WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Microsoft Corporation v. Mike Rushton
Case No. D2004-0123
1. The Parties
The Complainant is Microsoft Corporation, One Microsoft Way, of Redmond, Washington, of United States of America, represented by Arnold & Porter, United States of America.
The Respondent is Mike Rushton, of Lowell, Massachusetts, United States of America.
2. The Domain Name and Registrar
The disputed domain name is registered with R.
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on February 17, 2004. On February 18, 2004, the Center transmitted by email to R a request for registrar verification in connection with the domain name at issue. On February 18, 2004, R 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 February 23, 2004. In accordance with the Rules, paragraph 5(a), the due date for Response was March 14, 2004. The Respondent did not submit any response. Accordingly, the Center notified the Respondent's default on March 16, 2004.
The Center appointed Nels T. Lippert as the sole panelist in this matter on April 8, 2004. 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, Microsoft Corporation, is a Washington, USA corporation with its principal place of business in Redmond, Washington, USA.
The Complainant is a well-known, worldwide provider of computer software and related products and services. Complainant's products and services include computer operating systems, client/server applications, business and consumer productivity applications, software programming tools, interactive media programs, Internet platform and development tools, computer input devices, on-line information and entertainment services, electronic commerce services and computer publications.
In connection with its goods and services, the Complainant has registered the MICROSOFT mark in the United States Patent and Trademark Office in numerous classes of goods and services, e.g., U.S. Trademark Registration No. 1,200,236 issued July 6, 1982, claiming use since November 12, 1975. Additional U.S. Registrations include:
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
Complainant has also registered in the United States Patent and Trademark Office trademarks comprising the word MICROSOFT and other formatives for various goods and services.
The Respondent, Mike Rushton, registered the domain name on January 10, 2000.
5. Parties' Contentions
A. Complainant
The Complainant contends that:
· Complainant has spent substantial time, effort and money advertising and promoting the MICROSOFT mark throughout the United States and the world. As a result, the MICROSOFT mark has become world famous and the Complainant has developed enormous amount of goodwill in the mark.
· Complainant has established an Internet website which can be reached through domain names comprised of the MICROSOFT mark, including and . Complainant's websites allow computer users throughout the United States and the world to access information regarding Complainant and its products and to use and enjoy the Internet services provided by Complainant.
· The disputed domain name is identical or confusingly similar to Complainant's MICROSOFT mark, because it is phonetically identical to the MICROSOFT mark and adds only a generic top level domain ".com" (sic).
· The disputed domain name is confusingly similar to Complainant's own domain names and trademarks and is likely to cause confusion among Complainants customers.
· Respondent has no connection or affiliation with Complainant and has not received any license or consent, express or implied, to use the MICROSOFT mark in a domain name and, therefore, has no legitimate interest in the disputed domain name.
· Respondent's initial use of the disputed domain name to direct Internet users to his commercial website which purported to offer web hosting services among other things was not a legitimate use. Subsequent resolution of the disputed domain name to a blank website commencing December 2003 was also not a legitimate use. Respondent's current use of the disputed domain name to resolve to the Google search engine is similarly not a legitimate use.
· Respondent's misappropriation of the domain name was not by accident because the MICROSOFT mark is world famous and distinctive, and the registration of the disputed domain name occurred well after the MICROSOFT mark became famous.
· Furthermore, Respondent should have constructive notice of Complainant's trademark rights in the MICROSOFT mark by virtue of Complainant's federal trademark registrations for this mark, which precede the Respondent's registration of the disputed domain name by over a decade.
· Respondent's use of the disputed domain name which is phonetically identical to the MICROSOFT mark and domain names was in bad faith because it was an attempt to draw a connection with Complainant and divert Internet users to his commercial website. Moreover, Respondent's subsequent uses of the disputed domain name to resolve to a blank website and thereafter the Google search engine are not bona fide uses and, therefore, are in bad faith.
· Respondent registered the domain name in bad faith and has used such domain name in bad faith.
B. Respondent
The Respondent did not reply to the Complainant's contentions. By failing to file a response, Respondent has not denied Complainant's contentions.
6. Discussion and Findings
In order for Complainant to prevail and have the disputed domain name transferred to itself, Complainant must prove the following:
(Policy ¶ 4(a)(i-iii)):
(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 was registered and is being used in bad faith.
