names. 1 & 1 Internet Ag has verified that Respondent is bound by the 1 & 1 Internet Ag 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 8, 2011, the Forum served the Spanish language Complaint and all Annexes, including a Spanish language Written Notice of the Complaint, setting a deadline of August 29, 2011 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@powerpoint2003.net, postmaster@cursodepowerpoint.com, postmaster@cursospowerpoint2007.com, postmaster@ejerciciospowerpoint.com, postmaster@presentacionespowerpoint.net, postmaster@presentacionpowerpoint.com, postmaster@musicapresentacionpowerpoint.com, postmaster@tutorialpowerpoint.net, postmaster@powerpoint2010.net, and postmaster@cursopowerpoint2010.com. Also on August 8, 2011, the Spanish language Written Notice of the Complaint, notifying Respondent of the email 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. Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default. On August 31, 2011, 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. 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" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. 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, without the benefit of any response from Respondent. Pursuant to Rule 11(a), the Panel determines that the language requirement has been satisfied through the Spanish language Complaint and Commencement and, absent a Response, determines that the remainder of the proceedings may be conducted in English. 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 <powerpoint2003.net>, <cursodepowerpoint.com>, <cursospowerpoint2007.com>, <ejerciciospowerpoint.com>, <presentacionespowerpoint.net>, <presentacionpowerpoint.com>, <musicapresentacionpowerpoint.com>, <tutorialpowerpoint.net>, <powerpoint2010.net>, and <cursopowerpoint2010.com> domain names are confusingly similar to Complainant’s POWERPOINT mark. 2. Respondent does not have any rights or legitimate interests in the <powerpoint2003.net>, <cursodepowerpoint.com>, <cursospowerpoint2007.com>, <ejerciciospowerpoint.com>, <presentacionespowerpoint.net>, <presentacionpowerpoint.com>, <musicapresentacionpowerpoint.com>, <tutorialpowerpoint.net>, <powerpoint2010.net>, and <cursopowerpoint2010.com> domain names. 3. Respondent registered and used the <powerpoint2003.net>, <cursodepowerpoint.com>, <cursospowerpoint2007.com>, <ejerciciospowerpoint.com>, <presentacionespowerpoint.net>, <presentacionpowerpoint.com>, <musicapresentacionpowerpoint.com>, <tutorialpowerpoint.net>, <powerpoint2010.net>, and <cursopowerpoint2010.com> domain names in bad faith. B. Respondent failed to submit a Response in this proceeding. FINDINGS Complainant, Microsoft Corporation, provides software, services, and solutions for people and businesses, including the POWERPOINT presentation software that it provides under the POWERPOINT mark. Complainant has registered its POWERPOINT mark both with the United States Patent and Trademark Office (“USPTO”) (Reg. No. 1,475,795 registered February 9, 1988) and the European Union Office for Harmonization in the Internal Market (“OHIM”) (Reg. No. 000079657 registered February 25, 1998). Respondent, Cursos Luis Bonilla S.L. a/k/a Cursos Luis Bonilla S.L. c/o Luis Bonilla a/k/a SL, Cursos Luis Bonilla S.L., registered the <tutorialpowerpoint.net>, <musicapresentacionpowerpoint.com>, <presentacionpowerpoint.com>, <presentacionespowerpoint.net>, <ejerciciospowerpoint.com>, <cursospowerpoint2007.com>, <cursodepowerpoint.com>, and <powerpoint2003.net> domain names on June 22, 2009. Respondent registered the <cursopowerpoint2010.com> and <powerpoint2010.com> domain names on February 8, 2010. The disputed domain names resolve to commercial websites that prominently display Complainant’s POWERPOINT mark and logo and promote Respondent’s instruction services on various topics, some related to Complainant’s POWERPOINT product and some unrelated. 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." In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”). 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 registered its POWERPOINT mark both with the USPTO (Reg. No. 1,475,795 registered February 9, 1988) and the European Union OHIM (Reg. No. 000079657 registered February 25, 1998). In UnitedHealth Group Inc. v. Hassan, FA 947081 (Nat. Arb. Forum May 17, 2007), a past panel found that registration with the USPTO suffices to prove rights in a mark. Similarly, Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002), speaks generally about the effect of trademark registration, not only with the USPTO, in establishing rights. Consistent with these prior panel findings, the Panel concludes that Complainant’s registration of its POWERPOINT mark with the USPTO and the OHIM prove that Complainant has rights in the POWERPOINT mark for the purposes of Policy ¶ 4(a)(i). The Panel also finds that the USPTO and OHIM trademark registrations are sufficient because the Policy does not require that a mark be registered in every country, or even the country where Respondent is located. See 