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Microsoft Corporation v. ingenuity [2004] GENDND 675 (29 June 2004)

1. The Parties

Complainant is Microsoft Corporation (“Complainant” or “Microsoft”), a corporation incorporated under the laws of the State of Washington, with a principal place of business located at Redmond, Washington, United States of America, represented by Arnold & Porter LLP, United States of America.

Respondent is “ingenuity” (“Respondent” or “ingenuity”) located at Bradenton, Florida, United States of America.

2. The Domain Name and Registrar

The domain name at issue is <microswoft.com> (the “Domain Name”). The registrar is Intercosmos Media Group d/b/a directNIC.com (the “Registrar”).

3. Procedural History

On April 22, 2004, the WIPO Arbitration and Mediation Center (the “Center”) received a copy of the Complaint of Complainant via email. On April 22, 2004, the Center sent an Acknowledgment of Receipt of Complaint to Complainant. On April 23, 2004, the Center received hardcopy of the Complaint. The Complainant paid the required fee.

On April 22, 2004, after the Center sent a Request for Verification to the Registrar requesting verification of registration data, the Registrar confirmed, inter alia, that it is the registrar of the Domain Name and that the Domain Name is registered in the Respondent’s name.

On April 26, 2004, the Center requested amendment of the Complaint. On April 27, 2004, the Center received an Amendment to the Complaint from Complainant via email. On April 28, 2004, the Center received the Amendment in hardcopy.

The Center verified that the Complaint with Amendment 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 WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

On April 29, 2004, the Center sent a Notification of Complaint and Commencement of Administrative Proceeding to the Respondent together with copies of the Complaint with Amendment, with a copy to the Complainant. This notification was sent by the methods required under Paragraph 2(a) of the Rules.

On May 24, 2004, the Center advised Respondent that it was in default for failing to file its Response. No Response has been received.

On June 21, 2004, after the Center received a completed and signed Statement of Acceptance and Declaration of Impartiality and Independence from Richard W. Page the sole panelist, the Center notified the parties of the appointment of the Panel consisting of the sole panelist.

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 famous “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’s products and services include computer operation systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, online information and entertainment services, electronic commerce services and computer publications.

Microsoft offers these goods and services to the public under the federally registered trademark “MICROSOFT” (the “Mark”), for which registrations have been granted in numerous classes of goods and services.

Microsoft has spent substantial time, effort and money advertising and promoting the Mark throughout the world. As a result the Mark has become distinctive and well known, and Microsoft has developed significant goodwill in the Mark.

In connection with the Mark, Microsoft established Internet websites located at domain names comprised of the Mark, including “www.microsoft.com” and “www.micorsoft.net” (the “Websites”). The Websites allow computer users throughout the world to access information regarding Microsoft and its products and services and to use and enjoy the Internet services provided by Microsoft.

In the Winter of 2004, Microsoft discovered that Respondent had registered the Domain Name and was using it to promote a website with graphic, pornographic materials and links to other pornographic websites. When an Internet users types “www.microswoft.com” into his or her browser, the Internet user was directed at a sexually explicit website that included graphic advertisements for pornographic websites.

5. Parties’ Contentions

A. Complainant’s contentions

i. Complainant contends that it has registrations of the Mark, that its trademark registrations are valid and subsisting. Complainant further alleges that its registrations evidence of its exclusive right to use the Mark in connection with the stated goods and services.

ii. Complainant argues that the Domain Name is confusingly similar to the Mark, pursuant to Paragraph 4(a)(i) of the Policy, because it is identical to the Mark except for the addition of the single letter “w.”

iii. Complainant contends that Respondent has no rights or legitimate interests in the Domain Name, pursuant to Paragraph 4(a)(ii), and that Respondent has failed to demonstrate any of the three circumstances that constitute rights to or legitimate interests in the Domain Name.

Respondent cannot demonstrate rights or legitimate interest in the Domain Name under Paragraph 4(c)(i) because it has not made use, or demonstrable preparations to use, the Domain Name in connection with the bona fide offering of goods or services.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(ii) because it is not commonly known under the Domain Name. Respondent has no connection or affiliation with Complainant, and has not received any license or consent, express or implied, to use the Mark in a domain name or in any other manner.

Respondent cannot demonstrate rights or legitimate interests in the Domain Name under Paragraph 4(c)(iii) because it is not making a legitimate noncommercial or fair use of the Domain Name without the intent to (a) derive commercial gain, (b) misleadingly divert consumers, or (c) tarnish the trademark at issue. Respondent has deliberately registered the Domain Name to drive Internet traffic to its pornographic website.

iv. Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of Paragraph 4(a)(iii). Respondent used the Domain Name in connection with its commercial pornographic website in an attempt to draw a connection with Microsoft.

B. Respondent’s contentions

i. Respondent does not dispute that the Complainant has registrations of the Mark.

ii. Respondent does not dispute that the Domain Name is confusingly similar to the Mark.

iii. Respondent does not assert that it has any legitimate right or interest in the Domain Name.

iv. Respondent does not dispute that it registered or used the Domain Name in bad faith.

6. Discussion and Findings

Paragraph 15(a) of the Rules instructs the Panel as to the principles the Panel is to use in determining the dispute: “A Panel shall 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.”

