DECISION

Microsoft Corporation v. OzGrid Business Applications

Claim Number:  FA0408000314308

PARTIES

Complainant is Microsoft Corporation (“Complainant”), represented by Martin B. Schwimmer, of Schwimmer and Associates, 7 Bayberry Drive, Mt. Pleasant, NY 10570. Respondent is ozGrid Business Applications (“Respondent”), 20 Challenger Rise, Austrialind, WA 6233, Australia.

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <microsoftexceltraining.com>, registered with Tucows Inc.

PANEL

The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.

Sandra Franklin as Panelist.

PROCEDURAL HISTORY

Complainant submitted a Complaint to the National Arbitration Forum (the "Forum") electronically on August 18, 2004; the Forum received a hard copy of the Complaint on August 20, 2004.

On August 19, 2004, Tucows Inc. confirmed by e-mail to the Forum that the domain name <microsoftexceltraining.com> is registered with Tucows Inc. and that Respondent is the current registrant of the name. Tucows Inc. has verified that Respondent is bound by the Tucows 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 August 26, 2004, a Notification of Complaint and Commencement of Administrative Proceeding (the "Commencement Notification"), setting a deadline of September 15, 2004 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@microsoftexceltraining.com by e-mail.

Having received no Response from Respondent, using the same contact details and methods as were used for the Commencement Notification, the Forum transmitted to the parties a Notification of Respondent Default.

On September 22, 2004, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Sandra Franklin as Panelist.

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the 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."  Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any Response from Respondent.

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 <microsoftexceltraining.com> domain name is confusingly similar to Complainant’s MICROSOFT mark.

2. Respondent does not have any rights or legitimate interests in the <microsoftexceltraining.com> domain name.

3. Respondent registered and used the <microsoftexceltraining.com> domain name in bad faith.

B.  Respondent failed to submit a Response in this proceeding.

FINDINGS

Complainant, Microsoft Corporation, manufactures, markets and sells computer software and related products and services, including products and services designed for use on the Internet. Complainant has created software and developed services for use in education, the workplace, and the home since 1975.

Complainant owns numerous trademark registrations for the MICROSOFT mark (e.g. Reg. No. 1,715,749, issued Sept. 15, 1992; Reg. No. 2,198,154, issued Oct. 20, 1998; Reg. No. 2,285,870, issued Oct. 12, 1999; Reg. No, 2,337,072, issued Apr. 4, 2000 and Reg. No. 2,637,360, issued Oct. 15, 2002) with the United States Patent and Trademark Office (“USPTO”) for computer operating systems, server applications, software programming tools, media programs, Internet development tools, online information and entertainment, computer input devices, electronic commerce services and computer publications, etc. Complainant has also obtained registrations for the MICROSOFT mark throughout the world, including Australia.

Complainant has a pending trademark application for the EXCEL mark (Serial. No. 78,400,429, filing date Apr. 12, 2004). Complainant offers goods and services under the EXCEL and MICROSOFT EXCEL marks, primarily in connection with an electronic spreadsheet program. The MIRCROSOFT EXCEL program has been sold both as a stand alone product and as part of the MICROSOFT OFFICE program suite since 1985. In the last four years Complainant has licensed approximately 41 million copies of the EXCEL product. Complainant also offers training services, in the form of courses, workshops, clinics, and seminars, including training for its EXCEL program.

Complainant has spent substantial time, effort, and money advertising and promoting the MICROSOFT mark throughout the world. Consequently, Complainant’s MICROSOFT mark has become distinctive, well-known and has developed considerable goodwill.

Complainant operates its main websites at the <microsoft.com> and <microsoft.net> domain names, where computer users can access information regarding Complainant’s products, services, and use Internet services provided by Complainant.

Respondent registered the disputed domain name on July 17, 2001 and is using the  domain name to divert Internet traffic to Respondent’s <ozGrid.com> website that provides unauthorized EXCEL training services and offers to sell software, software templates, consulting services and publications.

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.

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 established that it has rights in the MICROSOFT mark through registration with the USPTO and through the use of its mark in commerce for the last twenty-nine years. See Men’s Wearhouse, Inc. v. Wick, FA 117861 (Nat. Arb. Forum Sept. 16, 2002) (“Under U.S. trademark law, registered marks hold a presumption that they are inherently distinctive and have acquired secondary meaning.”); see also Janus Int’l Holding Co. v. Rademacher, D2002-0201 (WIPO Mar. 5, 2002) finding that Panel decisions have held that registration of a mark is prima facie evidence of validity, which creates a rebuttable presumption that the mark is inherently distinctive. Respondent has the burden of refuting this assumption.

