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Microsoft Corporation v. Source One Management Services, Inc. [2005] GENDND 1325 (4 July 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Source One Management Services, Inc.

Case No. D2005-0508

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 Source One Management Services, Inc., Willow Grove, Pennsylvania, United States of America.

2. The Domain Name and Registrar

The disputed domain name <navisioncentral.com> is registered with Network Solutions, LLC.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the ”Center”) on May 10, 2005. On May 10, 2005, the Center transmitted by email to Network Solutions, LLC a request for registrar verification in connection with the domain name at issue. On May 11, 2005, Network Solutions, LLC 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 May 18, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was June 7, 2005. The Response was filed with the Center on June 7, 2005.

The Center appointed Frederick M. Abbott as the sole panelist in this matter on June 9, 2005. 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.

By e-mail of June 16, 2005, Complainant transmitted a request to submit additional information to the Panel, accompanied by such information (“Complainant’s Additional Information”). By Administrative Order No. 1, the Panel accepted Complainant’s Additional Information, and authorized Respondent to file in reply its own additional information. Respondent filed a reply on June 23, 2005 (“Respondent’s Reply”). The Panel has accepted the additional submission by Respondent.

4. Factual Background

Complainant has registered the word trademark NAVISION on the Principal Register of the United States Patent and Trademark Office (USPTO), reg. no. 1735630, dated November 24, 1992, in international class (IC) 9, covering “computer programs and user manuals sold therewith for standard administrative and financial purposes”, claiming date of first use and first use in commerce of April 14, 1992. Complainant has registered additional NAVISION and NAVISION-formative marks on the Principal Register of the USPTO as well as the trademark registers of numerous foreign countries. Complaint, para. 8 and Exhibits 2 & 2a.

Complainant provides enterprise resource planning, accounting, business, financial and related software goods and services under the NAVISION mark. Complainant promotes such goods and services on the Internet at address (URL) www.microsoft.com/BusinessSolutions/Navision/default/aspx. In fiscal year 2001, Complainant’s worldwide revenues for goods and services sold under the NAVISION mark exceeded $200 million. Id., para. 11 and Exhibit 3.

Complainant operates a program under which it trains and certifies third parties to offer NAVISION-related services, i.e., the Microsoft Partner Program. Id., para. 20 and Complainant’s Additional Information. Pursuant to the standard form Microsoft Partner Program Agreement, a third-party provider of software and services may not use the NAVISION mark to refer to itself. Complainant’s Additional Information. Respondent is not party to a Partner Agreement with Complainant. Complainant’s Additional Information and Respondent’s Reply.

According to the Registrar’s Verification, Respondent is the registrant of the disputed domain name, <navisioncentral.com>. According to a Network Solutions WHOIS database printout furnished by Complainant, the record of registration for the disputed domain name was created on April 1, 2004.

Respondent refers to itself as a “Procurement Service Provider” that works with businesses to reduce costs associated with their supply chains. It operates a commercial Internet web site at “www.sourceoneinc.com”. Complaint, Exhibit 5. It provides NAVISION-related services to customers. Certain of its employees have been trained and certified in the use of NAVISION products. The training and certification appears to have been done by parties accredited by Complainant. Respondent’s Reply, Attachment A.

Respondent used the disputed domain name to direct Internet users to a web site titled “Navision Central”. That web site listed a variety of NAVISION services, including design, programming and installation, made reference to communication language capabilities, and training in use of certain Microsoft products (i.e., Microsoft Office and Microsoft Access). The web site stated, inter alia, “We are proud to introduce an alternative to high-priced Navision Solution Centers and Systems Integrators.”

Complainant transmitted a cease and desist and transfer demand to Respondent by e-mail, fax and courier of March 14, 2005. Following receipt of that demand, Respondent redirected the disputed domain name to a Network Solutions under construction page which, however, includes links to NAVISION and competitive enterprise software vendors. Complaint, para. 26 and Exhibits 7-8.

The Registration Agreement in effect between Respondent and Network Solutions subjects Respondent to dispute settlement under the Policy. The Policy requires that domain name registrants submit to a mandatory Administrative Proceeding conducted by an approved dispute resolution service provider, of which the Center is one, regarding allegations of abusive domain name registration and use (Policy, paragraph 4(a)).

5. Parties’ Contentions

A. Complainant

Complainant alleges that it has rights in the NAVISION trademark based on use in commerce and as evidenced by registration at the USPTO and trademark offices outside the United States.

Complainant argues that the disputed domain name is confusingly similar to its trademark because it merely adds a generic term which does not distinguish it.

Complainant states that Respondent has no rights or legitimate interests in the disputed domain name because: (1) Respondent has not been authorized explicitly or implicitly to use its trademark; (2) Respondent is not certified by Complainant to offer services using its trademarked products; (3) third parties who are certified by Complainant in the use of its trademarked products are not authorized to use the mark to refer to themselves; (4) Respondent has used the disputed domain name to offer services in competition with Complainant’s authorized partners, and; (5) Respondent has not been commonly known by the disputed domain name.

Complainant alleges that Respondent has acted in bad faith: (1) by registering the disputed domain name with knowledge of Complainant’s rights in its mark; (2) by using the disputed domain name to direct Internet traffic to Respondent’s business by creating confusion as to Complainant’s sponsorship of or affiliation with Respondent, and; (3) even if Respondent had not acted to divert Internet users to an active web site it would nevertheless have deliberately cause confusion with Complainant’s mark “of some kind”.