Because both the Complainant and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes, to the extent that it would assist the Panel in determining whether the Complainant has met its burden as established by Paragraph 4(a) of the Policy, the Panel shall look to rules and principles of law set out in decisions of the courts of the United States. Tribeca Film Center, Inc. v. Brusasco-Mackenzie, WIPO Case No. D2000-1772 (April 10, 2001), n. 3.

Failure to File a Response

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, asserted facts that are not unreasonable would be taken as true and the respondent would be subject to the inferences that flow naturally from the information provided by the complainant: Reuters Limited v. Global Net 2000, Inc., WIPO Case No. D2000-0441. See also Hewlett-Packard Company v. Full System, NAF Case No. FA 0094637; David G. Cook v. This Domain is For Sale, NAF Case No. FA0094957 and Gorstew Jamaica and Unique Vacations, Inc. v. Travel Concierge, NAF Case No. FA0094925.

Even though Respondent has failed to file a Response or to contest Complainant’s assertions, the Panel will review the evidence proffered by Complainant to verify that the essential elements of the claims are met.

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

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; and,

ii) that the Respondent has no legitimate interests in respect of the domain name; and,

iii) that the domain name has been registered and is being used in bad faith.

Enforceable Trademark Rights

Complainant contends and Respondent fails to dispute that it has numerous registrations of the Mark. As such Complainant’s trademark registrations are valid and subsisting and serve as prima facie evidence of its ownership and the validity of the “MICROSOFT” Mark. 15 U.S.C. § 1115. The registrations are conclusive evidence of Complainant’s ownership of the Mark and exclusive right to use the Mark in connection with the stated goods and services. 15 U.S.C. §§ 1065 and 1115(b). Therefore, the Panel finds that Complainant has enforceable rights in the trademark.

Identity or Confusing Similarity

Complainant further contends that the Domain Name is identical with and confusingly similar to the Mark pursuant to the Policy Paragraph 4(a)(i). The Domain Name incorporates the entirety of the Mark and merely adds the extra letter “w” to create the disputed Domain Name. See Wells Fargo & Co. v. Shing, NAF Claim No. FA205699 (December 8, 2003); The Cartoon Network, LP v. Zuccarini, NAF Claim No. FA183906 (September 30, 2003).

Respondent has not contested the assertions by Complainant that the Domain Name is confusingly similar to the trademark.

Therefore, the Panel finds that the Domain Name is confusingly similar to the Mark pursuant to the Policy Paragraph 4(a)(i).

Rights or Legitimate Interest

Complainant contends that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy Paragraph 4(a)(ii). Once a Complainant establishes a prima facie showing that none of the three circumstances establishing legitimate interests or rights applies, the burden of production on this factor shifts to the Respondent to rebut the showing. The burden of proof, however, remains with Complainant to prove each of the three elements of Paragraph 4(a). See Document Technologies, Inc. v. International Electronic Communications, Inc., WIPO Case No. D2000-0270 (June 6, 2000).

The Policy Paragraph 4(c) allows three nonexclusive methods for the Panel to conclude that Respondent has rights or a legitimate interest in the Domain Name:

The Complainant has asserted that it never gave Respondent permission to use the Mark, nor does Respondent have any affiliation with Complainant. Complainant alleges that the strength of the Mark and the slight variation in the Domain Name from the Mark demonstrate that Respondent is not legitimately offering any goods and services. Respondent apparently has never been known by the Domain Name and is making a commercial use of the Domain Name by diverting traffic to its commercial website. Complainant has sustained its burden of coming forward with proof that the Respondent lacks rights to or legitimate interests in the Domain Name.

Respondent has offered no evidence that the use of the Domain Name meets the elements for any of the nonexclusive methods provided for in the Policy Paragraph 4(c). Therefore, the Panel finds that Respondent has no rights or legitimate interest in the Domain Name pursuant to the Policy Paragraph 4(a)(ii).

Bad Faith.

Complainant contends that Respondent registered and is using the Domain Name in bad faith in violation of the Policy Paragraph 4(a)(iii).

The Policy Paragraph 4(b) sets forth four nonexclusive criteria for Complainant to show bad faith registration and use of domain names:

Complainant has alleged that the strength of the Mark and the slight variation in the Domain Name from the Mark demonstrate that Respondent can have no intention other than to trade on the fame of Microsoft and its Mark in an attempt to direct traffic to its own website. Respondent has not refuted this allegation. The Panel finds the evidence compelling that Respondent has intentionally attempted to attract for commercial gain Internet users to its website by creating a likelihood of confusion with the Mark. Based upon this evidence, the Panel finds that Complainant has shown sufficient facts to support a finding that Complainant has demonstrated the existence of the criteria in the Policy Paragraph 4(b)(iv) and that Respondent registered and used the Domain Name in bad faith pursuant to the Policy Paragraph 4(a)(iii).

7. Decision

The Panel concludes (a) that the Domain Name <microswoft.com> is confusingly similar to Complainant’s registered trademark MICROSOFT, (b) that Respondent has no rights or legitimate interest in the Domain Name and (c) that Respondent registered and used the Domain Name in bad faith. Therefore, pursuant to Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name <microswoft.com> be transferred to Microsoft Corporation.

Richard W. Page
Sole Panelist

Dated: June 29, 2004