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Microsoft Corporation v. Wayne Lybrand [2005] GENDND 238 (18 March 2005)

World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Microsoft Corporation v. Wayne Lybrand

Case No. D2005-0020

1. The Parties

The Complainant is Microsoft Corporation, with its principal place of business in Redmond, Washington, United States of America, represented by Schwimmer and Associates, United States of America.

The Respondent is Wayne Lybrand of Oroville, California, United States of America.

2. The Domain Name and Registrar

The disputed domain name <microsoftcustomerservice.com> (the “Domain Name”) 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 January 6, 2005. On January 7, 2005, 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 January 7, 2005, 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 January 26, 2005. In accordance with the Rules, Paragraph 5(a), the due date for Response was February 15, 2005. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on February 21, 2005.

The Center appointed W. Scott Blackmer as the sole panelist in this matter on March 7, 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 has manufactured and sold computer software and related products and services since 1975, investing considerable sums in promoting the MICROSOFT mark throughout the world. According to a recent survey by BusinessWeek and Interbrand Corp., MICROSOFT is the second most valuable brand in the world. See The Top 100 Brands, Business Week, August 2, 2004, at 68. The United States Patent and Trademark Office has granted trademark registrations for the MICROSOFT mark in several classes of goods and services since 1982, including the following:

Complainant has established websites using the MICROSOFT mark in the domain name, such as <microsoft.com> and <microsoft.net>, to provide information about Microsoft products and access to Microsoft services, including customer support services. Complainant has also made use of the phrase “Microsoft Customer Service” on its websites.

Complainant alleges that it has not authorized Respondent to use the MICROSOFT mark in any fashion.

According to registrant DotRegister, Respondent’s current registration of the Domain Name was made on December 19, 2004.

By December 22, 2004, as indicated by a printed web page supplied by Complainant, Respondent was offering to sell the Domain Name on ebay, with a “starting bid” listed as US $150,000 and a description reading in part as follows:

“How many times a day do you think individuals and businesses access Microsofts [sic] websites. Right now there are 97,000.000 [sic] references and websites pertaining to Microsoft. Software, upgrades etc. Imagine how much business you will get . . . .”

Complainant’s counsel promptly contacted Respondent. According to Complainant, Respondent asserted that he was limiting his sale only to authorized resellers of Microsoft products (although this is not evident from the description on ebay). A December 22, 2004, email from Respondent to counsel for Complainant offers to sell the name to Microsoft:

“For the creativity of coming up with the Domain Name. I am willing to accept $1481.42 and a copy of Microsoft Office Full Version. I will remove the auction and transfer the name to Microsoft.”

Questioned concerning the basis for the $1481.42 figure, Respondent replied by email later that day with a single sentence: “Call it creativity.”

When Complainant did not agree to purchase the Domain Name, Respondent published a new auction offer on ebay, this time for a starting bid of US $3000 and with a few additional words in the description: “As a distributor/reseller of Microsoft Products Imagine how much business you will get . . . .”

Complainant again asked Respondent to remove the Domain Name from auction on ebay. Respondent replied with an email dated January 4, 2005, indicating he had leased the Domain Name to an unnamed third party for a three-year period and that he was “not aware” his ebay offer had been “re-listed” (failing to explain why the new listing contained new language in the description as well as a new starting bid). Respondent said in his email that he would remove the Domain Name from auction but that to his knowledge “there will be a new website up using this domain name very shortly.” He stated that the party leasing the Domain Name from him for three years was “a reseller of Microsoft Products.”

Several hours later, Respondent again emailed Complainant’s counsel to report that Respondent himself was again offering the Domain Name for sale:

“The MicrosoftCustomerService.com Domain Name has been published to the internet Forsale [sic]. It is currently being submitted to over a thousand search engines and links. It will be submitted to Yahoo and Google shortly. Thought it may interest you and your client.”

The email included a link to a page on “www.geocities.com”, which Complainant printed and submitted with the Complaint. The page advertised “MicrosoftCustomerService.com Forsale [sic] $2,500,000.00.” The text suggests that many users will be frustrated by the large number of search engine results for “Microsoft,” but that those who seek customer service, updates, or the purchase of Microsoft software will be drawn to “www.microsoftcustomerservice.com”. The text went on to say, “If you are a reseller or distributor of Microsoft Products and you own MicrosoftCustomerService.com you just raised your net figures to the big time.” “It is very possible,” the advertisement asserted, “to get at least 20% or more of the hits Microsoft currently receives on its websites.”

The advertisement on “www.geocities.com” disclosed that Respondent had been contacted by Microsoft’s attorney, “So it will not be a cake walk for the individual or business who purchases this domain name. They say it is a Trade Name Infringement.” Respondent’s advertisement went on to advise potential purchasers to contact their attorneys but asserted that Respondent had spoken to “several attorneys” who agreed that the use of the Domain Name by a Microsoft reseller or distributor would not infringe the mark.

