{ "case_number": "CAC-UDRP-101794", "time_of_filling": "2021-02-02 10:31:08", "domain_names": [ "officecom-setupp.com", "goofficecomsetup.com", "goofficecom-setup.com", "office365-download.com", "office-365-download.com", "officecomsetupl.com", "officecomsetupp.com", "officecom-setupz.com", "officeecomsetup.com", "officesetupp.com", "help1office.com", "help2office.com", "help3office.com", "help5office.com", "help6office.com", "help7office.com" ], "case_administrator": "Denisa Bilík (CAC) (Case admin)", "complainant": [ "Microsoft Corporation" ], "complainant_representative": "Convey srl", "respondent": [ "Sourabh Chhabra" ], "respondent_representative": null, "factual_background": "FACTS ASSERTED BY THE COMPLAINANT AND NOT CONTESTED BY THE RESPONDENT:\r\n\r\nFounded in 1975, the Complainant, Microsoft Corporation, develops, manufactures, licenses, supports and sells computer software, consumer electronics, personal computers and related services. Microsoft Office, introduced in 1990, bundled separate applications such as Microsoft Word and Microsoft Excel. Today, Microsoft is amongst the leading players in the world of hi-tech, with about 120 subsidiaries and 160,000 employees worldwide.\r\n\r\nThe Complainant is the owner of trademark registrations for OFFICE, OFFICE 365, OFFICE MOD, MICROSOFT OFFICE MOD and MICROSOFT OFFICE. The trademark “OFFICE”, registered and used since many years, is distinctive and well known all around the world. Office 365 is used by over a million companies worldwide. The Complainant has been extensively using the “OFFICE” denomination on all internet environments including its official websites www.office.com and www.microsoft.com.\r\n\r\nThe disputed domain names were registered, without authorization of the Complainant, by the Respondent between December 2019 and July 2020 and have been pointed to websites confusingly similar to the Complainant’s website offering assistance services to internet users for the Complainant’s software programs and for products of Complainant’s competitors.\r\n\r\nThe disputed domain names are identical or confusingly similar to a trademark or service mark in which the Complainant has rights. The Respondent has no rights or legitimate interests in respect of the disputed domain names, which were registered and are being used in bad faith.\r\n\r\nAs to legitimacy, upon information and belief, the Respondent is not commonly known by the disputed domain names as an individual, business or other organization and the family name does not correspond to OFFICE nor to the disputed domain names. The Respondent has not provided the Complainant with any evidence of the use of, or demonstrable preparations to use, the disputed domain names in connection with a bona fide offering of goods or services before any notice of this dispute.\r\n\r\nThe disputed domain names are redirected by the Respondent to websites reproducing the Complainant’s trademarks with layouts similar to the Complainant’s website and with favicons identical to the Complainant’s favicon in order to pass itself off as the Complainant, and providing assistance services to Internet users for the Complainant’s software programs, information on how to download the Complainant’s software programs and assistance for products of the Complainant’s competitors.\r\n\r\nThe Respondent is not an authorized seller or service agent of the Complainant. Despite this, the Respondent is offering a service connected to the Complainant’s software programs without authorization and without accurately disclosing its relationship with the Complainant. It is cornering the market in registering 16 domain names.\r\n\r\nTherefore, it is apparent that the Respondent's use can be considered neither a bona fide offering of goods or services nor a legitimate non-commercial or fair use of the disputed domain names.\r\n\r\nIn order to provide assistance services to Internet users for the Complainant’s software programs and information to download the Complainant’s software programs, the Respondent could register and use domain names avoiding use of the Complainant’s trademark OFFICE in the domain names and the Complainant’s favicon in the websites. These elements suggest affiliation with the Complainant or sponsorship and endorsement by the Complainant to Internet users.\r\n\r\nThe Respondent offers technical assistance for many hi-tech products, not limited to those of the Complainant, as indicated in the Social Media profiles or in the blog pages in each website corresponding to the disputed domain names.\r\n\r\nAs an example, the domain name resolves to a website where links to the following Social Media are inserted: Facebook, Pinterest, Tumblr, Google Site and Twitter. Clicking on the Twitter and Tumblr icons, Internet users are redirected to accounts of “khushi sharma” where Mcafee and Webroot Antivirus are promoted and, by clicking on the posts dedicated to those software programs, customers are redirected to websites \"https:\/\/mcafeeloginz.com\/ and \"http:\/\/webrootcomsafer.com\/ similar to the websites at issue, including the links to the official websites of Webroot and Mcafee. Investigations on the Whois database have highlighted that the registration data for and are similar to the ones utilized for the disputed domain names: Eranet International Limited as registrar, India as the domain name’s owner country, similar lay-out of the websites, the use of the trademarks also as favicons.\r\n\r\nThe Complaint contains further examples of how the Respondent uses the disputed domain names for illegitimate purposes, saying the Respondent uses the disputed domain names and the fame of the Complainant’s trademarks as a bait to attract customers to the Respondent's websites and social media accounts prima facie in order to promote its services utilizing various names. Further, the Respondent informs the customers about the Complainant’s products and promotes products of Complainant’s competitors without a clear and prominent disclaimer disclosing the lack of relationships with the Complainant. The absence of clear and prominent disclaimers could induce the users to believe that the registration of the disputed domain names and their redirection to the corresponding websites have been authorized by the Complainant. But the Internet users redirecting to the websites at issue can easily discover social media profiles, posts and websites dedicated to the Complainant’s competitors.