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). Complainant alleges that Respondent’s disputed domain names are all confusingly similar to Complainant’s POWERPOINT mark because they consist of the mark combined only with a generic top-level domain (“gTLD”) (either “.net” or “.com”) and one or more of the following words or numbers: “tutorial,” “musica,” “presentacion,” “presentaciones,” “ejercicios,” “cursos,” “curso,” “de,” “2003,” “2007,” and “2010.” Previous panels have consistently found, in cases such as Experian Info. Solutions, Inc. v. Credit Research, Inc., D2002-0095 (WIPO May 7, 2002), and Hitachi, Ltd. v. Fortune Int’l Dev. Ent. Co., D2000-0412 (WIPO July 2, 2000), that the addition of terms like “credit” or numbers like “2000” have no effect on preventing confusing similarity. Based on those cases’ holdings, the Panel determines that the addition of one or more generic or descriptive terms or numbers fails to negate confusing similarity under Policy ¶ 4(a)(i). The Panel also holds that the attached gTLD is irrelevant to the analysis for Policy ¶ 4(a)(i). See Gardline Surveys Ltd. v. Domain Fin. Ltd., FA 153545 (Nat. Arb. Forum May 27, 2003) (“The addition of a top-level domain is irrelevant when establishing whether or not a mark is identical or confusingly similar, because top-level domains are a required element of every domain name.”). The Panel accordingly finds that Respondent’s disputed domain names are confusingly similar to Complainant’s POWERPOINT mark pursuant to Policy ¶ 4(a)(i). The Panel concludes that Complainant has proven Policy ¶ 4(a)(i). Rights or Legitimate Interests Complainant alleges that Respondent lacks rights and legitimate interests in the disputed domain names. Once Complainant establishes a prima facie case in support of its allegations, Policy ¶ 4(a)(ii) requires the burden to shift to Respondent to prove it has rights and legitimate interests in the disputed domain names. The Panel concludes that Complainant has established a prima facie case based on the arguments contained in the Complaint, and Respondent has failed to submit a Response to these proceedings. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding the “complainant must first make a prima facie case that [the] 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 also Towmaster, Inc. v. Hale, FA 973506 (Nat. Arb. Forum June 4, 2007) (“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.”). Nevertheless, the Panel will examine the record to determine whether Respondent has rights or legitimate interests in the disputed domain names under Policy ¶ 4(c). Complainant asserts that Respondent is not commonly known by the disputed domain names or the POWERPOINT trademark. Complainant contends that Respondent is not affiliated with Complainant in any way or licensed to use Complainant’s mark. Complainant also argues that Respondent is not an authorized vendor or supplier of Complainant’s goods. The WHOIS information for the disputed domain names lists the registrant as “Cursos Luis Bonilla S.L. a/k/a Cursos Luis Bonilla S.L. c/o Luis Bonilla a/k/a SL, Cursos Luis Bonilla S.L.,” which the Panel finds has no apparent connection or relationship to the disputed domain name. Based on the evidence in the record supporting a finding that Respondent is not commonly known by the disputed domain names, the Panel concludes that Respondent does not possess rights and legitimate interests under Policy ¶ 4(c)(ii). See Instron Corp. v. Kaner, FA 768859 (Nat. Arb. Forum Sept. 21, 2006) (finding that the respondent was not commonly known by the <shoredurometer.com> and <shoredurometers.com> domain names because the WHOIS information listed Andrew Kaner c/o Electromatic a/k/a Electromatic Equip't as the registrant of the disputed domain names and there was no other evidence in the record to suggest that the respondent was commonly known by the domain names in dispute); see also Educ. Broad. Corp. v. DomainWorks Inc., FA 882172 (Nat. Arb. Forum Apr. 18, 2007) (concluding that the respondent was not commonly known by the <thirteen.com> domain name based on all evidence in the record, and the respondent did not counter this argument in its response). According to Complainant, Respondent’s disputed domain names resolve to commercial websites promoting Respondent’s instructional courses for Complainant’s POWERPOINT software, as well as other software and programs. Complainant contends that Respondent also displays Complainant’s mark and logo on each of these resolving websites. In MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000), the panel found that using another’s mark to direct to respondent’s own website gave respondent no rights and interests in the disputed domain name. Likewise, the panel held that a respondent could not provide unauthorized services and information under another’s mark to establish rights and interests in State Farm Mut. Auto. Ins. Co. v. LaFaive, FA 95407 (Nat. Arb. Forum Sept. 27, 2000). With similar reasoning, the Panel here determines that Respondent’s efforts to advertise its own services related to, but