Ghosts of Past Complaints

Steve Levy ⬥ August 5

Microsoft Corporation recently experienced success after filing a UDRP complaint with the National Arbitration Forum disputing 13 domain names containing a number of its trademarks. The respondent, simply listed as “Admin” from the Republic of Korea, failed to submit a response, but this was not why the NAF Panel ruled in favor of Microsoft. Even with no reply from a respondent, a complainant must still prove the three elements of the UDRP:

  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.

In considering all of the domain names included in this complaint, the Panel found them to be confusingly similar to marks owned by Microsoft, specifically WINDOWS, WINDOWS XP, WINDOWS AZURE, and MICROSOFT. Neither the fact that the respondent resides in Korea, the subtraction of the letter “s”, or the addition of a generic word or number made a difference to the Panel and it cited an unusually large number of previous UDRP cases in explaining its decision.

  • See W.W. Grainger, Inc. v. Domain Privacy, FA 1334458 (Nat. Arb. Forum Aug. 24, 2010)
    • “the Panel finds that USPTO registration is sufficient to establish these [Policy ¶ 4(a)(i)] rights even when Respondent lives or operates in a different country.”
  • See Am. Int’l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Nat. Arb. Forum Dec. 31, 2007)
    • “spaces are impermissible and a generic top-level domain, such as ‘.com,’ ‘.net,’ ‘.biz,’ or ‘.org,’ is required in domain names.  Therefore, the panel finds that the disputed domain name [<>] is confusingly similar to the complainant’s [AMERICAN GENERAL] mark.”
  • See Royal Bank of Scotland Grp. plc et al. v. Demand Domains, FA 714952 (Nat. Arb. Forum Aug. 2, 2006)
    • “The Panel finds that merely by misspelling Complainants’ mark, Respondent has not sufficiently differentiated the <> domain name from the PRIVILEGE mark under Policy ¶ 4(a)(i).”
  • See Gillette Co. v. RFK Assocs., FA 492867 (Nat. Arb. Forum July 28, 2005)
    • finding that the additions of the term “batteries,” which described the complainant’s products, and the generic top-level domain “.com” were insufficient to distinguish the respondent’s <> from the complainant’s DURACELL mark
  • See Am. Express Co. v., FA 257901 (Nat. Arb. Forum June 7, 2004)
    • finding the respondent’s <> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)
  • See also Warner Bros. Entm’t Inc. v. Sadler, FA 250236 (Nat. Arb. Forum May 19, 2004)
    • finding the addition of generic terms to Complainant’s HARRY POTTER mark in the respondent’s <> and <> domain names failed to alleviate the confusing similarity between the mark and the domain names
  • See Dell Inc. v. Nelson laptopshoppe, FA 1469084 (Nat. Arb. Forum Dec. 5, 2012)
    • “Complainant contends that Respondent’s <> domain name is . . . incorporates the DELL mark and adds the descriptive terms “laptop” and “store.” The Panel finds that the addition of descriptive terms does not distinguish Respondent’s disputed domain name from Complainant’s DELL mark.”

It’s a great victory for Microsoft to have recovered so many domain names in one UDRP complaint. It was also interesting, though, to see a Panel refer to so many previous UDRP complaints. It goes to show both how well established the UDRP is and how many precedents have been set by past cases and panelists. It is also a great learning opportunity for potential UDRP complainants to get some insight into how their cases might be viewed based on similar cases from the past.

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