Respondent’s <microsoftexceltraining.com> domain name is confusingly similar to Complainant’s MICROSOFT mark because the domain name incorporates Complainant’s mark in its entirety and only deviates with the addition of the descriptive terms “excel training,” and the generic top-level domain “.com.” The mere addition of descriptive terms and a generic top-level domain name does not negate the confusing similarity between Respondent’s domain name and Complainant’s mark pursuant to Policy ¶ 4(a)(i). See Am. Online, Inc. v. Anytime Online Traffic Sch., FA 146930 (Nat. Arb. Forum Apr. 11, 2003) finding that Respondent’s domain names, which incorporated Complainant’s entire mark and merely added the descriptive terms “traffic school,” “defensive driving,” and “driver improvement” did not add any distinctive features capable of overcoming a claim of confusing similarity; see also Space Imaging LLC v. Brownell, AF-0298 (eResolution Sept. 22, 2000) finding confusing similarity where Respondent’s domain name combines Complainant’s mark with a generic term that has an obvious relationship to Complainant’s business); see also Brown & Bigelow, Inc. v. Rodela, FA 96466 (Nat. Arb. Forum Mar. 5, 2001) finding that the <hoylecasino.net> domain name is confusingly similar to Complainant’s HOYLE mark, and that the addition of “casino,” a generic word describing the type of business in which Complainant is engaged, does not take the disputed domain name out of the realm of confusing similarity;  see also Rollerblade, Inc. v. McCrady, D2000-0429 (WIPO June 25, 2000) finding that the top level of the domain name such as “.net” or “.com” does not affect the domain name for the purpose of determining whether it is identical or confusingly similar.

Furthermore, the Panel may find that the confusing similarity of Complainant’s mark and Respondent’s domain name is heightened because both Respondent and Complainant are in the same industry, i.e. the provision of training programs for the EXCEL program.  See Slep-Tone Entm't Corp. v. Sound Choice Disc Jockeys, Inc., FA 93636 (Nat. Arb. Forum Mar. 13, 2000) (“likelihood of confusion is further increased by the fact that the Respondent and [Complainant] operate within the same industry”); see also Vivid Video, Inc. v. Tennaro, FA 126646 (Nat. Arb. Forum Nov. 14, 2002) finding that any distinctiveness resulting from Respondent’s addition of a generic word to Complainant’s mark in a domain name is less significant because Respondent and Complainant operate in the same industry.

The Panel finds that Policy ¶ 4(a)(i) has been satisfied.

Rights or Legitimate Interests

Complainant asserts that Respondent has no rights or legitimate interests in the <microsoftexceltraining.com> domain name. Due to Respondent’s failure to respond to the Complaint, it is assumed that Respondent lacks rights and legitimate interests in the domain name. The burden shifts to Respondent to show that it does have rights or legitimate interests in the disputed domain name. See Do The Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) finding that once Complainant asserts that Respondent has no rights or legitimate interests with respect to the domain, the burden shifts to Respondent to provide credible evidence that substantiates its claim of rights and legitimate interests in the domain name; see also Clerical Med. Inv. Group Ltd. v. Clericalmedical.com, D2000-1228 (WIPO Nov. 28, 2000) finding that under certain circumstances the mere assertion by Complainant that Respondent has no rights or legitimate interests is sufficient to shift the burden of proof to Respondent to demonstrate that such a right or legitimate interest does exist.

Moreover, the Panel may accept all reasonable allegations and inferences in the Complainant as true because Respondent has not submitted a Response. See Do the Hustle, LLC v. Tropic Web, D2000-0624 (WIPO Aug. 21, 2000) (“Failure of a respondent to come forward to [contest complainant’s allegations] is tantamount to admitting the truth of complainant’s assertion in this regard.”); see also Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) holding that Respondent’s failure to respond allows all reasonable inferences of fact in the allegations of Complainant to be deemed true.