The next day, January 5, 2005, Respondent sent Complainant’s counsel an email saying that links to the advertising page had been emailed to “the Executives at Microsoft and also to Board Members.”

The page advertising the Domain Name on “www.geocities.com” has apparently been removed since that date.

The Domain Name currently resolves to a “parking” web page headed “microsoftcustomerservice.com” and filled with links to a wide variety of commercial and news websites. There is a prominent advertisement under the header, “Domain name registration and parking provided by speedydomainregistration.com.” This statement is linked to the website of a company offering domain registration and web hosting services.

5. Parties’ Contentions

A. Complainant

Complainant owns registered trademarks in the MICROSOFT mark confusingly incorporated in the Domain Name and claims common-law use of the mark MICROSOFT CUSTOMER SERVICE, which is identical to the Domain Name.

Complainant asserts that Respondent has no legitimate interests or rights in using MICROSOFT in a domain name because it has no connection with Microsoft, owns no tradename or marks incorporating the MICROSOFT mark, and is not engaged in a business “selling or otherwise relating to MICROSOFT products.” Complainant argues that even an authorized Microsoft distributor or reseller could not use the Domain Name without creating confusion and infringing Complainant’s mark, and that Respondent’s only use of the Domain Name has been to advertise it for sale and attempt to get Microsoft to purchase it from him, which is not a legitimate interest.

Complainant concludes that Respondent registered and used the Domain Name in bad faith, given the fame of the mark and Respondent’s express intent to sell the mark to Complainant or to a third party that would be able to divert traffic from Complainant’s websites.

B. Respondent

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

6. Discussion and Findings

Paragraph 15(a) of the Rules directs as follows: “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.”

Paragraph 4(a) of the Policy provides that in order to divest Respondent of the Domain Name, Complainant must demonstrate each of the following:

- The Domain Name is identical or confusingly similar to Complainant’s mark; and

- Respondent has no rights or legitimate interests in the Domain Name; and

- The Domain Name has been registered and is being used in bad faith.

As in other cases where a respondent fails to reply, the Panel must still satisfy itself that Complainants have met their overall burden of proof under Paragraph 4 of the Policy. Thus, the uncontested facts must provide a sufficient prima facie basis for finding confusing similarity to a protected mark and for inferring that, more probably than not, the respondent has no right or legitimate interest in the domain name at issue and has registered and used it in bad faith. See, e.g., Croatia Airlines d.d. v. Modern Empire Internet Ltd., WIPO Case No. D2003-0455 (August 21, 2003) <croatiaairlines.com>.

A. Identical or Confusingly Similar

The Panel finds that the Domain Name is confusingly similar to Complainant’s MICROSOFT mark.

Complainant has owned registered trademarks in the MICROSOFT mark since 1982. The uncontested evidence indicates plainly that MICROSOFT is a famous mark, and indeed, several previous WIPO panels have recognized it as such. See, e.g., Microsoft Corporation v. Andrey Tumakov, WIPO Case No. D2002-1039 (December 19, 2002) <microesoft.com> (MICROSOFT found to be an internationally famous mark); Microsoft Corporation v. Webbangladesh.Com, WIPO Case No. D2002-0769 (October 4, 2002) <microsoftbangladesh.com> (MICROSOFT “is perhaps one of the most recognized international trademarks in existence”); Microsoft Corporation v. Paul Horner, WIPO Case No. D2002-0029 (February 27, 2002) <microsoftsite.com> (the MICROSOFT mark is “well known in the United States and other countries”).

Respondent appropriated the entire mark in the Domain Name. The trademark is the distinctive part of the Domain Name, to which non-distinctive, merely descriptive words are added. Moreover, the descriptive words added to the mark are relevant to common vendor services associated with the use of software and related products such as Complainant offers -- Complainant has “Microsoft Customer Service” web pages of its own. The addition of such relevant descriptive words reinforces rather than detracts from the conclusion that the Domain Name confusingly refers to the business of Complainant and would likely cause at least some customers to assume that the Domain Name is associated with Complainant. See, e.g., United Parcel Service of America, Inc. v. Shipping Administration, WIPO Case No. D2002-1162 (February 17, 2003) <upsovernight.com> and <upspackages.com>, citing Ermenegildo Zegna Corp., Lanificio Ermenegildo Zegna & Figli S.p.A., Consitex S.A. . v. Steven Shiekman, WIPO Case No. D2000-1375 (December 20, 2000) <zegnasuit.com>, The Coca-Cola Co.mpany. v. Gamlebyen Invest AS, WIPO Case No. D2000-1677 (February 14, 2001) <cocacoladrinks.com>, General Electric Company v. CPIC NET and Hussain Syed, WIPO Case No. D2001-0087 (May 2, 2001) <gehoneywell.org> (in trademark law, the user of a mark “may not avoid likely confusion by appropriating another’s entire mark and adding descriptive or non-distinctive matter to it,” quoting 3 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:50 (4th ed. 1998)).

