Home | Databases | WorldLII | Search | Feedback Generic Top Level Domain Name (gTLD) Decisions

Microsoft Corporation v. Gioacchino Zerbo [2005] GENDND 1466 (9 August 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Gioacchino Zerbo

Case No. D2005-0644

1. The Parties

The Complainant is Microsoft Corporation, Washington, United States of America, represented by Studio Legale Jacobacci e Associati, Italy.

The Respondent is Gioacchino Zerbo, Zerbo Gioacchino, Senna Comasco, Italy.

2. The Domain Name and Registrar

The disputed domain name <internetexplorer.com> is registered with OnlineNic, Inc. d/b/a China-Channel.com (“OnlineNic, Inc.”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 21, 2005. On June 21, 2005, the Center transmitted by email to OnlineNic, Inc. a request for registrar verification in connection with the domain name at issue. On June 23, 2005, OnlineNic, Inc. 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 June 27, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on July 20, 2005.

The Center appointed Nathalie Dreyfus as the Sole Panelist in this matter on July 26, 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.

4. Factual Background

Complainant manufactures, markets and sells computer software and related products and services, including products and services designed for use on the Internet.

As stated by the Complainant, INTERNET EXPLORER is the browser mostly used by Internet users and also one of the first in the Internet history with Netscape and some others.

INTERNET EXPLORER has been known internationally for many years. Furthermore, the United States Patent and Trademark Office (USPTO) has granted the following trademark registration to Synet, Inc.: INTERNET EXPLORER, International class 9, registration No. 2277112, dated September 14, 1999, duly transferred and recorded at the USPTO to the Complainant.

The Complainant has provided the extract of the USPTO regarding said trademark rights recordal in its favor.

Respondent has registered the disputed domain name <internetexplorer.net>.

The first use and registration of the trademark INTERNET EXPLORER predate the reservation of the disputed domain name <internetexplorer.com>, registered on November 11, 2001.

5. Parties’ Contentions

A. Complainant

The grounds of the Complaint can be summarized as follows:

- The domain name <internetexplorer.com> is “virtually” identical to the trademark INTERNET EXPLORER owned by the Complainant. The Complainant refers to several WIPO Cases, including WIPO Case No. D2000-0137, Expedia, Inc. v. European Travel Network, in order to demonstrate that the Respondent could not possibly ignore the Complainant’s trademark INTERNET EXPLORER at the time it registered the disputed domain name.

In addition, the Complainant asserts that Respondent has previously registered some domain names identical or confusingly similar to well-known trademarks such as Christian Dior.

- The Respondent has never been known under the disputed domain name, nor did he make any business under it.

The domain name linksto a webpage offering a variety of searches and services unrelated to Microsoft or INTERNET EXPLORER. This could not be considered as a bona fide offering of goods and services. The offer of miscellaneous services is considered by the Complainant as a commercial activity.

- The Complainant claims that the domain name is being used in bad faith as the Respondent uses the worldwide renown of the sign INTERNET EXPLORER to attract Internet users to a website offering, among others, sponsored links to the Complainant’s competitors.

B. Respondent

The Respondent did not reply to the Complainant’s contentions and is in default.

6. Discussion and Findings

The Panel proceeds to consider this matter on the merits of the Complaint, the absence of a Response, the Policy, the Rules, the Supplemental Rules, and other applicable legal authority, pursuant to paragraph 15(a) of the Rules.

Paragraph 4(a) of the Policy provides that the Complainant must prove, with respect to the domain name, each of the following:

(i) the domain name is identical or confusingly similar to trademark in which the Complainant has rights, and

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

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

A. Identical or Confusingly Similar

The Complainant has proven that it is the owner of trademark rights for INTERNET EXPLORER.

Although the Complainant has not introduced its own company in the Complaint, nor has provided any evidence of it renown, the Panel is convinced of the notoriety of the Complainant as well as of its rights in the trademark INTERNET EXPLORER. The Complainant’s trademark INTERNET EXPLORER is famous, and it is clear that it has become distinctive through intensive use. The Panel is of the view that most users of the Internet worldwide would know of the Complainant’s trademark.