Respondent is using the <microsoftexceltraining.com> domain name to divert Internet traffic intended for Complainant to Respondent’s <ozGrid.com> website that provides unauthorized MICROSOFT EXCEL training services and offers to sell software, software templates, consulting services and publications, many of which have no connection to Complainant’s EXCEL products. Respondent’s use of a domain name confusingly similar to Complainant’s MICROSOFT mark to redirect Internet users interested in Complainant’s services and products to a commercial website that offers unauthorized MICROSOFT EXCEL training services and products as well as offers to sell software, software templates, consulting services and publications is not a use in connection with a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i), or a legitimate noncommercial or fair use of the domain name pursuant to Policy ¶ 4(c)(iii). See U.S. Franchise Sys., Inc. v. Howell, FA 152457 (Nat. Arb. Forum May 6, 2003) holding that Respondent’s use of Complainant’s mark and the goodwill surrounding that mark as a means of attracting Internet users to an unrelated business was not a bona fide offering of goods or services; see also MSNBC Cable, LLC v. Tysys.com, D2000-1204 (WIPO Dec. 8, 2000) finding no rights or legitimate interests in the famous MSNBC mark where Respondent attempted to profit using Complainant’s mark by redirecting Internet traffic to its own website; see also Nike, Inc. v. Dias, FA 135016 (Nat. Arb. Forum Jan. 7, 2002) finding no “bona fide” offering of goods or services where Respondent used Complainant’s mark without authorization to attract Internet users to its website, which offered both Complainant’s products and those of Complainant’s competitors; see also N. Coast Med., Inc. v. Allegro Med., FA 95541 (Nat. Arb. Forum Oct. 2, 2000) finding no rights or legitimate interests in a domain name that diverted Internet users to Respondent’s competing website through the use of Complainant’s mark.

Moreover, Respondent has offered no evidence and there is no proof in the record suggesting that Respondent is commonly known by the <microsoftexceltraining.com> domain name.  Thus, Respondent has not established rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii). See Tercent Inc. v. Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (“nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Gallup Inc. v. Amish Country Store, FA 96209 (Nat. Arb. Forum Jan. 23, 2001) finding that Respondent does not have rights in a domain name when Respondent is not known by the mark; see also RMO, Inc. v. Burbidge, FA 96949 (Nat. Arb. Forum May 16, 2001) interpreting Policy ¶ 4(c)(ii) "to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail".

The Panel finds that Policy ¶ 4(a)(ii) has been satisfied.

Registration and Use in Bad Faith

Respondent registered the <microsoftexceltrainting.com> domain name for its own commercial gain. Respondent’s domain name diverts Internet users wishing to search under Complainant’s MICROSOFT mark to Respondent’s commercial website, where Respondent offers unauthorized MICROSOFT EXCEL training services and offers to sell software, software templates, consulting services and publications. Respondent’s practice of diversion, motivated by commercial gain, through the use of a confusingly similar domain name is evidence of bad faith registration and use pursuant to Policy ¶ (b)(iv). See G.D. Searle & Co. v. Celebrex Drugstore, FA 123933 (Nat. Arb. Forum Nov. 21, 2002) finding that Respondent registered and used the domain name in bad faith pursuant to Policy ¶ 4(b)(iv) because Respondent was using the confusingly similar domain name to attract Internet users to its commercial website; see also State Fair of Texas v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) finding bad faith where Respondent registered the domain name <bigtex.net> to infringe on Complainant’s goodwill and attract Internet users to Respondent’s website; see also Perot Sys. Corp. v. Perot.net, FA 95312 (Nat. Arb. Forum Aug. 29, 2000) finding bad faith where the domain name in question is obviously connected with Complainant’s well-known marks, thus creating a likelihood of confusion strictly for commercial gain; see also Am. Online, Inc. v. Fu, D2000-1374 (WIPO Dec. 11, 2000) finding that Respondent intentionally attempted to attract Internet users to his website for commercial gain by creating a likelihood of confusion with Complainant’s mark and offering the same chat services via his website as Complainant.

Furthermore, Respondent registered the <microsoftexceltraining.com> domain name for the primary purpose of disrupting Complainant’s business by redirecting Internet traffic intended for Complainant to Respondent’s website, which directly competes with Complainant by offering Complainant’s products and services as well as products and services from Complainant’s competitors. Registration and use of a domain name for the primary purpose of disrupting the business of a competitor is evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii). See Surface Prot. Indus., Inc. v. Webposters, D2000-1613 (WIPO Feb. 5, 2001) finding that, given the competitive relationship between Complainant and Respondent, Respondent likely registered the contested domain name with the intent to disrupt Complainant's business and create user confusion; see also Lubbock Radio Paging v. Venture Tele-Messaging, FA 96102 (Nat. Arb. Forum Dec. 23, 2000) concluding that domain names were registered and used in bad faith where Respondent and Complainant were in the same line of business in the same market area; see also S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) finding Respondent acted in bad faith by attracting Internet users to a website that competes with Complainant’s business; see also Fossil, Inc. v. NAS, FA 92525 (Nat. Arb. Forum Feb. 23, 2000) transferring the <fossilwatch.com> domain name from Respondent, a watch dealer not otherwise authorized to sell Complainant’s goods, to Complainant.

The Panel finds that Policy ¶ 4(a)(iii) has been satisfied.

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 <microsoftexceltraining.com> domain name be TRANSFERRED from Respondent to Complainant.

Sandra Franklin, Panelist

Dated:  October 6, 2004

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