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Microsoft Corporation v. Ping Chuan Ang [2005] GENDND 1944 (14 November 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Ping Chuan Ang

Case No. D2005-0827

1. The Parties

The Complainant is Microsoft Corporation, Redmond, Washington, United States of America.

The Respondent is Ping Chuan Ang, Kuantan, Pahang, Malaysia.

2. The Domain Name and Registrar

The disputed domain name <microsoftgames.info> is registered with NamesDirect.com.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 25, 2005. On August 3, 2005, the Center transmitted by email to NamesDirect.com a request for registrar verification in connection with the domain name at issue. On August 3, 2005, NamesDirect.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 September 2, 2005. In accordance with the Rules, paragraph 5(a), the due date for Response was September 22, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on October 7, 2005.

The Center appointed Edward C. Chiasson Q.C. as the sole panelist in this matter on October 31, 2005. He submitted a Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7. The Panel finds that it was properly constituted.

4. Factual Background

The following information derives from the Complaint.

The Complainant 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, the Complainant has created software and developed services for use in education, the workplace and the home.

The Complainant’s products and services include computer operating systems, client-server applications, computer and video games, 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.

The Complainant offers these goods and services to the public under the federally registered trademark MICROSOFT (“MICROSOFT”). The United States Patent and Trademark Office (“USPTO”) has granted federal trademark registrations for the MICROSOFT mark in numerous classes of goods and services, including the following, without limitation:

Mark	International Class	Registration No.	Registration Date
MICROSOFT	9	2,637,360	October 15, 2002
MICROSOFT	42	2,337,072	April 4, 2000
MICROSOFT	9	2,285,870	October 12, 1999
MICROSOFT	38	2,250,973	June 8, 1999
MICROSOFT	39	2,198,156	October 20, 1998
MICROSOFT	35	2,198,155	October 20, 1998
MICROSOFT	41	2,198,154	October 20, 1998
MICROSOFT	21	1,731,160	November 10, 1992
MICROSOFT	18	1,715,749	September 15, 1992
MICROSOFT	9	1,200,236	July 6, 1982

The Complainant submits it has spent substantial time, effort and money advertising and promoting the MICROSOFT mark throughout the world. As a result, the MICROSOFT mark has become distinctive and well known and the Complainant has developed an enormous amount of goodwill in the mark.

Business Week and Interbrand recently found that the MICROSOFT mark is the second most valuable brand in the world. See The 100 Top Brands, Business Week, August 2, 2004, at 68.

Numerous previous UDRP panels have recognized that the MICROSOFT mark is famous. See, e.g., Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039 (December 19, 2002) (noting that the MICROSOFT mark was internationally famous); Microsoft Corporation v. Webbangladesh.Com, WIPO Case No. D2002-0769, (October 4, 2002) (stating that MICROSOFT “is a world-famous mark. It is perhaps one of the most recognized international trademarks in existence”); Microsoft Corporation v. Paul Horner, WIPO Case No. D2002-0029 (February 27, 2002) (stating that the MICROSOFT mark is “well known in the United States and other countries”); Microsoft Corporation v. StepWeb, WIPO Case No. D2000-1500 (January 19, 2001) (characterizing the MICROSOFT mark as “famous”); Microsoft Corporation v. Cupcake City, WIPO Case No. D2000-0818 (October 22, 2000) (acknowledging the “strong reputation and renown” of the MICROSOFT and MSN marks).

In connection with the MICROSOFT mark, the Complainant has established Internet websites that resolve from domain names comprised of the MICROSOFT mark, including “www.microsoft.com” and “www.microsoft.net” (collectively, the “Microsoft Websites”).

The Microsoft Websites allow computer users throughout the world to access information regarding the Complainant and its products and services and to use and enjoy the Internet services provided by the Complainant.

The Complainant creates and sells video games under the registered trademark MICROSOFT GAME STUDIOS and has registered the MICROSOFT GAME STUDIOS mark in numerous jurisdictions around the world, including the United States and the EEC.

The Complainant does not concede that the Respondent resides or does business in Malaysia because, although the Respondent’s address in the Registrar’s Whois is in Malaysia, the subject domain name resolves to a website, “www.sexblag.com”, which is an adult content site that appears to target an American audience. In any event, the Complainant’s trademark rights extend to Malaysia. It maintains registrations and does business in Malaysia.

