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Generic Top Level Domain Name (gTLD) Decisions |
WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Stoneybrook
Case No. D2000-1274
1. The Parties
The Complainant is Microsoft Corporation ("Microsoft"), a Washington corporation having its principal place of business in Redmond, Washington, United States of America.
The Respondent is Stoneybrook, 18 Mopan St., Belize City, Belize.
2. The Domain Name and Registrar
The domain name at issue is "wwwmicrosoft.com". The domain name registrar is TUCOWS.COM INC.
3. Procedural History
The Complaint was submitted to the World Intellectual Property Organization Arbitration and Mediation Center (the "Center") by e-mail on September 27, 2000, and a hard copy followed on September 29, 2000. On September 29, 2000, the Center verified whether the complaint satisfies the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the Supplemental Rules for Uniform Domain Name Dispute Resolution (the "Supplemental Rules") and the notified Complainant that its complaint was deficient. Also on September 29, 2000, the Center transmitted a request for registrar verification to TUCOW.COM INC in connection with this case.
On September 30, 2000, TUCOW.COM INC sent via email to the Center a verification response confirming that the Respondent is the registrant and that the contact for administrative, technical and billing is John Dow accounting@stoney-brook.com. On October 3, 2000, the Center received by email and on October 5, 2000 in hard copy Complainant’s amendment to the complaint, resolving the deficiency. On October 9, 2000, the Center formally commenced this proceeding and notified Respondent that its response would be due by October 28, 2000. The notification was sent to Respondent by courier and email. Federal Express has confirmed that the courier package was delivered to Respondent at its address. The emails were sent to accounting@stoney-brook.com and to postmaster@wwwmicrosoft.com. The former email was transferred without receipt of any "undeliverable" notice. The latter email was undeliverable. Respondent did not file a response by the due date.
Complainant elected a single-member Panel. On November 20, 2000, after clearing for potential conflicts, the Center appointed Thomas H. Webster as the Panelist, and set December 3, 2000 as the deadline for issuance of a decision.
4. Factual Background
Because there is no response, the following facts are taken from the complaint and are accepted as true in the circumstances of this case.
"8. Microsoft is a well-known, worldwide provider of computer software and related products and services, including products for use on the Internet and for developing Internet software, and online services and information delivered via the Internet. Since its inception in 1975, Microsoft has created software for use in the workplace, home, and education.
9. Microsoft’s products and services include computer operating systems, client/server applications, business and computer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, online information and entertainment services, electronic commerce, and computer publications.
10. In connection with these goods and services, Microsoft owns, among other trademarks, the world famous trademark "Microsoft" (the "Microsoft Mark"). The United States Patent and Trademark Office has granted federal trademark registrations for the Microsoft Mark in numerous classes of goods and services, including, without limitation: computer programs; computer hardware; information services in the fields of entertainment, movies and sports; interactive electronic retailing and on-line ordering and information systems; restaurant and travel information and reservations; electronic mail services; and books and reference material. Copies of some of Microsoft’s trademark registrations for the Microsoft Mark are attached [to the Complaint] as Exhibit D.
11. Microsoft has spent substantial time, effort and money advertising and promoting the Microsoft Mark throughout the United States and the world. As a result, the Microsoft Mark has become world famous, and Microsoft has developed an enormous amount of goodwill in the mark.
12. In connection with the Microsoft Mark, Microsoft has established Internet websites located at the domain names "microsoft.com" and "microsoft.net" (collectively, the "Microsoft Websites"). The Microsoft Websites allow computer users throughout the world to access information regarding Microsoft and its products and to use and enjoy the Internet services provided by Microsoft."
The domain names at issue were registered on August 12, 1997 to Data Art Corp., 18 Mopan, St. Belize City, Belize.
At various times since 1997 the Complainant contacted Data Art Corp. to object to its use of the domain name subject to these proceedings.