not authorized by, Complainant under Complainant’s mark fails to constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use sufficient to establish rights and legitimate interests under Policy ¶¶ 4(c)(i) and (iii). The Panel concludes that Complainant has proven Policy ¶ 4(a)(ii). Registration and Use in Bad Faith Respondent has registered ten disputed domain names containing Complainant’s POWERPOINT mark. Because of this number of registrations, Complainant argues that Respondent has shown a bad faith pattern of registering domain names containing another’s mark in order to prevent the rightful trademark owner from effectively using its mark. The panel in Harcourt, Inc. v. Fadness, FA 95247 (Nat. Arb. Forum Sept. 8, 2000), held that a single instance of registering multiple infringing domain names satisfied Policy ¶ 4(b)(ii). Similarly, the panel in Armstrong Holdings, Inc. v. JAZ Assocs., FA 95234 (Nat. Arb. Forum Aug. 17, 2000), found that registering multiple domain names containing another’s mark exemplified bad faith. In line with these prior cases, the Panel finds that Respondent’s registration of the disputed domain names at issue reveals a bad faith pattern of registration pursuant to Policy ¶ 4(b)(ii). Complainant asserts that it offers training tools and instruction for use in connection with its POWERPOINT software. Complainant argues that the instructional courses offered by Respondent on the resolving websites compete with Complainant and provide information relating to Complainant’s products without authorization. The Panel agrees with Complainant that advertising these types of commercial services at domain names containing Complainant’s mark evidence an intent to disrupt Complainant’s business as a competitor and reveal bad faith under Policy ¶ 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”). Complainant asserts that Respondent incorporates the POWERPOINT mark in the disputed domain names and displays the POWERPOINT logo on the resolving websites in order to create the false impression that the websites are sponsored by Complainant. Complainant argues that this is precisely the type of conduct covered by Policy ¶ 4(b)(iv) as consumers may be misled into purchasing Respondent’s instructional courses instead of relying on Complainant because of a mistaken belief that the information provided at the disputed domain names comes from Complainant. As the resolving websites aim to sell Respondent’s instructional courses, the Panel finds that Respondent’s behavior in connection with the disputed domain names is for commercial gain, which supports a finding of bad faith registration and use pursuant to Policy ¶ 4(b)(iv). See Tower Labs. Ltd. v. Seltzer, FA 791325 (Nat. Arb. Forum Oct. 16, 2006) (concluding that the respondent registered and was using the <bromoseltzer.com> domain name in bad faith because it displayed a logo similar to the complainant’s BROMO SELTZER mark, which was likely to confuse the public as to the source of the material exhibited at the respondent’s website); see also Amazon.com, Inc. v. Shafir, FA 196119 (Nat. Arb. Forum Nov. 10, 2003) (“As Respondent is using the domain name at issue in direct competition with Complainant, and giving the impression of being affiliated with or sponsored by Complainant, this circumstance qualifies as bad faith registration and use of the domain name pursuant to Policy ¶ 4(b)(iv).”). Complainant asserts that because of the prominent use of Complainant’s mark and logo on the resolving websites, it is clear that Respondent had knowledge of Complainant at the time it registered the disputed domain names. While the Panel has found that constructive knowledge is not sufficient for a finding of bad faith under the Policy, the Panel here finds that Complainant had actual knowledge of Complainant and its mark. As a result, the Panel holds that Complainant registered and uses the disputed domain names in bad faith under Policy ¶ 4(a)(iii). See Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was “well-aware” of the complainant’s YAHOO! mark at the time of registration); see also Deep Foods, Inc. v. Jamruke, LLC, FA 648190 (Nat. Arb. Forum Apr. 10, 2006) (stating that while mere constructive knowledge is insufficient to support a finding of bad faith, where the circumstances indicate that the respondent had actual knowledge of the complainant’s mark when it registered the domain name, panels can find bad faith). The Panel concludes that Complainant has proven 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 <powerpoint2003.net>, <cursodepowerpoint.com>, <cursospowerpoint2007.com>, <ejerciciospowerpoint.com>, <presentacionespowerpoint.net>, <presentacionpowerpoint.com>, <musicapresentacionpowerpoint.com>, <tutorialpowerpoint.net>, <powerpoint2010.net>, and <cursopowerpoint2010.com> domain names be TRANSFERRED from Respondent to Complainant. James A. Carmody, Esq., Panelist Dated: September 1, 2011 Click Here to return to the main Domain Decisions Page. Click Here to return to our Home Page

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