\r\n\r\nTherefore, the registration and use of the disputed domain names are only pretexts for commercial gain or for other purposes for the Respondent’s benefit. The Respondent, knowing the value of the Complainant’ trademark, has targeted the Complainant in order falsely to suggest a correlation among the disputed domain names, the corresponding websites and the Complainant’s mark.\r\n\r\nThe registration of sixteen domain names confusingly similar to the Complainant’s trademark and of several domain names including well-known trademarks of the hi-tech sector as McAfee, Norton, Garmin, AOL and PayPal is not bona fide registration and use nor legitimate non-commercial or fair use of the disputed domain names, without intent for commercial gain misleadingly to divert consumers or to tarnish the trademark or service mark at issue.\r\n\r\nFor all of the foregoing reasons, the Complainant concludes that the Respondent has no rights or legitimate interests in respect of the disputed domain names pursuant to paragraph 4(a)(ii) of the Policy.\r\n\r\nAs to bad faith, the Respondent has targeted the Complainant and various companies of the hi-tech sector, as McAfee, Webroot, Garmin, Norton, Linksys, Netgear, Magellan Navigation, registering 16 domain names confusingly similar to the trademark OFFICE and several domain names of the Complainant’s competitors.\r\n\r\nThe registrations of the 16 disputed domain names prevent the Complainant from reflecting the OFFICE mark in corresponding domain names and constitute a pattern of conduct for the purposes of Paragraph 4(b)(ii).\r\n\r\nFurthermore, in light of the registration and intensive use of the trademark OFFICE since many years, the aforesaid trademark of the Complainant enjoys worldwide reputation in the sector of hi-tech. The disputed domain names were registered between December 2019 and July 2020, years after the Complainant obtained its trademark registrations and, in view of the advertising and sales of the Complainant’s products worldwide, the Respondent could not have possibly ignored the existence of the Complainant.\r\n\r\nIt is clear indeed that the Respondent was well aware of the Complainant’s trademark and registered the disputed domain names with the intention to refer to the Complainant and its trademarks. Considering the trademark’s distinctiveness and well-known character, it is inconceivable that the Respondent was unaware of the existence of the Complainant’s registered trademark at the time of the registration of the disputed domain names.\r\n\r\nAs to use in bad faith, as mentioned above, the disputed domain names are redirected to websites where the Respondent informs the customers about the Complainant’s products and, via the social media accounts indicated in the websites corresponding to the disputed domain names, promotes products of the Complainant’s competitors without a clear and prominent disclaimer disclosing the lack of relationships with the Complainant.\r\n\r\nTherefore, the uses of the disputed domain names are only pretexts for commercial gain or for other purposes inhering to the Respondent’s benefit. The Respondent, knowing the fame and notoriety of the Complainant’s trademark, has targeted the Complainant in order to speculate and obtain profits for his or her business activity.", "other_legal_proceedings": "The Panel is not aware of any other legal proceedings which are pending or decided and which relate to the disputed domain names.", "no_response_filed": "NO ADMINISTRATIVELY COMPLIANT RESPONSE HAS BEEN FILED.\r\n\r\n", "rights": "The Complainant has, to the satisfaction of the Panel, shown that each of the disputed domain names is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (within the meaning of paragraph 4(a)(i) of the Policy).", "no_rights_or_legitimate_interests": "The Complainant has, to the satisfaction of the Panel, shown the Respondent to have no rights or legitimate interests in respect of the disputed domain names (within the meaning of paragraph 4(a)(ii) of the Policy).", "bad_faith": "The Complainant has, to the satisfaction of the Panel, shown the disputed domain names have been registered and are being used in bad faith (within the meaning of paragraph 4(a)(iii) of the Policy).", "procedural_factors": "The Panel is satisfied that all procedural requirements under UDRP were met and there is no other reason why it would be inappropriate to provide a decision.\r\n\r\nThe Complainant respectfully requests that the disputed domain names be consolidated in a single UDRP proceeding because, despite being registered in different names, they are all under the control of a single individual or entity or, at least, reflective of a group of individuals acting in concert. \r\n\r\n", "decision": "Accepted", "panelists": [ "Mr. Alan Lawrence Limbury" ], "date_of_panel_decision": "2021-03-08 00:00:00", "informal_english_translation": "The Complainant is the registrant of the following trademarks:\r\n\r\nOFFICE 365, International trademark No.1175022, registered on August 20, 2013;\r\nOFFICE MOD, International trademark No. 1190337, registered on December 10, 2013;\r\nMICROSOFT OFFICE MOD, International trademark No. 1190539, registered on December 10, 2013;\r\nOFFICE, European trademark No. 011413556, registered on May 9, 2013;\r\nMICROSOFT OFFICE, European trademark No. 007138225, registered on May 12, 2013; and\r\nOFFICE 365, European trademark No. 010171403, registered on January 8, 2012.", "decision_domains": { "OFFICECOM-SETUPP.COM": "TRANSFERRED", "GOOFFICECOMSETUP.COM": "TRANSFERRED", "GOOFFICECOM-SETUP.COM": "TRANSFERRED", "OFFICE365-DOWNLOAD.COM": "TRANSFERRED", "OFFICE-365-DOWNLOAD.COM": "TRANSFERRED", "OFFICECOMSETUPL.COM": "TRANSFERRED", "OFFICECOMSETUPP.COM": "TRANSFERRED", "OFFICECOM-SETUPZ.COM": "TRANSFERRED", "OFFICEECOMSETUP.COM": "TRANSFERRED", "OFFICESETUPP.COM": "TRANSFERRED", "HELP1OFFICE.COM": "TRANSFERRED", "HELP2OFFICE.COM": "TRANSFERRED", "HELP3OFFICE.COM": "TRANSFERRED", "HELP5OFFICE.COM": "TRANSFERRED", "HELP6OFFICE.COM": "TRANSFERRED", "HELP7OFFICE.COM": "TRANSFERRED" }, "panelist": null, "panellists_text": null }