In addition, the disputed domain name incorporates in its entirety Complainant’s trademark INTERNET EXPLORER, and it is a constant case-law that the addition of a suffix “.com” or “.net” is not relevant to appreciate confusion’s risks (WIPO Case No. D2000-0003, Telstra Corp. Ltd v. Nuclear Marshmallows).

As the disputed domain name is identical to the Complainant’s trademark INTERNET EXPLORER, there exists an important risk of confusion in Internet web searchers’ minds. Average consumers may be led to think that the disputed domain name is owned, controlled or endorsed by the Complainant.

Consequently, in view of the above it is established the Respondent did register a domain name which is identical to the Complainant’s trademark in accordance with paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Complainant asserts that the Respondent has never been commonly known in any business matters under the name INTERNET EXPLORER. The Panel understands that the Respondent has not received any express or implied license or consent to use the INTERNET EXPLORER trademark in the disputed domain name.

The Complainant has provided evidence that the Respondent has directed the disputed domain name to a website offering, among other things, advertising and sponsored links for products and retailers that are in direct competition with the Complainant’s products. The Panel is of the opinion that Respondent was not making any legitimate non-commercial or fair use of the disputed domain name.

The Respondent has not provided any evidence that any of the circumstances listed at paragraph 4(c) of the Policy apply to the Respondent’s situation in order to refute Complainant’s assertions.

In addition, the Panel finds inconceivable that the Respondent would have any rights or legitimate interests in the use of a domain name that is strictly identical to a famous trademark in connection to the marketing of competing products.

In accordance with the above, the Complainant has established prima facie that the Respondent has no rights or legitimate interests in the domain name in accordance with paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

The Respondent, by registering a domain corresponding to a famous trademark he could not ignore, intentionally attempted to attract, for commercial gain, Internet users by creating a likelihood of confusion with the Complainant’s marks. This conduct constitutes evidence of bad faith use, since the Respondent is trying to profit from the reputation of the Complainant’s trademark, by increasing the traffic on its website through the exact reproduction of a third-party trademark. This constitutes a bad faith use (WIPO Case No. D2001-1493, The Nasdaq Stock Market, Inc. v. Vidudala Prasad).

This conduct also constitutes evidence of bad faith use. It may tarnish the Complainant’s reputation, by attracting Internet users to a webpage that does not correspond to what they were looking for.

It may be inferred that the Respondent did register the domain name in dispute on purpose, to disrupt the Complainant’s business, as it used the domain name <internetexplorer.com> with sponsored links to competitors. The Respondent registered the domain name although perfectly aware that it was infringing the Complainant’s rights (WIPO Case No. D2005-0170, Micro Electronics, Inc. v. J. Lee: “the Respondent is attempting to attract Internet users unwittingly to his site for commercial gain – in the hope that Internet users would be confused into thinking that the site of the disputed domain name is linked to the legitimate business of the Complainant.”)

Moreover, the Complainant provided evidence of domain name registrations made by the Respondent, which infringe other trademarks (WIPO Case No. D2004-0214, Southern Communications Services, Inc. d/b/a Southern LINC v. Henry Chan: “Cyberpirates may attempt to warehouse multiple domain names containing other’s marks, sometimes hundreds or even thousands, and this factor permits a court to take such conduct into the consideration of whether a certain domain name was registered in bad faith.(...) Even if there is no working website corresponding to any of the warehoused domain names, warehousing prevents trademark owners from using those names for their business”).

Consequently, in view of the above, it is established the Respondent registered and is using the disputed domain name in bad faith in accordance with paragraph 4(a)(iii) of the Policy.

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 <internetexplorer.com> be transferred to the Complainant.

Nathalie Dreyfus
Sole Panelist

Dated: August 9, 2005