A. Identical or Confusingly Similar
The Complainant owns numerous United States trademark registrations for the MICROSOFT mark some claiming use since 1975. Complainant has also registered the domain names and through which consumers can access information regarding MICROSOFT and its products and to use the Internet services provided by Complainant. The Panel has noted that the domain name was created on May 2, 1991, according to Network Solution's WHOIS record.
The disputed domain name, , differs in spelling from the Complainant's established trademark rights in the MICROSOFT mark; but, as pointed out by Complainant, is phonetically identical.
Disputed domain names comprising phonetic variations of trademarks have been held to be "confusingly similar" in many WIPO cases. Complainant has identified a number of these cases in its Complaint, e.g. VeriSign Inc. v. VeneSign C.A., WIPO Case No. D2000-0303 (June 28, 2000): Furthermore, it is well established by previous panels that the addition of a generic top-level domain name such as ".net" is not relevant when determining whether a disputed domain is confusingly similar to a protective mark. Universal City Studios, Inc. v. G.A.B. Enterprises., WIPO Case No. D2000-0416 (June 29, 2000). More specifically, the addition of a top-level generic domain name does not create a new trademark or avoid confusion. America Online, Inc. v. Yeteck Communication, Inc., WIPO Case No. D2001-0055 (April 23, 2001).
Numerous prior panels have found the MICROSOFT trademark to be famous and this Panel agrees. In the Panel's view, the word "mikerosoft", in the disputed domain name is phonetically identical to Complainant's trademark. Based on this view, the notoriety of Complainant's trademark and the failure of Respondent to dispute Complainant's allegations, the Panel finds the disputed domain name is confusingly similar to the Complainant's trademark.
B. Rights or Legitimate Interests
The Panel further finds Respondent has no rights or legitimate interests in the disputed domain name. It is not refuted that Respondent has no connection or affiliation with Complainant and has not received any license or consent to use the MICROSOFT mark in a domain name or in any other manner. Nor has it been demonstrated that the Respondent is commonly known by or has acquired rights in the domain name.
None of the uses that Respondent has put to the disputed domain name evidences a legitimate interest. All of Respondent's uses of the disputed domain name divert Internet users who are interested in Complainant or its products and services and who attempt to spell Complainant's name phonetically, to a website other than Complainant's. As noted below, none of these uses are bona fide. Furthermore, this Panel finds that the Respondent has not offered any evidence of non-commercial or fair use of the disputed domain name to refute Complainant's allegations.
C. Registered and Used in Bad Faith
Due to the fame of Complainant's MICROSOFT it is inconceivable that Respondent did not have actual notice of Complainant's trademark rights. The Respondent has offered no justification for registering the confusingly similar disputed domain name many years after Complainant's mark had achieved fame. Therefore, this Panel finds that Respondent's registration of the disputed domain name was in bad faith.
According to the Complaint, the Respondent originally used the disputed domain name to attract Internet users to his commercial website which offered various webhosting services among other things. Despite Respondent's apparent claim to the contrary, by using the domain name, which is phonetically identical to the MICROSOFT mark, to divert Internet users seeking Complainant's website, to Respondent's is a bad faith commercial use. See Microsoft Corp. v. a/k/a Tarek Ahmed, WIPO Case No. D2000-0548 (July 21, 2000).
Similarly, Respondent's subsequent use of the domain name to resolve to a blank website is not a bona fide use. Passive holding of a domain name that is confusingly similar to another's trademark, as is the case here, is not a bona fide use. Acu-Sort Systems., Inc., v. Acu-Sort. Inc., NAF Claim No. FA164568 (August 7, 2003). Respondent's current use of the disputed domain name to redirect to the Google search engine also is not a legitimate or good faith use. See e.g., Robbie Williams v. Taylor, WIPO Case No. D2002-0588 (August 8, 2002).
In summary, Respondent's initial use of the disputed name, which is confusingly similar to Complainant's trademark, to divert traffic to its website is a bad faith registration and use. The subsequent uses of the disputed domain name to resolve to a blank website and thereafter to the Google search engine are similarly bad faith uses.
Finally, the lack of a response to the Complaint creates an inference that the Respondent could not provide any good faith use of the disputed domain name. Therefore, the Panel finds that Respondent registered and used the disputed domain name in bad faith.
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, be transferred to the Complainant.
Nels T. Lippert
Sole Panelist
Date: April 27, 2004
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