In this case, Respondent explicitly advertised the Domain Name for sale to Complainant and third parties on the ground that it had the potential of diverting “at least 20% or more of the hits Microsoft currently receives on its websites.” Thus, Respondent recognized – and counted on – the confusing similarity of the Domain Name and Complainant’s mark.

Complainant also claims it has made common-law use of the phrase MICROSOFT CUSTOMER SERVICE as a mark, although it submitted copies of web pages using the phrase that do not display a trademark symbol or legend. Given the determination that the Domain Name is in any event confusingly similar to the registered and famous MICROSOFT mark that it incorporates, the Panel does not find it necessary to determine whether the Domain Name is also identical to a common-law mark.

B. Rights or Legitimate Interests

The Panel concurs with the reasoning of Western Research 3000, Inc. v. NEP Products, Inc., WIPO Case No. D2004-0755 (November 5, 2004), to the effect that Paragraph 4(c) of the Policy “contemplates an obligation on the part of Respondent to come forward with evidence of rights and legitimate interests,” and that the Panel can “appropriately” infer the absence of such rights or legitimate interests under Paragraph 14(b) of the Rules in cases where the Respondent fails to submit any response to the Complaint. See also Parfums Christian Dior v. QTR Corporation, WIPO Case No. D2000-0023 (March 9, 2000). Thus, the Panel accepts the uncontested facts that Complainant has not authorized Respondent’s use of the mark and that Respondent itself is not engaged in the business of selling Microsoft products or providing customer service for them.

The record does include Respondent’s emails and advertisement asserting his right to register the Domain Name and sell it to a distributor or reseller of Microsoft products. Although the cases are divided, some WIPO panels have found that resellers making a bona fide offer of goods or services may have a legitimate interest in using the owner’s mark in a domain name under certain conditions, such as accurately disclosing their relationship with the owner of the mark and using the domain name only to sell the trademarked goods, and only in circumstances where the registrant is not prohibited by contract from so using the mark. See, e.g., Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 <okidataparts.com> (November 6, 2001).

However, Respondent is unquestionably not a reseller or distributor of Microsoft products or related services and has no right or legitimate interest to use the MICROSOFT mark. The theoretical possibility that some party other than Complainant might have a legally defensible right to use the mark in a domain name does not confer any such rights on Respondent. Respondent’s registration of the Domain Name in the hope of selling it to the owner of the mark or a third party willing to contest the owner’s rights to preclude the use the mark by others is simply another form of the practice of “cybersquatting” that the Policy was designed to deter. See Policy Paragraph 4(b)(i) (the registration of a domain name primarily for the purpose of selling it to the owner of a mark or its competitors for more than the registrant’s costs is evidence of bad faith).

Complainant has made a prima facie case that Respondent has no rights or legitimate interests in the Domain Name incorporating the MICROSOFT mark, and Respondent has not come forward with evidence to the contrary. The Panel finds that Respondent has no rights or legitimate interests in the Domain Name.

C. Registered and Used in Bad Faith

As mentioned above, one evidence of bad faith is the registration of a domain name primarily for the purpose of selling it to the owner of a mark or its competitors “for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name” (Policy Paragraph 4(b)(i)). Respondent’s offer to sell the Domain Name to Complainant or to third parties seeking to divert “at least 20% or more of the hits Microsoft currently receives on its websites” for a price varying from $150,000 to $3000 to $2.5 million fits this description. Even Respondent’s offer to sell the Domain Name to Complainant for $1481.42 plus a free copy of the Microsoft Office software suite was, by Respondent’s own admission, based not on his registration costs but on “creativity.”

Apart from this evidence of bad faith, WIPO panels have found bad faith in the act of registering a domain name incorporating a famous mark, specifically including Complainant’s. See Microsoft Corporation v. Stoneybrook, WIPO Case No. D2000-1274 (November 28, 2000) <wwwmicrosoft.com> (finding bad faith because, “[g]iven the familiarity with Microsoft as a trademark and corporate name worldwide, it appears inconceivable to the panelist, in the absence of an explanation from the Respondent, that the domain name was not registered . . . to confuse consumers”). See also Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 (February 20, 2000) <telstra.org> (bad faith finding based on the implausibility that respondent could legitimately use the mark in a domain name and that respondent was unaware of this fact at the time of registration).

Finally, Respondent in this case expressly contemplated diverting traffic from Complainant’s websites, listed the Domain Name with search engines in order to do so in attempting to sell the Domain Name for profit, and advertised to potential purchasers (and directly to Complainant) how effectively and profitably the Domain Name would attract customers of Complainant’s products. Under Policy Paragraph 4(b)(iv), it is evidence of bad faith intentionally to attempt to attract Internet users to a website for “commercial gain” “by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement” of the website. This was patently Respondent’s strategy, based on his own communications.

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 <microsoftcustomerservice.com> be transferred to the Complainant.

W. Scott Blackmer
Sole Panelist

Date: March 18, 2005