The Complainant’s Marks were adopted and had become famous long prior to the creation of the subject domain name.

The Respondent has no connection or affiliation with the Complainant and has not received any license or consent, express or implied, from the Complainant to use the MICROSOFT Marks in a domain name or in any other manner.

The subject domain name resolves to a website which bears no relation to the Complainant and has no apparent connection to the Respondent.

The Respondent did not participate in this proceeding.

5. Parties’ Contentions

A. Complainant

The Complainant relies on its registration and use of marks containing the word “MICROSOFT” and asserts that the subject domain name is confusingly similar to them.

The lack of a legitimate interest is said to be shown by the fact that the Respondent is not authorized to use the Complainant’s marks and is not known by them. The Complainant also points to the fact that the subject domain name resolves to a pornographic website and that the site has no connection to either the Complainant or the Respondent.

The Complainant relies heavily on the notoriety of its marks and the word “microsoft”. and the fact the subject domain name resolves to a pornographic website to establish bad faith.

B. Respondent

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

6. Discussion and Findings

Paragraph 4(a) of the Policy requires the Complainant to prove that:

(i) the domain name is identical or confusingly similar to a trademark or service mark 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.

Paragraph 4(b) provides for the implication of evidence of bad faith in a number of circumstances:

(i) circumstances that indicate that the Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name;

(ii) registration of the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the Respondent has engaged in a pattern of such conduct;

(iii) registration of the domain name primarily for the purpose of disrupting the business of a competitor;

(iv) by using the domain name, intentionally attempting to attract, for commercial gain, Internet users to the Respondent’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.

These are illustrative and do not represent the only circumstances from which may arise evidence of bad faith.

The Complainant relies on previous UDRP decisions. While often these are helpful, they are neither controlling nor binding on this Administrative Panel.

A. Identical or Confusingly Similar

It is clear that the Complainant has rights to the word “microsoft” both through long use and registration of the word in many marks.

The subject domain name incorporates the word “microsoft”. It also uses the word “games”, which is a well-known product of the Complainant.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(i) of the Policy.

B. Rights or Legitimate Interests

The Respondent is not authorized to use the Complainant’s marks or the word “microsoft” and it appears not to be known by it.

A respondent is not obliged to participate in a domain name dispute proceeding, but if it were to fail to do so, it would be open to the inferences that flow naturally from the not unreasonable factual assertions of the complainant.

Directing Internet users to a pornographic website by the use of a confusingly similar domain name does not per se establish the lack of a legitimate interest in the domain name, but it raises an inference that the registrant of the domain name does not have a legitimate interest in the domain name.

In this case, the Respondent has done nothing to supplant the inference.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(ii) of the Policy.

C. Registered and Used in Bad Faith

A finding that a respondent does not have a legitimate interest in a domain name that is confusingly similar to the mark of a complainant does not automatically lead to a conclusion of bad faith, but the facts that support the finding may be relevant to the bad faith inquiry.

In this case, the Complainant relies on the notoriety of the word “microsoft”. Notoriety standing alone does not per se establish bad faith, but raises such an inference.

The Complainant also relies on the fact that the subject domain name resolves to a pornographic website as establishing bad faith. Again, that fact standing alone does not lead automatically to a conclusion of bad faith, but it is relevant information in the inquiry.

The Complainant does not provide the information of an offer to sell the domain name made by the Respondent, prior similar activities by the Respondent or other indicia of bad faith.

In this case, the fact of notoriety is extreme. The widespread knowledge of the word “microsoft” coupled with the absence of any apparent link to the word by the Respondent and the fact that the subject domain name resolves to a pornographic site, support an inference of bad faith, which the Respondent has done nothing to dislodge.

The Administrative Panel is satisfied that the Complainant has met the requirements of paragraph 4(a)(iii) of the Policy.

7. Decision

Based on the information provided to it and on its findings of fact, the Administrative Panel concludes that the Complainant has established its case.

The Complainant asks that the subject domain name, <microsoftgames.info>, be transferred to it. The Administrative Panel so orders.

Edward C. Chiasson, Q.C.
Sole Panelist

Date: November 14, 2005