Complainant requests the Panel to direct the Registrar to transfer the disputed domain name to it.

B. Respondent

Respondent indicates that it did not intend to compete with Complainant’s trademarked product and that its web site is currently inactive. Respondent does offer services relating to that product to its customers.

Respondent states that its web site did not represent that Respondent was an authorized provider of services using Complainant’s trademark product. It also states that Complainant permits its authorized service providers to compete with each other.

Respondent indicates that it has never advertised under the disputed domain name and it removed the web site identified by that name after being contacted by Complainant.

Respondent indicates that it has a valid business reason for using the disputed domain name and that it intends to relaunch its web site after consulting with an attorney.

Respondent argues that since its web site did not offer a product in competition with that of Complainant’s trademarked product, it could not have interfered with Complainant’s business.

Respondent states that certain of its employees have been trained and certified in the use of Complainant’s trademarked product, and that it has never represented that Respondent, as a business, is certified or authorized by Complainant.

6. Discussion and Findings

The Policy is addressed to resolving disputes concerning allegations of abusive domain name registration and use. The Panel will confine itself to making determinations necessary to resolve this Administrative Proceeding.

The Center transmitted notification of the Complaint to Respondent. Respondent filed a Response and supplemental information. The Panel is satisfied that Respondent was given adequate notice of these proceedings.

Paragraph 4(a) of the Policy sets forth three elements that must be established by a complainant to merit a finding that a respondent has engaged in abusive domain name registration and use, and to obtain relief. These elements are that:

(i) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) respondent has no rights or legitimate interests in respect of the domain name; and

(iii) respondent’s domain name has been registered and is being used in bad faith.

Each of the aforesaid three elements must be proved by a complainant to warrant relief.

A. Identical or Confusingly Similar

Complainant has demonstrated rights in the NAVISION trademark by use in commerce and as evidenced by registration at the USPTO and trademark offices outside the United States (see Factual Background, supra). Respondent has not challenged Complainant’s rights in the NAVISION mark. The Panel finds that Complainant has rights in the NAVISION trademark.

Respondent has added the term “central” to Complainant’s mark to form the disputed domain name <navisioncentral.com>. The term “central” is a common descriptive term used as an adjective to refer to a principal or easily accessible location.¹ Used in combination with Complainant’s mark, it suggests in the disputed domain name a place where Complainant’s products (or services relating to them) may be conveniently found. The combination term “navisioncentral” is not sufficiently distinguished from NAVISION to avoid a finding of confusing similarity because an Internet user would be likely to associate the combination term with the trademark. The Panel finds that the disputed domain name is confusingly similar to Complainant’s NAVISION trademark.

Complainant has demonstrated that it has rights in the NAVISION trademark and that the disputed domain name is confusingly similar to that mark. Complainant has established the first element necessary for a finding of abusive domain name registration and use.

B. Rights or Legitimate Interests

The second element of a claim of abusive domain name registration and use is that the respondent has no rights or legitimate interests in respect of the domain name (Policy, paragraph 4(a)(ii)). The Policy enumerates several ways in which a respondent may demonstrate rights or legitimate interests:

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of paragraph 4(a)(ii):

(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” (Policy, paragraph 4(c)).

Respondent was demonstrably aware of Complainant’s mark when it registered the disputed domain name. Respondent’s use of Complainant’s trademark in the disputed domain name created confusion as to Complainant’s affiliation with Respondent and its web site. This is not a use of the disputed domain name in connection with a bona fide offering of services.

There is no evidence that Respondent was commonly known by the disputed domain name.

Respondent used the disputed domain name to direct Internet users to a web site where it offered commercial services in competition with those authorized by Complainant under its trademark. Respondent’s usage of Complainant’s mark was likely to confuse consumers as to the source or sponsorship of services, and this does not constitute “fair use”.

Complainant has succeeded in establishing that Respondent has no rights or legitimate interests in the disputed domain name.

C. Registered and Used in Bad Faith

The Policy indicates that certain circumstances may, “in particular but without limitation”, be evidence of bad faith (Policy, paragraph 4(b)). Among these circumstances are that a respondent “by using the domain name, … [has] intentionally attempted to attract, for commercial gain, Internet users to [its] web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [respondent’s] web site or location of a product or service on [its] web site or location” (id., paragraph 4(b)(iv).

Respondent incorporated Complainant’s trademark in the disputed domain name and used that domain name to direct Internet users to Respondent’s web site. Internet users viewing the disputed domain name were likely to assume that Complainant was the source or sponsor of the associated web site. At the web site, Respondent offered commercial services in competition with those authorized by Complainant. Respondent’s usage of Complainant’s mark was intentional and for commercial gain. The Panel determines that Respondent has acted in bad faith by registering and using the disputed domain name intentionally to attract for commercial gain Internet users to its web site by creating a likelihood of confusion with Complainant’s mark as to the source or sponsorship of Respondent’s web site.

Complainant has established the third element necessary for a finding of abusive domain name registration and use.

7. Decision

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

Frederick M. Abbott
Sole Panelist

Dated: July 4, 2005