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Microsoft Corporation v. Arab Chat [2004] GENDND 1366 (11 October 2004)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Arab Chat

Case No. D2004-0652

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington, United States of America, represented by Schwimmer and Associates, United States of America.

The Respondent is Arab Chat, Hail, Saudi Arabia.

2. The Domain Name and Registrar

The disputed domain name <almicrosoft.com> is registered with iHoldings.com Inc. d/b/a DotRegistrar.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on August 18, 2004. On August 19, 2004, the Center transmitted by email to iHoldings.com Inc. d/b/a DotRegistrar.com a request for registrar verification in connection with the domain name at issue. On August 23, 2004, iHoldings.com Inc. d/b/a DotRegistrar.com transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 24, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was September 13, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on September 15, 2004.

The Center appointed Clive Elliott as the sole panelist in this matter on September 22, 2004. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Microsoft manufactures markets and sells computer software and related products and services, including products and services designed for use on the Internet, under its MICROSOFT trademark, among others. Since its inception in 1975, Microsoft has created software and developed services for use in education, the workplace and the home.

Microsoft has also obtained registrations for the MICROSOFT mark throughout the world, including registrations in Saudi Arabia, the domicile of the Respondent.

The Complainant maintains an office in Saudi Arabia and offers products, including a version of its WINDOWS product, in Arabic.

The Complainant has established Internet websites located at domain names containing the MICROSOFT mark, including <microsoft.com> and <microsoft.net>. The Microsoft websites allow computer users to access information regarding Microsoft and its products and services and to use and enjoy the Internet services provided by Microsoft.

The Complainant describes the Microsoft above websites as including different home pages for many of the countries in which Microsoft markets its products and services including a web page that is designed for Saudi Arabia, promoting Microsoft’s offerings there.

5. Parties’ Contentions

A. Complainant

The Complainant claims that it has spent substantial time, effort and money advertising and promoting the MICROSOFT mark throughout the world. As a result, it says the MICROSOFT mark is famous and Microsoft has developed an enormous amount of goodwill in the mark. The Complainant asserts that Business Week and Interbrand recently found that the MICROSOFT mark is the second most valuable brand in the world.

The Complainant asserts that the Respondent has no legitimate interest in the domain name <almicrosoft.com> and that the 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. It argues that the Respondent’s use is little more than the use of a famous trademark to divert traffic to competitors and to itself.

The Complainant notes that the term AL, in Arabic, means “THE” and is a common element in Arabic business names. It states that English speaking Internet users will either recognise AL as the non-distinctive term THE, or as a meaningless phrase that does not distinguish the unique, arbitrary and famous MICROSOFT element.

The Complainant also points out that the Respondent depicts the AL in a different colour and capitalises the M in MICROSOFT, ensuring that the MICROSOFT element is recognised as a discrete word. Finally, it notes that the Respondent’s page advertises web hosting services using software competitive with that of Microsoft. Advertisements and information about competitors comprised over half of the homepage.

The Complainant argues that the Respondent’s bad faith is manifested in its adoption of one of the most famous trademarks in the world and the diversion of traffic to competitors. It submits that the Respondent registered the domain name in bad faith by doing so with knowledge of Complainant’s rights in the MICROSOFT mark and the obvious similarity between microsoft and the <almicrosoft.com> domain name.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

Paragraph 4(a) of the Policy requires that the Complainant must prove each of the following:

1. The domain name <almicrosoft.com> is identical or confusingly similar to a trade mark or service mark in which the Complainant has rights; and

2. The Respondent has no right or legitimate interest in respect of the domain name <almicrosoft.com>; and

3. The domain name <almicrosoft.com> has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

The Complainant has provided clear evidence of trademark registrations for the MICROSOFT mark in at least the US and Saudi Arabia. It has also provided compelling evidence of the widespread use of the MICROSOFT trademark both internationally and in Arabic speaking countries such as Saudi Arabia.

The Panel cannot imagine a stronger claim to rights in a mark, that respected independent commentators have termed, one of the most valuable brands in the world today. The Panel has no difficulty in concluding that the evidence establishes the Complainant’s rights in the MICROSOFT mark for purposes of the Policy.

In the Panel’s view, the addition of a descriptive term “AL” or “THE” to a well known trademark does little to alter the inherent trademark nature of the mark MICROSOFT. Accordingly, it is found that <almicrosoft.com> while not identical is extremely similar to MICROSOFT.

Given the lack of connection in fact between the Complainant and the Respondent, the domain name is likely to confuse and is thus confusingly similar to a trademark or service mark in which the Complainant has rights and is one falling within the contemplation of the Policy, paragraph 4(a)(i).

The ground is made out.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent is not commonly known by the MICROSOFT name and has acquired no trademark or service mark rights in the <almicrosoft.com> domain name.

The Respondent’s depiction of the AL element in a different colour and capitalization of the M in MICROSOFT, (ensuring that the MICROSOFT element is recognised as a discrete word) suggest a deliberate attempt to mislead the public as to a connection between the Complainant and the Respondent, contrary to fact. It also cannot go unnoticed that the Respondent’s page advertises web hosting services using software competitive with that of Microsoft and that advertisements and information about competitors made up over half of the homepage.

This suggests a deliberate strategy of using the domain name to attract custom and promote it own competitive offering. In the absence of any explanation it is necessary to infer that the Respondent cannot point to any right or legitimate interest in engaging in conduct, which is questionable on its face. The Panel takes its silence as acknowledgment that it lacks any right or legitimate interest.

The Panel may conclude that on this basis the Respondent has no rights to or legitimate interests in the disputed domain name, pursuant to Policy and does so. Again, the ground is made out.

C. Registered and Used in Bad Faith

The Complainant contends that the Respondent’s commercial use of the <almicrosoft.com> domain name shows that the Respondent is intentionally attempting to attract Internet users to its website for commercial gain by creating a likelihood of confusion with the Complainant. It is reasonable to infer (particularly in the face of the Respondent’s silence) that this evidences bad faith registration and use, pursuant to Policy

The Panel finds that the <almicrosoft.com> domain name is so obviously connected with the Complainant, the Respondent knew this (particularly given that the Complainant is famous and specifically maintains an office in Saudi Arabia and offers products in Arabic) and it is very difficult to see, on the record as it stands, how its conduct can amount to good faith efforts to use the mark in the course of trade. Indeed, in the face of the Respondent’s rather marked silence, the Panel observes that this seems to be the very type of case the UDRP was designed to deal with.

Accordingly, the Complainant has successfully made out all three of the above grounds and is entitled to appropriate relief.

7. Decision

Pursuant to paragraph 4(a) of the Policy it is found that:

1. The domain name <almicrosoft.com> is confusingly similar to the trademark MICROSOFT; and

2. The Respondent has no right or legitimate interests in respect of the domain name <almicrosoft.com>; and

3. The domain name <almicrosoft.com> was registered and is being used in bad faith.

For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the <almicrosoft.com> domain name be transferred to the Complainant.

Clive Elliott
Sole Panelist

Dated: October 11, 2004