5. Parties’ Contentions
Complainant makes the following allegations. The factual elements of such allegations are accepted as true in the circumstances of this case in the absence of a response from the Respondent :
"14. Respondent has no connection or affiliation with Microsoft, and has not received any license or consent, express or implied, to use the Microsoft Mark in a domain name or in any other manner. In fact, Respondent has not used the domain name "wwwmicrosoft.com" to establish a web site. Instead, Respondent is using the name to divert consumers to the Internet gambling website at "mindgaming.com…
15. Registrant has registered an Internet domain name that is confusingly similar to the Microsoft Mark. Respondent’s domain name "wwwmicrosoft.com" is virtually identical to the Microsoft Mark and the address for Microsoft’s official website at www.microsoft.com. The only difference is Respondent’s omission of the "dot" in Microsoft’s website address. …
16. Respondent has used the confusingly similar domain name "wwwmicrosoft.com" to divert Internet users attempting to find an official Microsoft website to the Internet gambling site at "mindgaming.com." Upon typing in "wwwmicrosoft.com," which any consumer attempting to visit Microsoft’s official website at "microsoft.com" may inadvertently do if they omit the "dot," the user will be redirected to the website located at "mindgaming.com" which offers Internet gambling. While the registrant of "mindgaming.com" is listed as Mindgaming, Ltd. in the domain name database at "thebigwhois.com," Microsoft believes this entity is one and the same as Stoneybrook because both share the same address at 18 Mopan St., Belize City, BZ, and Stoneybrook is using its domain name to divert traffic to the "mindgaming.com" website.…"
18. As further evidence of Respondent’s bad faith, Respondent has engaged in a practice of registering domain names comprised of typographical errors of other companies’ well-known trademarks, including a number similar to "wwwmicrosoft.com." Examples of these registered domain names include "wwwsouthwestairlines.com," "wwwunitedairlines.com," "wwwamericanairlines.com," "dletaair.com," "detlaair.com," "travelocoty.com," "budweisser.com," "budwesier.com," buwdeiser.com," "budweisre.com," "buweiser.com," and "budweise.com."
6. Discussion and Findings
The burden for the Complainant under paragraph 4(a) of the Policy is to prove:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(iii) That the domain name has been registered and used in bad faith.
A. Similarity of the Domain Name and Trademark.
Complainant has established its rights in the mark MICROSOFT. This panelist finds that wwwmicrosoft.com is confusingly similar to MICROSOFT. The addition of "www" is not sufficient to avoid confusion. See InfoSpace.com, Inc. v. Registrar Administrator Lew Blanck Case No. D2000-0069 (WIPO, April 3, 2000) This is particularly so in the internet given the widespread use of "www" as an indication of location.
B. Respondent's Rights and Legitimate Interests.
Respondent is not known as "Microsoft" and is not making a fair use of that name. Policy paragraph 4(c)(ii)-(iii). Nor is Respondent using the domain name "in connection with a bona fide offering of goods or services." Policy paragraph 4(c)(i). Respondent is using the domain name misleadingly to divert users to what appears to be its gambling site through confusion. See Chanel, Inc. v. Estco Technology Group, Case No. D2000-0413 (WIPO, Sept. 18, 2000); Universal City Studios, Inc. v. G.A.B. Enterprises, Case No. D2000-0416 (WIPO, June 29, 2000).
C. Bad Faith Registration and Use.
Complainant has established that the domain name has been registered and is being used in bad faith.
Given the familiarity with Microsoft as a trademark and corporate name worldwide, it appears inconceivable to the panelist, in the absence of an explanation from the Respondent, that the domain name was not registered in 1997 to confuse consumers.
The use of the domain name to redirect users to a gambling site apparently affiliated with the Respondent appears to be a classic case of use of a domain name in bad faith under Section 4(b)(iv) of the Policy.
7. Decision
For the foregoing reasons, the Panel holds:
(a) that the domain name wwwmicrosoft.com is confusingly similar to the MICROSOFT trademark in which the Complainant has rights;
(b) that the Respondent has no rights or legitimate interests in respect of the domain name; and
(c) that the Respondent registered and has used the domain name in bad faith.
Accordingly, pursuant to paragraph 4(i) of the Policy, the domain name wwwmicrosoft.com should be transferred to the Complainant.
Thomas H. Webster
Sole Panelist
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URL: http://www.worldlii.org/int/other/GENDND/2000/1597.html